DETAILED ACTION
Notice of Pre-AIA or AIA Status
● The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
● Claims 1-7 are currently pending.
Information Disclosure Statement
● The information disclosure statement (IDS) submitted on 12/27/2022 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding independent claim 1, the claim recites “providing a set of legal contracts in machine readable form; annotating said legal contracts to obtain a structured contractual database comprising evidentiary text comprised of categorized legal-phemes; assembling said evidentiary text to obtain a set of categorized contractual sentences or phrases in natural language; defining a knowledge representation language having a set of syntax rules and a set of semantic rules that, combined, limit written sentences or phrases to a single, unambiguous interpretation; automatically determining a sub-set of said categorized contractual sentences or phrases that map to said knowledge representation language, said sub-set being a transparent, computer-processable contractual natural language; and, writing, by a user, a computer processable legal contract comprised of sentences or phrases contained in said transparent, computer-processable contractual natural language”.
The limitations of “providing, annotating, assembling, defining, determining, writing” require no technological components that preclude the steps from practically being performed in the mind. The ameliorative action comprising said steps does not move the idea away from a mental process. These claim limitations all amount to generic computer components, because even without those components, these steps could be performed in the human mind. If claim limitations, under their broadest reasonable interpretation, cover concepts performed in the human mind (including an observation, evaluation, judgment, opinion), but for the recitation of generic computing components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claims recite only those generic computing components described above when executing the abstract idea. These elements are recited at a high-level of generality (e.g. as a generic processor performing generic computer functions such as analyzing) such that they amount to no more than mere instructions to apply the exception using generic computer components. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limitations on practicing the abstract idea. The claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements described above amount to no more than mere instructions to apply the exception using a human being and generic computer components. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims are not patent eligible.
Dependent claims 2-7 includes additional steps of obtaining, clustering, associating, categorizing, and determining attributes of the electronic document (legal contract) using a pen/paper wherein a user can visually and mentally perform these steps. Dependent claims 2-7 are in similar to those already addressed in independent claim in additional iterations. For these reasons, the dependent claims fail t add patent eligible subject matter to the independent claim under 35 U.S.C. 101.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-7 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Vidhani et al (US 20210182990).
Regarding claim 1, Vidhani discloses a method of creating and using a transparent, computer-processable contractual natural language (par. 60), comprising: providing a set of legal contracts (legal contracts, pars. 8-10) in machine readable form; annotating (contract editing, par. 25) said legal contracts to obtain a structured contractual database comprising evidentiary text comprised of categorized legal-phemes (legal terms, pars. 38-40); assembling said evidentiary text to obtain a set of categorized contractual sentences (contractual terms, pars. 41-43) or phrases in natural language; defining a knowledge representation language having a set of syntax rules and a set of semantic rules (rules, par. 32) that, combined, limit written sentences or phrases to a single, unambiguous interpretation; automatically determining a sub-set of said categorized contractual sentences or phrases that map to said knowledge representation language (pars. 41-44) , said sub-set being a transparent, computer-processable contractual natural language; and, writing, by a user, a computer processable legal contract comprised of sentences or phrases contained in said transparent, computer-processable contractual natural language (contractual language, pars. 41-43).
Regarding claim 2, Vidhani further discloses the method of claim 1, wherein, annotating said legal contracts further comprises: providing a set of required categories and subcategories; obtaining, in said legal contracts, a set of relevant lines associated with one or more of said categories or subcategories; clustering said relevant lines by one or more of said categories or subcategories (categories, pars. 43) using textual similarity or alignment; obtaining, in each of said clustered, relevant lines, one or more legal-phemes representative of one or more of said categories or subcategories thereby obtaining a set of categorized legal-phemes (pars. 10-14); and, associating one or more of said categorized, legal-phemes with an evidentiary text obtained from said relevant lines.
Regarding claim 3, Vidhani further discloses the method of claim 2, wherein said categorized legal-phemes are text-fragments relevant to said categories and subcategories (categories, par. 43).
Regarding claim 4, Vidhani further discloses the method of claim 1, wherein, said syntax rules (par. 32) require each sentence to conform to the structure of a well-formed formula comprising one or more n-ary relations of class expressions and variables, where n is a positive integer greater than one.
Regarding claim 5, Vidhani further discloses the method of claim 4, wherein, said class expressions comprise a constant symbol, a monadic predicate symbol, a variable symbol, an n-ary relation symbol and an inverse of n-ary relation symbol (fig. 3).
Regarding claim 6, Vidhani further discloses the method of claim 4, wherein, said set of semantic rules comprises a domain of elements (pars. 41-43), and an interpretation function that assigns a unique subset of said domain to each of said class expressions, variables, and formulas.
Regarding claim 7, Vidhani further discloses the method of claim 1, further comprising defining a reasoning mechanism associated with said knowledge representation language; and, automatically determining a validity of a set of terms and conditions written (terms and conditions, pars. 8-10) (par. 61) in said transparent computer-processable contractual natural language using the said reasoning mechanism, thereby making said transparent computer-processable contractual natural language computable (par. 60).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THIERRY L PHAM whose telephone number is (571)272-7439. The examiner can normally be reached M-F, 11-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hai Phan can be reached at 571-272-6338. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THIERRY L PHAM/Primary Examiner, Art Unit 2654