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 . 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.
This application is a continuation-in-part (“CIP”) application of U.S. application 16900957 filed on 06/14/2020. See MPEP §201.08. In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicants desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicants are reminded that the prosecution history of the Parent Application is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
DETAILED ACTION
This Final Office Action is in response Applicant communication filled on 07/17/2025.
Status of Claims
Claims 1, 4, 9, and 11 have been amended.
Claims 1-18 are currently pending and have been rejected as follows.
Response Amendments
Applicant’s 07/17/2025 amendment of claim 11 necessitated new grounds of rejection in this action.
Response to 112(b) Arguments / Amendments
112(b) rejection in the previous act is withdrawn in view of Applicant’s amendment as suggested by Examiner at the Non-Final Act 02/20/2025 p.2-p.3
Response to 101 Arguments
Remarks 07/17/2025 p.6 ¶3 last ¶ - p.7 ¶1 argues that generating a life insurance policy in Bancorp Services, LLC v Sun Life Assur. Co. of Canada, 687 F3d 1266 (Fed. Cir. 2012) as relied by Non-Final Act 02/20/2025 p.4 ¶1, referred to a task outsourced to a computer administering and tracking the value of separate-account life insurance policies. Applicant argues that in Bancorp, there was no text being generated, just numbers, while in the current claims the computer stores a plurality of possible contract clauses in database, indexed and tagged, and presents the user with a selection interface that enables the user to select clauses by various parameters, such as favorability. Also, it is argued that in the current claims, after the user makes selections, the computer generates the contract, as well as recording the user’s selections in the database so future users can use this info. It is also argued that some of the dependent claims also describe indexing user selections by geographical area or area of industry and adding that data to the database, so that future users can determine what is popular in a particular area in generating their own contracts. Thus, Applicant argues that it would require the user to store potentially thousands of draft clauses in their mind and produce, on demand, a pre-scripted draft clause that has the right tags and parameters. It would also require the user to be instantly aware of what other users in different geographical areas have selected, and while the former is possible with years of intense mental training in mnemonics and other long-forgotten mental disciplines, the latter would require telepathy. Further
Remarks 07/17/2025 p.8 ¶1 argues that the present case is more similar to Research Corp. Technologies, Inc. v. Microsoft Corp, 627 F.3d 859 (Fed. Cir. 2010), which involved digital image halftoning, because the claim describes a computer-assisted method of generating a contract as an end result. Applicant admits that it is theoretically possible to perform the pixel comparisons in Research Corp. manually without a computer involved, but argues that does not mean that it is practical, as it would likely take thousands of years to do this analysis for a single image. The court in Research Corp. did not even consider the possibility that this could be done as a pure mental step.
Examiner considered 101 argument(s) but respectfully disagrees finding them unpersuasive.
i. First, the Examiner notes that while some of the argued features from the Disclosure are reflected in the claims, other features, such as the alleged capabilities of the users to determine what is popular in a particular area in generating their own contracts, and users in different geographical areas having selected clauses do not appear to be reflected in the current claims. This is important since, the claim itself must be evaluated to ensure the solution is reflected in the claim since the Courts ruled the “101 inquiry must focus on language of Asserted Claims themselves” as in “Synopsys, Inc. v Mentor Graphics Corp, U.S. Court of Appeals Federal Circuit, No 2015-1599, October 17 2016 2016 BL 344522 839 F3d 1138” citing “Accenture Global Servs., GmbH v . Guidewire Software, Inc. 728 F.3d 1336, 1345 108 USPQ2d 1173 Fed Cir. 2013: admonishing that the important inquiry for a 101 analysis is to look to the claim”, citing “Content Extraction & Transmission LLC v. Wells Fargo Bank Nat’l Ass’n 776 F3d 1343, 1346 113 USPQ2d 1354 (Fed. Cir. 2014): We focus here on whether the claims of the asserted patents fall within the excluded category of abstract ideas”, cert. denied, 136 S Ct 119, 193 L. Ed. 2d 208 2015). This is consistent with MPEP 2103 I.C stating that “claims define the property rights provided by patent, thus require careful scrutiny. The goal of claim analysis is to identify boundaries of protection sought by applicant and to understand how claims relate to and define what applicant indicated is the invention. USPTO personnel must first determine the scope of a claim by thoroughly analyzing the language of claim before determining if claim complies with each statutory requirement for patentability”. Simply said “[T]he name of the game is the claim”. MPEP 2103 I C citing In re Hiniker Co 150 F3d 1362 1369 47 USPQ2d 1523, 1529 Fed Cir 1998.
ii. Second, and separate from the Applicant’s deficiency above, the Examiner notes that, at Remarks 07/17/2025 p.6 ¶3 last ¶-p.7 and p.8 ¶1, the Applicant impermissibly conflates, the legal test for Certain Methods of Organizing Human activities [MPEP 2106.04(a)(2) II] with the legal test of Mental Processes [MPEP 2106.04(a)(2) III]. These two tests are different. Examiner resubmits that Non-Final Act 02/20/2025 p.3 last ¶-p. 5¶1 found that the current claims are directed to the abstract Certain Methods of Organizing Human activities grouping, while Applicant attempts to rebut the legal considerations for the practicality of the mental processes, namely that it would allegedly require the user to store potentially thousands of draft clauses in their mind and produce, on demand, a pre-scripted draft clause that has the right tags and parameters, and that it would also allegedly require the user to be instantly aware of what other users in different geographical areas have selected-and while the former is at least possible with years of intense mental training in mnemonics and other long-forgotten mental disciplines, the latter would require telepathy. Later on, at Remarks 07/17/2025 p.8 ¶1 Applicant provides a similar argument for impracticality of mental processes to the current claims.
Examiner responds by reminding the Applicant that there is no requirement that Certain Methods of Organizing Human Activities be performed mentally. Thus, any subsequent allegation of the claims not being practically performed mentally is erroneous for the purpose of Certain Methods of Organizing Human Activities test. In fact, MPEP 2106.04(a)(2) II ¶6, 4th sentence is clear that certain activity between a person and a computer may still fall within the abstract certain methods of organizing human activity grouping. Such situation occurs here, in that the alleged computer stores possible contract clauses in a database, indexed and tagged, and presents the user with a selection interface that enables the user to select clauses by parameters, such as favorability, and after the user makes their selections, with the computer further argued by Applicant to generate the contract, records user’s selections in the database so that future users can use this information. All these still fall within the abstract activities with a computer as identified above by MPEP 2106.04(a)(2) II ¶6, 4th sentence.
This finding is corroborated by MPEP 2106.04(a)(2) II C, which states that considering historical usage information while inputting data1 and acquiring content from an information source, controlling timing of the display of acquired content, displaying the content, and acquiring an updated version of the previously-acquired content when the information source updates its content2, still fall within the abstract Certain Methods of Organizing Human Activities grouping. Here, the current computerized capabilities similarly consider prior usage information of user selections, while inputting data and acquiring content from an information source, and controlling timing of the display of acquired content, do correspond here to actions for generating the abstract contract. Finally, acquiring an updated version does correspond here to a future version of the previously-acquired content, in a manner not meaningfully different than what is characterized here as the prior user’s selections, such that, when the information source updates its content would correspond to the future users using this information, as argued by Remarks 07/17/2025 p.6 ¶3 last ¶-p.7 ¶1, but yet to be claimed. Even if more granularly tested, at the subsequent steps of the subject matter analysis, such level of computerization would correspond to a mere application of the abstract idea (i.e. contract generation) [MPEP 2106.05(f)] and/or a narrowing of the abstract idea (i.e. contract generation) to a computerized field of use or technological environment [MPEP 2106.05(h)], without providing actual improvement in technological functioning of the computer itself or an improvement actual technology. For example, MPEP 2106.05(a) found that an alleged improvement to information stored by a database is not equivalent to an improvement in actual technology [i.e. database’s functionality]3. Thus, here, the capabilities of the computer to store a plurality of possible contract clauses in a database, indexed and tagged, as argued by Applicant would not raise to the level of an improvement in actual technology.
The Examiner rationale is further corroborated by MPEP 2106.04 I which stresses that even a “groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the 101 inquiry” citing Myriad,569 U.S at 591, 106 USPQ2d at 1979. The “Myriad” rationale was corroborated by “SAP Am Inc v InvestPic” cited by MPEP 2106.04(a)(2) I.C(i). More specifically, digging deeper into the Court’s rationale in SAP supra, the Examiner finds that the Court ruled that, “even if one assumes that the techniques claimed are groundbreaking, innovative, or even brilliant those features are not enough for eligibility because their innovation is innovation in ineligible subject matter. An advance of that nature is ineligible for patenting”. That is, “no matter how much of an advance in the field the claims” [would] “recite the advance” [would still] “lie entirely in the realm of abstract ideas” with no plausibly alleged innovation in non-abstract application realm. Thus here, similar to SAP Am Inc v. InvestPic, LLC, 890 F.3d 1016, 126 USPQ.2d 1638 (Fed. Cir. 2018), no matter how much of an advance in “generating contracts” the claims would recite, said advance would still lie entirely within the abstract realm of Certain Methods of Organizing Human Activities with no plausibly of the alleged innovation entering the non-abstract realm. The “SAP” findings were further corroborated by Versata Dev Grp Inc v SAP Am Inc 115 USPQ2d 1681 Fed Cir 2015, again undelaying the difference between improvement to entrepreneurial goal objective versus improvement to actual technology. MPEP 2106.04. Here any alleged advance in “generating contracts” would correspond to such abstract, entrepreneurial concept, not an improvement to actual technology
As per the argued, yet still to be claimed users in different geographical areas, as argued by Remarks 07/17/2025 p.7, the Examiner points to MPEP 2106.04(a)(2) II ¶6, 5th sentence, to stress that the number of people involved in the activity is not dispositive as to whether a claim limitation falls within the abstract grouping of certain methods of organizing human activities. Also, considerations for “favorability” and popular[ity] as argued by Remarks 07/17/2025 p.7 fall well within the behaviors and behavior related interactions of the abstract grouping of Certain Methods of Organizing Human Activities [MPEP 2106.04(a)(2) II B, C].
Examiner also disagrees which Applicant’s mischaracterization, made at Remarks 07/17/2025 p.6 ¶3 last ¶ - p.7 ¶1, that Bancorp Services, LLC v. Sun Life Assur. Co. of Canada, 687 F.3d 1266 (Fed. Cir. 2012), only generates numbers not text, because both US Patents 5926792 and 7249037 owned by Bancorp and tested by the Federal Circuit in Bancorp Services, L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266 (Fed. Cir. 2012), recited at their respective independent claim 1 “a policy generator for generating a life insurance policy”. This generating is for a policy, not just for a number, as no insurance policy comprises just a number. The fact that Applicant recognized that the life insurance policy includ[es] a stable value protected investment with an initial value based on a value of underlying securities of the stable value protected investment as claimed in Bancorp supra, does not negate the fact that the “life insurance policy” in Bancorp was actually generated by the “policy generator”. Additionally, and separate from the point made by Examiner above, it also submitted that both stable and/or initial values of the policy could be viewed as being alphanumeric, and thus text components of the policy itself. A value or number as characterized by Applicant above, is a constituent of the abstract alphanumeric component of the policy or contract.
Examiner also disagrees which Applicant’s characterization of the claims as being similar to the digital image halftoning of Research Corp. Technologies, Inc. v. Microsoft Corp, 627 F.3d 859 (Fed. Cir. 2010) as made at Remarks 07/17/2025 p.8 ¶1. This is because there is nothing in the current claims remotely analogous to the technological details of halftone rendering of gray scale images in which a digital data processor was utilized in a simple and precise manner to accomplish halftone rendering, as was the case in Research Corp. Technologies supra. Rather here, as admitted by Applicant at Remarks 07/17/2025 p.8 ¶1, the contract generating is an end result, which Examiner asserts as an abstract end result of equally abstract legal interactions, managing relationship between people (akin here parties such as first and second parties) and/or fundamental economic practices, with MPEP 2106.04(a)(2) II A ¶1 clarifying that the term fundamental "is not used in the sense of necessarily being "old" or "well-known" but rather as a building block of the modern economy. Here, generating a contract as an end result, as attested by Remarks 07/17/2025 p.8 ¶1, represents such building block of modern economy, without a requirement of being old or well-known, much less requiring to be practically implementable by the human mind, since its abstract character falls squarely within the auspices of the abstract grouping of Certain Methods of Organizing Human Activities.
Examiner also submits, in the arguendo, just for the sake of the argument, that even if the claims are tested under the abstract Mental Processes grouping, the Applicant would still fall short to persuasively demonstrate that the claims cannot be implemented as computer-aided mental processes. This is because MPEP 2106.04(a)(2) III C, does not only characterize the abstract grouping of Mental Processes to pure mental processes but rather expends such grouping to computer-aided mental processes. See for example MPEP 2106.04(a)(2) III C noting that: #1. Performing a mental process on a generic computer, # 2. Performing a mental process in a computer environment, # 3. Using a computer as a tool to perform a mental process, do not preclude the claims from reciting the abstract mental processes. For example, in FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 120 USPQ2d 1293 (Fed. Cir. 2016), as cited by MPEP 2106.04(a)(2) III C #2, the Federal Circuit ruled that even the “inability for the human mind to perform each claim step does not alone confer patentability. As we have explained, “the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter” citing Bancorp Servs., 687 F.3d at 1278. The Federal Circuit’s rationale in “FairWarning” was corroborated by Planet Bingo LLC v. VKGS LLC U.S. Court of Appeals, Federal Circuit 2013-1663 August 26,2014, 576 Fed Appx 1005, 2014 BL 235907, where Planet Bingo unpersuasively argued that handling millions of preselected Bingo numbers by computer program makes it impossible for the invention to be carried out manually. Both “FairWarning” and “Planet Bingo” follow the Supreme Court’s decisions which made it clear that judicial exceptions need not be old or long-prevalent, and that even newly discovered or novel judicial exceptions are still exceptions. See MPEP 2106.04 I ¶5. For example, the Federal Circuit echoed the Supreme Court ruling in Fairwarning Ip, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 120 U.S.P.Q.2d 1293 (Fed. Cir. 2016), as cited by MPEP 2106.04, by finding that Fairwarning’s alleged accessing, compilation and combination of disparate information sources to make it possible to generate a full picture of a user's activity, identity, frequency of activity, and the like in a computer environment, is representative of merely selecting information, by content or source, for collection, analysis, and announcement does not differentiate the process from ordinary mental processes, whose implicit exclusion from 101 undergirds the information based category of abstract ideas. Elec Power,830 F3d 1350, [2016 BL 247416],2016WL 4073318 at 4.
Here too, the access, compilation and combination of disparate information, as argued at Remarks 07/17/2025 p.7-p.8 by what the users in different geographical areas have selected, to make it possible to generate their own contracts, is an example of a full picture of activity, identity, frequency of activity, and the like in a computer environment, which is not be meaningfully different than the above legal findings in FairWarning supra, and thus it would also not preclude the current claims from reciting describing or setting forth the abstract exception, with MPEP 2106.05(a) further corroborating that an argument for an alleged improvement to the information stored by a database, as attempted here by Applicant at Remarks 07/17/2025 p.7 with respect to the “clause database” and “database entry”, is not equivalent to improvement in actual technology [i.e. database’s functionality].
In conclusion, the Examiner demonstrated that the Applicant improperly applied the mental test to the certain methods of organizing human activities grouping. Also, the Examiner has provided a preponderance of legal evidence demonstrating that the claims’ character as a whole, remains undeniably abstract, with no computer aids, or additional computer-based elements capable to render the claims less abstract and eligible. Thus, it is believed the claims should remain rejected under 101.
Response to 103 Arguments
- independent Claim 1-
Examiner considered the prior art arguments but respectfully disagrees finding them unpersuasive.
Argument I: Remarks 07/17/2025 p.9 ¶2 argues none of the documents and tasks in Hudak et al, US 20160042460 A1, can be described as “contracts”. Examiner considered the argument I, but respectfully disagrees by applying the broadest reasonable interpretation, per MPEP 2111, to interpret intellectual property assets (IPAs) such as patent applications with associated invention disclosure (IDF), as contracts or licenses aimed to exclude others from making, using, or selling an invention.
Here, as confirmed right from onset by Original Specification ¶ [0001]: “The present invention relates generally to systems, methods, and software for generating and reviewing documents, and specifically to systems, methods, and software for generating and reviewing legal contracts”.
Bases on these finings, the Examiner interprets the drafting, creating, or generating any such intellectual property assets and/or their underlining invention disclosure, at any stage, from the initial drafting to signature, as examples of generating contracts, obligations, rights or agreements. Based on such claim interpretation Hudak ¶ [0038] 2nd sentence describes a contact document as an IPA [intellectual property asset] that includes an disclosure of the invention, application for a patent, an issued patent, a trademark application, an issued trademark, a copyright application, a granted copyright, trade secret, and/or any type of IPA an inventor, individual, company, applicant, or group is seeking to protect and/or manage. Initially, Hudak ¶ [0054] 1st,3rd,12th,13th sentences discloses when a user wishes to draft [or generate] a new application, the user selects a new application option from application drafting portal and selects invention disclosure form-IDF from the list of IDFs existing within Invention Disclosure portal, and the title and related application info is pulled automatically from the IDF. The application drafting portal generates an application template with the title, reference to any related applications and claims included. The Abstract and Background are pulled and included into the application template, provided in the linked IDF. ¶ [0096] 2nd-3rd sentences: user selects IDF from which user wants to work. An application template is generated with fields of the application already completed, described with reference to Application Drafting portal. Similarly, ¶ [0052] 4th sentence noting: the system autogenerates the IDF [invention disclosure]. ¶ [0078] 2nd-3rd sentences: The system also provides user with a response template once the user selects a response type. The system autofills any information into the response template and notify the user that the response [or end result] is ready for editing and/or reviewing.
Hudak ¶ [0061] 3rd sentence provides another example where upon completing edits within the system, the system generates the appropriately formatted document for filing a response with the IP Office. The fact that the generation of such patent legal documents or responses is achieved using a degree of automation such as an application template, as criticized by Applicant Remarks 07/17/2025 p.9 ¶3, 2nd sentence, and the associated existing information and response options as criticized by Applicant Remarks 07/17/2025 p.9 ¶3, 4th sentence, including the template’s pre-filled sections of Hudak mid-¶ [0054], bolster rather than discredit Hudak’s capabilities in generating legal documents or responses. In fact, Applicant praises the use of a pre-scripted draft clause in the current invention at Remarks 07/17/2025 p.7 last two sentences, while, at same time, criticizing at Remarks 07/17/2025 p.9 ¶3, 2nd-4th sentence, the use by Hudak of an analogous application template and pre-existing or pre-filled information and options.
Thus, Hudak’s drafting or generation of intellectual property assets (IPAs) and their associated invention disclosure (IDF) such as a continuation appclaition at Fig.8 and associated text, fall well within the broad interpretation of the term “contracts”, when read in light of the broadest reasonable interpretation, tested per MPEP 2111. Thus, Hudak teaches or at least suggests the contested feature.
Argument II: Remarks 07/17/2025 p.9 ¶2 argues that Hudak’s selecting of any existing matter and accessing information about that matter, such as bibliographic data, response options, etc. does not teach or suggests “selecting at least one parameter for the contract to be generated”.
Examiner fully considered argument II but respectfully disagrees finding unpersuasive that Hudak does not teach or suggest “selecting at least one parameter for the contract to be generated”.
First, Examiner notes that while the Original Specification ¶ [0033] provides some examples of what a parameter can be, the Original Specification does not provide an explicit definition for the term parameter and leaves its interpretation as broad and open ended as confirmed by expression: “any” “parameters affecting the document” at Original Specification ¶ [0033]. In the absence of such explicit definition, and the open ended interpretation of the term parameter as any parameter of the document as read in light of Original Specification ¶ [0033], the Examiner applies the broadest reasonable interpretation test as instructed by MPEP 2111, and broadly interprets the term “parameter” as any matter or information about that matter, including but not limited to bibliographic data, response options, family member that is continuation-in-part, value and importance of invention, importance to competitors, infringement detectability and ease of design around, likelihood of success, rank or score the invention and any other characteristic related to the intellectual property asset (IPA).
Bases on the breadth of such claim construction or interpretation, as tested under the broadest reasonable interpretation, the Examiner submits that Hudak teaches or at the very least suggests:
- “selecting at least one parameter for the contract to be generated”;
(Hudak ¶ [0057] 3rd sentence: select any matter and access information about that matter. For example, at ¶ [0060] 2nd-3rd sentences: user selects: bibliographic data, response options etc. Selection of each of these user interface controls 64 presents user with a new interface pertaining to the selected user interface control. ¶ [0070] last sentence: when a user selects a family member that is continuation-in-part, the system may provide to the user the subject matter that was added in the continuation-in-part. ¶ [0076] 3rd-5th sentences: other example where the user provides feedback on value and importance of invention. the user provide comments or a numerical score with respect to the importance to company, importance to competitors, infringement detectability and ease of design around, likelihood of success, and any other characteristic. The rank or score the invention received is used to determine the response option choice);
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Hudak Fig.14
This concept is further detailed by Hudak at ¶ [0052] 6th-7th sentences recites: the invention disclosure portal may include data entry fields such as title of the invention, abstract, key words... an invention description … etc. The form or document may be configured to accept, within its data entry fields, data of varying formats, including text… Similarly ¶ [0055] 4th-5th sentence: In the dialogue box, the user is prompted to enter a figure number… and provide a few word summary of what the figure shows. In such embodiments, the application drafting portal adds a Brief Description of Drawings into the application template reflecting the information entered by the user in the various dialogue boxes or windows. Similarly, ¶ [0054] 3rd,6th-18th sentences: user may be able to select an IDF [invention disclosure form] from the list of IDFs existing within the Invention Disclosure portal, and the title and related application information is pulled automatically from the IDF. The user may be provided with a drop-down menu or prompt for designating which claim, if any, a particular claim depends from. If a user indicates that a particular claim depends from another claim, the appropriate dependent claim language (e.g., “The system of claim 1”) [as exemplary version] may be added to the claim language by the system. In some embodiments, a user may be able to select two independent claims. In such instances, the draft claim is copied to appear under each respective independent claim. In some embodiments, claims may be moved around or added, and the claim numbering, including the numbering of dependent claims, will automatically update. In some embodiments, once the claims are drafted, the system automatically converts the text of the claims into paragraph form for use in the summary and/or detailed description of the specification. In some embodiments, the application drafting portal generates an application template with the title, reference to any related applications, and the claims included. In some embodiments, an Abstract and/or Background are also pulled and included into the application template, if provided in the linked IDF. Additionally, or alternatively, the application template may include a pre-filled Summary section, which includes the claims written in paragraph form. In some embodiments, if edits are made to the claims, the user is asked if the user wishes to make the same edits to the Summary. In some embodiments, the Summary section is automatically updated to reflect changes to the claims. In some embodiments, the application template additionally or alternatively includes pre-set language used in each application template. This pre-set language may be preset by the system or pre-set by the user.
Thus here, there is a preponderance of evidence for Hudak teaching or at least suggesting the
“selecting at least one parameter for the contract to be generated” as contested by Applicant at
Remarks 07/17/2025 p.9 ¶2. Thus, the Applicant’s argument II is unpersuasive.
Argument III: Remarks 07/17/2025 p.9 last ¶ - p.10 ¶1, 4th sentence, argues that Hudak does not recite the word “tag” as required by limitation “adding at least one initial tag corresponding to the at least one parameter to a database for the contract to be generated”.
Examiner fully considered the argument III but respectfully disagrees fining it unpersuasive by reminding that the current rejection is an obviousness type rejection that takes into account knowledge within the level of ordinary skill at the time the claimed invention was made. Even for a more stringent prior art rejection based on anticipation, which is not the case here, an ipsissimis verbis test (i.e. identity of terminology) is not required, let alone for an obviousness typer rejection as is the case here.
Equally important, the Applicant does not provide an explicit definition for the term “tag”. In the absence of such definition, Examiner interprets the term tag under the broadest reasonable interpretation, as instructed by MPEP 2111, and broadly understood to comprise any example of a label, attachment, addition, including but not limited to: hyperlink, highlight, added description, etc. Based on such broad claim interpretation, Hudak teaches or at least suggests:
- “adding at least one initial tag corresponding to the at least one parameter to a database entry for the contract to be generated”; (Hudak ¶ [0060] 1st-3rd, 8th sentences: include hyperlinks [interpreted as tags], to navigate to the specific matter, where each prosecution item includes the attached documents / hyperlinks 72 to the relevant information, for example, claims sets, signed declarations, arguments, etc. Next, at ¶ [0073] 4th sentence: The claim sets provided as hyperlinks, such that the user selects the link to view the claim set. A different example is shown at ¶ [0052] 7th sentence where: the invention disclosure portal include data entry fields such as key words. see Fig.4 noting Key Words field: 4-8 keywords that describe [or tag] your invention. Subsequently, at ¶ [0061] last sentence: the system highlights [tags] where key terms in the claims or phrases in the claims are present within the specification. The system generates an alert to the user if terminology added into the claims is not present within the specification as filed. ¶ [0095] 1st-4th sentences: the IDF is automatically mined for keywords. The keywords may be pulled from the title and/or frequent nouns appearing within the IDF summary/disclosure. In other embodiments, the IDF includes user-fillable keywords entry line, from which the system pulls the keywords. In some embodiments, the system searches a database for prior art with those keywords and/or similar words. See, other different examples at Fig.9 element 91 & ¶ [0065] 2nd sentence, Fig.14 element 141).
Thus, Hudak teaches or at least suggests the contested feature.
Argument IV: Remarks 07/17/2025 p.10 ¶1, 5th -8th sentences argues Hudak does not teach contract clauses, and his information is preexisting information about a patent matter with nothing to do with document drafting. Thus, it is argued Hudak is not “selecting a plurality of clauses from a clause database, wherein each of the plurality of clauses corresponds to the at least one initial tag”.
Examiner fully considered the argument IV but respectfully disagrees finding it unpersuasive.
As per Applicant’s assertion that Hudak has nothing to do with drafting a document, Examiner points to Applicant’s own admission at Remarks 07/17/2025 p.17 ¶1, 2nd sentence that the Hudak’s invention is a patent portfolio managing tool that can generate a form or an application template.
Examiner resubmits to stress that the fact that the generation of such patent legal documents or responses in Hudak is achieved using a degree of automation such as an application template and associated existing information and options as criticized by Applicant, bolster rather than discredit Hudak’s capabilities in generating legal documents or responses. In fact, Applicant praised use of a preexisting or pre-scripted draft in the current invention, while, at same time, criticizing, the use by Hudak of an analogous application template, pre-existing or pre-filled information and options.
As per Applicant’s assertion that Hudak does not teach “selecting a plurality of clauses from a clause database, wherein each of the plurality of clauses corresponds to the at least one initial tag”.
the Examiner interprets the term contract clause, based on broadest reasonable interpretation, and in accordance with MPEP 2111, as any provision within a contract that addresses a particular aspect of the document, outlining the rights, obligations, or conditions for the parties involved. Simply said, Examiner interprets the contract clauses as building blocks of the contract or document, clarifying and/or defining different parts of the contract or document. Based on the breadth of such claim construction or interpretation, consistent with MPEP 2111, the Examiner submits that Hudak’s disclosure of claims, claims’ limitations or any components of the intellectual property asset, such as Title, Abstract, Background, Drawings, Summary or Brief Description or other parts of the Specification teach or at least suggest the clauses contested by Applicant above. As per the “clauses corresponds to the at least one initial tag”, the Examiner points to Hudak ¶ [0073] 4th sentence reciting: The claim sets may be provided as hyperlinks such that the user selects the link to view the claim set. Specifically, at ¶ [0054] last 6 sentences: the application drafting portal generates an application template with the title [or clause], reference to any related applications, and the claims included. In some embodiments, an Abstract and/or Background [other examples of clauses] are also pulled and included into the application template, if provided in the linked IDF. Additionally, or alternatively, the application template include a pre-filled Summary [other example of clause] section, which includes the claims written in paragraph [clause] form. In some embodiments, if edits are made to the claims, the user is asked if the user wishes to make same edits to Summary [clause]. In some embodiments, the Summary [clause] section is automatically updated to reflect changes to the claims. In some embodiments, the application template additionally or alternatively includes pre-set language used in each application template. This pre-set language may be preset by the system or the user. ¶ [0078] 2nd-3rd sentences: The system provide the user with a response template once the user selects a response type. The system autofill any information into the response template and notify the user that the response is ready for editing and/or reviewing). Thus, Hudak teaches or at least suggests the contested feature.
Argument V: Remarks 07/17/2025 p.11 argues Hudak Fig.8 discloses claim 5 and claim 6, which although are each dependent from parent claim 4, are still argued by Applicant as not alternative versions of any clauses [i.e. alternatively further narrowing the parent claim 4]. Further, Remarks 07/17/2025 p.11 last ¶ - p.12 ¶1 argues that Hudak disclosure at ¶ [0107] of different scenarios also do not disclose alternative versions of any clauses.
Examiner fully considered the argument V but respectfully disagrees fining it unpersuasive.
Examiner reincorporates the findings regarding claim interpretation above of the broadest reasonable interpretation of the term clause as a particular aspect of the intellectual property asset.
Under such broadest reasonable interpretation, the claims or claims limitations are examples of clauses. As per the claim 5 and claim 6 of the claims sets in Hudak Fig.8, Examiner points to MPEP 608.01(i), 37 C.F.R. 1.75 Claims. (c): Any dependent claim which refers to more than one other claim ("multiple dependent claim") shall refer to such other claims in the alternative. Similarly, see MPEP 608.01(n) I: 35 U.S.C. 112(e), authorizes multiple dependent claims in applications as long as they are in the alternative form”. Here, consistent with the findings above, Hudak provides factual findings at Fig.8 where claim 5 and claim 6 narrow, in alternative branches, subject matter of parent claim 4.
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Hudak Fig.8 in support of rejection arguments
Hudak Fig.13 and ¶ [0073] 2nd-3rd sentences provides a different example where: The related claims include the amendment history of the claims of the IPA. Alternatively, related claims include claims from portfolio, family members, competitor's portfolio, and/or reference, similar to pending claims and/or inform decision regarding the pending claims. ¶ [0076] last 2 sentences: user provide a numerical score with respect to any other suitable characteristic used to determine the response option choice [or alternative] Per, ¶ [0107] last sentence: by comparing different scenarios, the system empowers user to make decisions on: taking time extensions, abandoning application, abandoning after final rejection (rather than filing RCE or appeal), number of new applications filed, or any other matters requiring a decision. ¶ [0100] last 2 sentences: the system presents a list of those matters to the user, and specific Office Action rejections and responses pertaining to the cited reference are presented to the user who use this info on user’s Office Action response strategy, choosing, to make similar amendments to overcome the reference, or make different [interpreted as alternative] amendments to avoid redundancies in the portfolio.
Thus, Hudak teaches or at least suggests the contested feature.
Argument VI: Remarks 07/17/2025 p.12 ¶1, 4th-5th sentences, further argues Hudak does not teach “for at least one clause, recording a user selection relative to the at least one clause” because Hudak ¶ [0063] refers to the date and timestamp of claim amendments or comments over time, not recording which version of a clause the user chose.
Examiner fully considered the argument VI but respectfully disagrees fining it unpersuasive.
Examiner first notes that Applicant mischaracterizes what is actually claimed. The claim requires “recording a user selection relative to the at least one clause”, not recording which version of a clause the user chose. Based on the broadest reasonable interpretation, the claimed term “relative to” is broadly interpreted as relating to, or interpreted as, associated to. Based on such claim construction or claim interpretation according to the broadest reasonable interpretation [MPEP 2111], the Examiner submits that Hudak’s disclosure at Fig.8, ¶ [0063] 2nd sentence of tracking date and time-stamp of claim amendments over time are related, indicative, associated, or “relative to the at least one clause” [or claim] and thus met the contested claim limitation. Indeed as previously confirmed by Hudak ¶ [0060] 5th-6th sentence: “the prosecution history may include the history of action types received, the history of amendments made”... “Each prosecution history item may be presented with a date”. Thus, Hudak teaches or at least suggests the contested feature.
Argument VII: Remarks 07/17/2025 p.12 ¶2 argues Hudak does not teach “using a computing device to generate a final version of the contract based on user selections” because Hudak ¶ [0051], merely refers to buttons for finalizing signature documents.
Examiner fully considered the argument VII but respectfully disagrees fining it unpersuasive.
Examiner first notes that the contested limitation provides no details of what generat[ing] a final version of the contract, entails. Based on such finding, the breadth of the claims and the broadest reasonable interpretation applied per MPEP 2111, the Examiner submits that finalizing prosecution matters 32b, and finalizing signature documents 34b as disclosed by Hudak at Fig.3B and ¶ [0051] last 2 sentences fully meet the broad limitation “using a computing device to generate a final version of the contract based on user selections" as contested by Applicant above. see
Hudak ¶ [0051] last 2 sentences: Fig.3B includes buttons for finalizing prosecution matters 32b and finalizing signature documents 34b. ¶ [0069] 4th-7th, 9th sentences: the system will track receipt of the signature(s) and compile the document(s) for filing. The system may file the document directly. Alternatively, the system may coordinate (through an API or otherwise) with a system i.e. Docusign or Hellosign to obtain the signatures. as shown in Fig.10, once the signature has been received, the system may transfer the signed document from the inbox bin/column 100 to signed/submitted bin/column 101, such that the user can visually confirm completion of the task);
Thus, Hudak teaches or at least suggests the contested feature.
Argument VIII: Remarks 07/17/2025 p.12 last 2 sentence admits Chan et al, US 20190079979 A1 teaches “selections made by the user” as actionable tasks, but still disputes that Chan teaches or suggests that such admitted selections are aggregated or added to the statistical data, and displayed to other users to inform them in making their selections.
Examiner fully considered the argument VIII but respectfully disagrees fining it unpersuasive.
Examiner again notes that the Applicant mischaracterizes the claim language. Chan was relied upon to teach the actual limitation of “aggregating the selections made by the user and adding them to the statistical data”, not necessarily the display to other users to inform them in making their selections as apparently argued by Applicant above at Remarks 07/17/2025 p.12 last two sentences.
Examiner equally notes that Applicant admits at Remarks 07/17/2025 p.12 last two sentence,
that “selections made by the user” are actionable tasks. From here, the Examiner further expands by clarifying that such selected actionable tasks comprise tasks related to clauses such as claims consistent with Hudak’s disclosure. For example Chan ¶ [0263] is clear … actionable tasks such as … amend at least one claim of the patent,… a predetermined number of terms requested for claim construction… etc. At no point does Chan limit selections of actionable tasks to only file a motion to exclude the opposing party's expert declaration, as over narrowly interpreted by Remarks 07/17/2025 p.12 last two sentence. Chan ¶ [0232] is also clear: where multiple selectable inputs are selected [or aggregated], where 1st proposed actionable task 1002 and 2nd proposed actionable task 1012 are both selected, overall probability reflected on dashboard 1000 is shown as an accumulated sum. In the example shown, 2nd new predicted probability 1028 is shown as accumulated sum [or aggregation] based on 1st new predicted probability 1024 (10.0% increase associated with 2nd proposed actionable task 1012 is stacked onto 1st new predicted probability 1024 and shown as accumulated predicted probability of 78.5%). Additional details were provided by Non-Final Act 02/20/2025 p.17 last ¶-p.18 ¶1 and reincorporated. Thus, Chan teaches or at least suggests the contested limitation.
Argument IX: Remarks 07/17/2025 p.13 ¶1, 1st sentence argues that there does not appear to be any point in combining Hudak and Chan because it is argued that Chan appears to be intended to train an AI system to determine the likelihood of winning a patent matter, while Hudak appears to be intended to manage a patent portfolio and generate formulaic boilerplate such as invention disclosures or patent forms. Then, Remarks 07/17/2025 p.13 ¶1, 2nd sentence further argues that neither Hudak nor Chan generate contracts out of predetermined clauses, nor contain even the slightest hint of generating contracts out of predetermined clauses.
Examiner fully considered the Argument IX but respectfully disagrees finding it unpersuasive.
Examiner first notes that Applicant merely contests the combination rationale of Hudak and Chan as elaborated by Non-Final Act 02/20/2025 p.19 ¶1 vis-à-vis MPEP 2143 A. The Applicant is yet to rebut the separate MPEP 2143 G rationale of teaching, suggesting, or motivate, in modifying Hudak’s teaching to include Chan’s teachings as elaborated by Non-Final Act 02/20/2025 p.18 ¶2.
In any event, and separate from the Appclaint overlooking the MPEP 2143 G rationale, the Examiner responds to the Applicant’s criticism of the combining Hudak and Chan [MPEP 2143 A] by submitting that each of Hudak and Chan disclose a similar field of endeavor of intellectual property, where Hudak ¶ [0100] last two sentences, ¶ [0107] 4th sentence compares different scenarios for decision making such as choosing to make similar amendments to overcome a reference, make different amendments to avoid redundancies in portfolio, taking time extensions, abandon application, abandon after final rejection, number of new applications filed, or any matters requiring a decision, and analogously Chan at ¶ [0225], ¶ [0234] 3rd sentence, ¶ [0224] 3rd-6th sentences, ¶ [0227] second sentence, ¶ [0228], ¶ [0229], ¶ [0232] provides an analysis for such decision for intellectual property, emphasized by Chan ¶ [0048] 2nd sentence: The cornerstone of success for many patent infringement suits is the intellectual, cognitive ability to make critical decisions quickly and accurately. Thus, both Hudak and Chan appear to act within same or similar intellectual property / contract field of endeavors or at the very least appear to be reasonably pertinent to the problem faced by the inventor in decision making as read in light of Original Spec. ¶ [0006]-¶ [0007]. Add to this, the fact that Applicant himself or herself refers to a patent licensing agreement at Original Specification at ¶ [0051] 4th sentence, and it becomes increasingly clear the analogous character among Hudak and Chan and the current invention. Also, despite the Applicant allegation to the contrary, each of the Applicant’s contested elements in the prior argument above was explained by the Examiner as taught or suggested by Hudak and Chan, albeit not necessarily in a single prior art reference, and each data processing or analytical element in the creation, processing and/or analysis of the intellectual property contracts (i.e. patent application) above, has been shown to have performed the same function as it did separately. Further the predictability of either the modification or the currently argued combination would have been further corroborated by the broad level of skill of one of ordinary skills in the art as articulated by Hudak at ¶ [0037], ¶ [0116] last sentence in view of Chan at ¶ [0511]-¶ [0512].
All these findings of fact and of law remain undisputed by Applicant.
Based on the preponderance of legal and factual evidence as articulated above, the Examiner reasons that one of ordinary skill in the art would have recognized that, given existing technical ability to combine the elements as evidenced by Hudak in view of Chan, the to be combined elements would have fitted together like puzzle pi