Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
This action is in reply to the amendments and remarks filed on January 16, 2026.
Claims 1-17 are currently amended.
Claims 18-20 are new.
Claims 1-20 are currently pending and have been examined.
Applicant’s remarks and arguments are addressed below.
Claim Objections
Claim 19 is objected to because of the following informality: there is an empty space and an extraneous comma in the 6th line of the claim. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. § 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. When considering subject matter eligibility under 35 U.S.C. § 101, there are multiple steps that may need to be assessed. First, in step 1 it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined in step 2A prong 1 whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). If the claim is directed toward a judicial exception, it must then be determined in step 2A prong 2 whether the judicial exception is integrated into a practical application. Finally, if the judicial exception is not integrated into a practical application, it must additionally be determined in step 2B whether the claim recites “significantly more” than the abstract idea. See “2019 Revised Patent Subject Matter Eligibility Guidance,” 84 Fed. Reg. (4): 50-57 (Jan. 7, 2019).
In the instant case, Claims 1-8 are directed toward a method, i.e., process, Claims 9-16 are directed toward a system, i.e., apparatus, and Claims 17-20 are directed toward a non-transitory computer readable medium, i.e., article of composition. Thus, each of the claims falls within one of the four statutory categories as required by step 1. Nevertheless, the claims are directed toward the judicial exception of an abstract idea in step 2A prong 1. Independent Claim 1 recites as follows:
Claim 1. A method for automated project document generation, the method comprising:
receiving agreement information regarding an agreement with a client through a communication network, wherein the agreement information concerns an offer associated with the agreement;
retrieving rule data from one or more databases through the communication network and based on the agreement information;
identifying, based on the agreement information, a level of compliance of the client with the agreement; and
identifying one or more actions based on the level of compliance and the rule data, wherein the one or more actions indicate that one or more lien forms are to be filed by one or more deadlines;
generating the one or more lien forms and automatically populating the one or more lien forms based on the agreement information; and
transmitting the one or more lien forms to at least one third-party computing device to file the one or more lien forms by the one or more deadlines.
The bold language above corresponds to the abstract ideas recited in Claim 1 (whereas the underlined language is language that is addressed in step 2A prong 2 and step 2B). As the bold language above demonstrates, Applicant’s claims are directed toward automating the process of filing contractor liens in a contractor setting. This is a method of organizing human activity, specifically one involving commercial and legal interactions. See MPEP § 2106.04(a)(2)(II)(B). Because the instant invention is performing an action regarding legal means (e.g., filing of liens such as with the appropriate legal entities and by the appropriate legal deadlines) for obtaining payment for services rendered (a commercial interaction), the invention is reciting a certain method of organizing human activities, specifically commercial and legal interactions.
Finding the claims to be directed toward an abstract idea, however, is not the end of the inquiry. Rather, the next step is to determine whether the judicial exception is integrated into a practical application (step 2A prong 2). The revised guidance provides exemplary considerations that are indicative that an additional element or combination of elements may have integrated the exception into a practical application: 1) an additional element reflecting an improvement in the functioning of a computer or an improvement to another technology or technical field, 2) an additional element that implements the judicial exception with a particular machine or manufacture that is integral to the claim, 3) an additional element that effects a transformation or reduction of a particular article to a different state or thing, or 4) an additional element that applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP § 2106.04(d). Examples where a judicial exception has not been integrated into a practical application include: 1) use of “apply it” or the equivalent, i.e., merely using a computer to implement or perform an abstract idea, 2) an additional element that adds insignificant extra-solution activity to the judicial exception, and 3) an additional element that does no more than generally link the use of the judicial exception to a particular technological environment or field of use. See id.
Applying these considerations to the claims in the instant application, the claims do not integrate the judicial exception into a practical application. The claims fail to recite an improvement of a computer, any improvement to a technology or technical field, any particular machine, any transformation or reduction of a particular article to a different state or thing, or any additional element that uses the judicial exception in a meaningful way. Instead, the claims are merely reciting instructions to implement the abstract idea on a computer (i.e., “through the communication network;” “automatically populating;” “a third party computing device”), which is insufficient to provide a practical application of the claims and provide subject matter eligibility. See id. Therefore, there is no integration of the abstract idea into a practical application.
If the claims are not integrated into a judicial exception, the Examiner must consider whether there is “significantly more” recited in the claim in step 2B. See MPEP § 2106.05. There is nothing unconventional or inventive in Applicant’s claims for the purpose of analysis under step 2B, e.g., any combination of elements that provide an advance over any technological state of the art. Rather, as noted above, an abstract legal and commercial interaction is merely implemented by a general-purpose computer. Other than the limitations that are abstract for the reasons articulated above, Applicant has merely recited a generic computer that facilitates the steps of the invention. Thus, Applicant’s claims merely recite a computer to implement the abstract idea, which fails to provide “significantly more” than the abstract idea.
As the MPEP states, Examiners may consider the following three factors when determining whether the claim recites mere instructions to implement an abstract idea on a computer: 1) whether the claim recites only the idea of a solution or outcome, i.e., the claim fails to recite details of how a solution to a problem is accomplished; 2) whether the claim invokes computers or other machinery merely as a tool to perform an existing process; and 3) the particularity or generality of the application of the judicial exception. See MPEP § 2106.05(f). Applying those factors to the instant application: 1) the claims do not recite how the computer performs any of the steps other than just stating that they do it; 2) the claims invoke the computer to perform a process of filing lien forms that has been performed without computers and before the ubiquity of computers; and 3) the claims are generic in nature and not recited in much particularity because it can apply to any way of filling out the liens.
The dependent claims 2-8, 10-16, and 18-20 are merely reciting further embellishments of the abstract idea and do not amount to anything that is significantly more than the abstract idea itself. Claims 2, 10, and 18 recite sending a notification to a device of the client when the lien form is generated, which is insignificant extra-solution activity. See MPEP § 2106.05(g). Claims 3, 4, 6, 8, 11, 12, 14, 16, 19, and 20 recite different abstract mental processes or further embellishments on the legal determinations required to retrieve and fill the lien forms with accurate and appropriate data. Alternatively, because these claims select information for analysis, they are providing insignificant extra-solution activity. See MPEP § 2106.05(g) citing Electric Power Group, LLC. Claims 5 and 13 recite display of a dashboard, which is insignificant extra-solution activity. See MPEP § 2106.05(g) citing Electric Power Group, LLC regarding display of selected information. Claims 7 and 15 recite storing lien forms in memory for later transmission, which is mere implementation of the abstract idea by the computer.
In other words, none of the dependent claims recite an improvement to a technology or technical field or provide any meaningful limitations that, in an ordered combination provide “significantly more” or providing any integration into a practical application. Rather, the dependent claims are merely further reciting features that are just as abstract as independent Claims 1, 9, and 17. Therefore, Claims 1-20 are directed to non-statutory subject matter and are rejected as ineligible subject matter 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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Ray (US 2006/0277516 A1).
Claim 1. Ray teaches: A method for automated project document generation, the method comprising:
receiving agreement information regarding an agreement with a client through a communication network, wherein the agreement information concerns an offer associated with the agreement (see, e.g., Figure 2 feature 110 and ¶ 33 teaching inputting new project information for a contractee; see further ¶ 34 teaching the legal strictures that apply to such an agreement/contract; see additionally ¶ 15 noting that the invention utilizes a computer network);
retrieving rule data from one or more databases through the communication network and based on the agreement information (see, e.g., at least ¶ 34 teaching automatically selecting the appropriate forms and routing them based on the appropriate lien laws and business practices of the contractee as well as the hierarchy structure of the invention);
identifying, based on the agreement information, a level of compliance of the client with the agreement (see, e.g., ¶ 45 teaching identifying whether the contractor swears payment has been made before subsequent documents are generated; see also ¶ 25 teaching that users can check the status of forms or alert messages van be sent); and
identifying one or more actions based on the level of compliance and the rule data, wherein the one or more actions indicate that one or more lien forms are to be filed by one or more deadlines (see, e.g., ¶ 37 teaching that based on any time period selected by an appropriate user or once a month, selecting forms that “are required by the lien laws of the governmental entity where the work for the project is taking place”);
generating the one or more lien forms and automatically populating the one or more lien forms based on the agreement information (see, e.g., ¶ 23 teaching automatically carrying forward information to fill out forms); and
transmitting the one or more lien forms to at least one third-party computing device to file the one or more lien forms by the one or more deadlines (see, e.g., ¶ 29 teaching filing all the lien forms including with third party electronic systems of appropriate legal authorities or their agents; see also Figure 2 feature 170, Figure 4B feature 440, and ¶s 34 and 42 teaching substantially the same).
Regarding Claims 9 and 17, these claims recite the same method steps as Claim 1 above but recite different statutory categories (a system comprising a communications interface and network and processor executing instructions stored in a memory, and a non-transitory computer readable medium, respectively). The rejection of Claim 1 above is incorporated herein to anticipate the functions or process steps of Claims 9 and 17. Ray additionally teaches a communications interface and network (see ¶ 15) as well as a readable medium, i.e., executed software (see at least ¶ 15 teaching that the invention is computer-based). Thus, with these additional teachings, Ray anticipates Claims 9 and 17. Additionally coextensive claims will be addressed together for the sake of brevity.
Claims 2, 10, and 18. Ray teaches the limitations of Claims 1, 9, and 17. Ray further teaches: The method of claim 1, further comprising: sending a notification to a device of the client in response to generating the one or more lien forms (see, e.g., Figure 2 feature 120, Figure 3 features 220 and 230, Figure 4A features 340 and 350, Figure 4B features 390 and 400, Figure 5B feature 590, and ¶s 25, 29, 33, 36, 39-41, 43, 45, and 46 teaching sending an alert email message after generating various lien forms).
Claims 3, 11, and 19. Ray teaches the limitations of Claims 1, 9, and 17. Ray further teaches: The method of claim 1, wherein the one or more lien forms include a first lien form and a second lien form, wherein the at least one third-party computing device includes a first computing device and a second computing device, wherein identifying the one or more actions includes identifying that the first lien form is to be transmitted to the first computing device and that the second lien form is to be transmitted to the second computing device, and wherein transmitting the one or more lien forms to the at least one third-party computing device includes transmitting the first lien form to the first computing device and transmitting the second lien form to the second computing device (see, e.g., Figure 4A features 340 and 350 teaching that the system routes appropriate bundles of forms to each of various subcontractors for digital signatures and Figure 4B features 390 and 400 teaching routing bundles to various approvers before, in step 440, routing the appropriate completed liens to the appropriate legal agencies).
Claims 4, 12, and 20. Ray teaches the limitations of Claims 1, 9, and 17. Ray further teaches: The method of claim 1, wherein identifying the one or more actions includes identifying the one or more deadlines for the one or more lien forms based on at least one of the agreement information or the rule data (see, e.g., ¶ 37 teaching that, for certain time periods during the project, certain forms might be required to be filed and selecting and completing those forms that “are required by the lien laws of the governmental entity where the work for the project is taking place”).
Claims 5 and 13. Ray teaches the limitations of Claims 1 and 9. Ray further teaches: The method of claim 1, further comprising: generating an interactive dashboard display interface that presents the one or more actions, the one or more deadlines, and a real-time status of each of the one or more actions (see ¶s 31 teaching that an authorized user has a “personalized ‘dashboard’ from which they can instantiate any lien forms, track forms’ progress as they are routed to appropriate parties, examine forms, sign or approve them, search form forms, etc.;” see further, e.g., ¶ 37 teaching that, for certain time periods during the project, certain forms might be required to be filed and selecting and completing those forms that “are required by the lien laws of the governmental entity where the work for the project is taking place”).
Claims 6 and 14. Ray teaches the limitations of Claims 1 and 9. Ray further teaches: The method of claim 1, further comprising: filtering contents of the agreement to extract offer information that is specific to the offer, wherein retrieving the rule data is specifically based on the offer information (see, e.g., ¶ 34 teaching that the invention selects, i.e., filters, the required lien forms based on extracted offer information specific to the offer such as the location of the project, the legal residence of the contractee or the agreed upon place of contracting).
Claims 7 and 15. Ray teaches the limitations of Claims 1 and 9. Ray further teaches: The method of claim 1, further comprising: storing the one or more lien forms in a memory in accordance with the one or more actions, wherein the one or more lien forms are each scheduled for transmission at specified times in accordance with the one or more actions, and wherein transmitting the one or more lien forms is timed according to the specified times (see, e.g., ¶ 37 teaching that based on any time period selected by an appropriate user or once a month, selecting forms that “are required by the lien laws of the governmental entity where the work for the project is taking place;” see also, e.g., ¶ 17 teaching that a contractor might be allowed to only instantiate certain types of lien forms at specific times during a project; see additionally ¶s 6, 23-24, and 32 teaching that all information and all forms are stored in database 30).
Claims 8 and 16. Ray teaches the limitations of Claims 1 and 9. Ray further teaches: The method of claim 1, further comprising: identifying the rule data to retrieve from the one or more databases based on the level of compliance of the client with the agreement, wherein the one or more databases include at least one of a local database, a state database, or a federal database (see, e.g., ¶s ¶s 16 and 24 teaching that the rule data retrieve the appropriate forms based on the laws of the legal residence of the contractee).
Response to Arguments
Applicant’s arguments have been fully considered. In the remarks, Applicant specifically addresses the following:
Claim Objections:
Claims 8 and 16 were objected to because of minor informalities. Applicant’s amendments have rendered these objections moot and the objections are withdrawn.
Claim Rejections - 35 U.S.C. § 101:
Claims 1-17 were rejected under § 101 as being directed toward the judicial exception of an abstract idea without any integration into a practical application or significantly more. Applicant first argues that the claims are not directed toward an abstract idea in step 2A prong 1 because the claims are analogous to those in McRO or Finjan (see Remarks pages 8-9). This argument is not persuasive. The claims are not analogous to McRO because the claims fail to address any computer-centric issue or provide a wholly new solution to a problem. The claims are also not analogous to those in Finjan either because they do not create any new kind of file, perform something a computer could not do before, tailor access, or provide virus filtering. Instead, the claims are directed toward the filling out and filing of lien forms. This is a commercial and legal interaction. Because the instant invention is performing an action regarding legal means (e.g., filing of liens such as with the appropriate legal entities and by the appropriate legal deadlines) for obtaining payment for services rendered (a commercial interaction), the invention is reciting a certain method of organizing human activities, specifically commercial and legal interactions.
Applicant next argues that the claims integrate the abstract idea into a practical application (see Remarks pages 10-11). This argument is not persuasive. Applicant’s invention merely recites using a computer to perform the abstract commercial and legal interaction of lien compliance. Applicant argues that the claims at issue are similar to those in Aatrix Software. That argument is not persuasive because the holding in Aatrix relates to the burden of proof in a FRCP 12(b)(6) motion. The Federal Circuit did not provide any substantive holding regarding whether the features cited by the Applicant were, in fact, sufficient to recite subject matter eligibility. Thus, Applicant’s invention fails to integrate the abstract idea into a practical application.
Finally, Applicant argues that the claims provide “significantly more” than the abstract idea (see Remarks page 12). This argument is not persuasive. First, Examiner did not specifically find that any particular feature was “well-understood, routine, or conventional,” thereby triggering express support as required by Berkheimer v. HP, Inc. Instead, Examiner’s statement was merely a generic statement regarding the invention as a whole, contrasting it, e.g., with the unconventional arrangement at issue in Bascom. Specifically, regarding step 2B, because the only computer recitation in the instant claims consists of using a computer to automatically populate forms and transmit completed liens to other computers through a computer network, Examiner found that the claims used a computer merely as a tool to implement the abstract idea.
Claim Rejections - Prior Art:
Regarding the application of the prior art to the claims, Applicant argues that Wolfe fails to teach the limitations as amended. This argument is moot in light of the new ground of rejection relying on Ray.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure: Zalik et al., US 2022/0101427 A1; Grimes, US 2018/0341896 A1; MacElheron et al., US 2014/0229212 A1; Wolfe, US 2014/0172684 A1; and Wolfe, US 2013/0185177 A1.
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAN P MINCARELLI whose telephone number is (571)270-5909. The examiner can normally be reached Monday through Friday, 8:00 AM to 4:30 PM Eastern Time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan C. Uber can be reached at (571)270-3923. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JAN P MINCARELLI/
Primary Examiner, Art Unit 3626
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