DETAILED ACTION
The following is a first office action upon examination of application number 18/317708.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/15/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of Group 1 (Claims 1-5) in the reply filed on 2/22/2026 is acknowledged.
Claims 6-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/22/2026.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: the contract terms setting unit; contract analysis data storage unit; contract analysis unit; and contract analysis results presentation unit in claims 1-5. Examiner finds the structure is disclosed in Fig. 2. and paragraphs 25-26 of the Specification.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
(Step 1) Claims 1-5 are directed to a system comprising units (CPU and server as per paragraph 25 of Spec.); thus the system comprises a device or set of devices, and therefore, is directed to a machine which is a statutory category of invention.
(Step 2A) The claims recite an abstract idea instructing how to analyze a contract for balance, which is described by claim limitations reciting:
…set contract terms including premise items serving as premises of the contract and a simulation item to be simulated; …store contract analysis data used to analyze the contract;
…analyze a central state of the simulation item that makes content of the contract fair between the contractors, on the basis of the contract analysis data stored … and the contract terms set …; and
…present analysis results obtained …
The identified limitations in the claims describing analyzing a contract for balance (i.e., the abstract idea) fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, which covers fundamental economic practices. Dependent claims 2, 3, 4, and 5 recite limitations that further narrow/describe the abstract idea (i.e., analyzing a contract for balance); therefore, these claims are also found to recite an abstract idea.
This judicial exception is not integrated into a practical application because additional elements such as the contract terms setting unit; contract analysis data storage unit; contract analysis unit; and contract analysis results presentation unit in claim 1, do not add a meaningful limitation to the abstract idea since these elements are only broadly applied to the abstract ideas at a high level of generality; thus, none of recited hardware offers a meaningful limitation beyond generally linking the abstract idea to a particular technological environment, in this case, implementation via a processor/computer. Accordingly, these additional element do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
(Step 2B) The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to integration of the abstract idea into a practical application, the hardware additional elements amount to no more than mere instructions to apply the exception using a generic computer component (see Spec. [0023][0025]). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
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) 1-2 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 2023/0142754 (Srivastava).
As per claim 1, Srivastava teaches: a contract assistance system for assisting in analysis of a contract to be made between contractors, comprising: a contract terms setting unit configured to set contract terms including premise items serving as premises of the contract and a simulation item to be simulated; ([0066] The electronic device may access (block 415) a potential contract for an entity, where the potential contract may specify a set of parameters. Further, the electronic device may access (block 420) a set of market conditions associated with the set of parameters for the potential contract. According to embodiments, the electronic device may interface with at least one data source to retrieve the set of market conditions associated with the set of parameters for the potential contract. Further, in embodiments, the set of parameters may identify one or more of: a set of commodities for the potential contract, a set of time constraints, or a set of customer-specific constraints. If the set of parameters identifies a set of commodities, the electronic device may access a set of historical prices (i.e., the set of market conditions) associated with the set of commodities.)
a contract analysis data storage unit configured to store contract analysis data used to analyze the contract; ([0065] The method 400 may begin when the electronic device trains (block 405), using a set of training data, a machine learning model. According to embodiments, the set of training data may include a set of contracts and, for each contract of the set of contracts, a set of terms associated with that contract. The electronic device may store (block 410), in memory, the machine learning model. [0066] … According to embodiments, the electronic device may interface with at least one data source to retrieve the set of market conditions associated with the set of parameters for the potential contract. [0067] The electronic device may analyze (block 425), using the machine learning model, the set of parameters and the set of market conditions.
a contract analysis unit configured to analyze a central state of the simulation item that makes content of the contract fair between the contractors, on the basis of the contract analysis data stored in the contract analysis data storage unit and the contract terms set by the contract terms setting unit; and ([0018] …develop hypotheses on market scenarios and simulate contract … [0019] …assess a large variety of scenarios under different market and cost dynamics… [0066] The electronic device may access (block 415) a potential contract for an entity, where the potential contract may specify a set of parameters. Further, the electronic device may access (block 420) a set of market conditions associated with the set of parameters for the potential contract. According to embodiments, the electronic device may interface with at least one data source to retrieve the set of market conditions associated with the set of parameters for the potential contract. Further, in embodiments, the set of parameters may identify one or more of: a set of commodities for the potential contract, a set of time constraints, or a set of customer-specific constraints. If the set of parameters identifies a set of commodities, the electronic device may access a set of historical prices (i.e., the set of market conditions) associated with the set of commodities. [0067] The electronic device may analyze (block 425), using the machine learning model, the set of parameters and the set of market conditions. Based on the analysis, electronic device may output (block 430), by the machine learning model, a set of potential terms for the potential contract.)
a contract analysis results presentation unit configured to present analysis results obtained by the contract analysis unit ([0017] …based on analyzing the set of parameters and the set of market conditions, outputting, by the machine learning model, a set of potential terms for the potential contract. [0040] …Based on the analysis, the portfolio analysis application 160 may output data (i.e., as the output data 151) that indicates potential terms or parameters for the potential contract(s). The memory 157 may store the output data 151 and other data that the portfolio analysis platform 155 generates or uses in associated with the analysis of the input data 117. [0042] … the portfolio analysis application 160 may analyze or examine the output data 151 to assess any potential terms or parameters for potential contracts, which may be displayed on the user interface 153 as part of a dashboard, interface, or the like. The user may select to review and/or modify the displayed data. [0067] The electronic device may analyze (block 425), using the machine learning model, the set of parameters and the set of market conditions. Based on the analysis, electronic device may output (block 430), by the machine learning model, a set of potential terms for the potential contract.)
As per claim 2, Srivastava teaches: wherein the contract analysis unit is configured to determine, as the central state, a state in which risks borne by the contractors and profits earned by the contractors are balanced, by changing the simulation item, and ([Abstract] … output a set of potential terms for the potential contract [0018] … develop hypotheses on market scenarios and simulate contract … models to achieve optimal contract… [0074] … an “efficient frontier” representing an efficient balance of risk versus return).
wherein the contract analysis results presentation unit is configured to present information on the central state determined by the contract analysis unit ([0017] …based on analyzing the set of parameters and the set of market conditions, outputting, by the machine learning model, a set of potential terms for the potential contract. [0040] …Based on the analysis, the portfolio analysis application 160 may output data (i.e., as the output data 151) that indicates potential terms or parameters for the potential contract(s). The memory 157 may store the output data 151 and other data that the portfolio analysis platform 155 generates or uses in associated with the analysis of the input data 117. [0042] … the portfolio analysis application 160 may analyze or examine the output data 151 to assess any potential terms or parameters for potential contracts, which may be displayed on the user interface 153 as part of a dashboard, interface, or the like. The user may select to review and/or modify the displayed data. [0067] The electronic device may analyze (block 425), using the machine learning model, the set of parameters and the set of market conditions. Based on the analysis, electronic device may output (block 430), by the machine learning model, a set of potential terms for the potential contract.)
Claim Rejections - 35 USC § 103
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.
Claim(s) 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0142754 (Srivastava); in view of US 2013/0325678 (Cheng).
As per claim 3, Srivastava teaches: wherein the contract analysis unit is configured to calculate the risks borne by the contractors ([0057] …The output may indicate how future returns are projected to increase (or decrease) as well as how future risks are projected to decrease (or increase). [0059] … output may detail the expected returns and risks for a potential contract [0070] …depiction 530 of different contract strategies to account for risk-adjusted return on different pricing structures).
Although not explicitly taught by Srivastava, Cheng teaches: calculate the risks … by determining a risk factor and a cost factor for each of words of the contract and calculating the probabilities that the risk factor and the cost factor respectively will occur ([0020] The difference between a low risk and a high risk contract is in the probability distribution for achieving a certain profit. For example, a low risk contract has a “tighter” distribution, or less (in particular, down-side) variability in its profitability, while a high risk contract has a “wider” distribution or more variability in its profitability outlook. A base price can be determined by the estimated cost of delivering the contract, plus the target profit. For risky contracts, the variability in its profitability outlook comes from the fact its delivery cost may be underestimated. If the risks cannot be mitigated, then to compensate for such risks, a common approach is to increase the price, or to add “price contingency”. Without changing other aspects of a contract, the effect of adding price contingency is to shift the profitability distribution, so that the probability of achieving or exceeding a certain profit x, P(profit>=x), can be increased. Assuming everything else is the same, a higher risk contract needs more price contingency to achieve the same P(profit>=x), than a lower-risk contract. [0023] a gross profit probability distribution function (pdf) for each combination of risk factor classifications can be calculated, as indicated by profile 44a and profile 44n. [0024] Given a matched contract risk profile, the individual impact of each key risk can be predicted, as well as the aggregated impact on overall profitability, in actual dollars of a gross profit percentage. With such prediction, a user can: (1) determine those risks that can be mitigated; (2) project profitability and adjust pricing to compensate for risks; and (3) review risk insights. For those risks that can be mitigated, an expert can assign new risk factor values for the mitigated IT service contract and the classifier can reclassify the IT service contract according to the new risk factor values).
It would have been obvious, before the effective filing date of the claimed invention, for one of ordinary skill in the art to have modified the teachings of Srivastava with the aforementioned teachings of Cheng with the motivation of predicting impact of risks (Cheng [0023]). Further, one of ordinary skill in the art would have recognized that applying the teachings of Cheng to the system of Srivastava would have yielded predictable results and doing so would have been recognized by those of ordinary skill in the art as resulting in an improved system that would allow for the assessment of risks.
As per claim 4, Srivastava teaches: wherein when the words of the contract constituting the premise items are changed, the contract terms setting unit is configured to change the set premise items, and ([0042] … Additionally, the portfolio analysis application 160 may analyze or examine the output data 151 to assess any potential terms or parameters for potential contracts, which may be displayed on the user interface 153 as part of a dashboard, interface, or the like. The user may select to review and/or modify the displayed data [0055] The server 315 may analyze (334) the information and data provided, determined, or retrieved… input, into the machine learning model, at least a portion of the information and data provided, determined, or retrieved in (328), (330), and/or (332), to be analyzed)
…the central state of the simulation item on the changed premise items ([Abstract] … output a set of potential terms for the potential contract [0018] … develop hypotheses on market scenarios and simulate contract … models to achieve optimal contract… [0074] … an “efficient frontier” representing an efficient balance of risk versus return).
Although not explicitly taught by Srivastava, Cheng teaches: wherein the contract analysis unit is configured to re-analyze … the simulation item on the changed premise items ([0021] … Output from a risk assessment system according to an embodiment of the invention include predictions on financial outcome given the risk assessment, pricing adjustment recommendations based on the financial outcome prediction, and the capability of doing "what-if" analysis).
It would have been obvious, before the effective filing date of the claimed invention, for one of ordinary skill in the art to have modified the teachings of Srivastava with the aforementioned teachings of Cheng with the motivation of predicting impact of risks (Cheng [0023]). Further, one of ordinary skill in the art would have recognized that applying the teachings of Cheng to the system of Srivastava would have yielded predictable results and doing so would have been recognized by those of ordinary skill in the art as resulting in an improved system that would allow for the evaluation of different possible scenarios.
As per claim 5, Srivastava teaches: …the risks changed responsive to the words of the contract being changed, wherein the contract analysis results presentation unit is configured to present information on the … risks such that the information is associated with the changed words ([0042] … terms or parameters for potential contracts, which may be displayed on the user interface 153 as part of a dashboard, interface, or the like. The user may select to review and/or modify the displayed data… [0057] … The output may indicate how future returns are projected to increase (or decrease) as well as how future risks are projected to decrease (or increase). Additionally or alternatively, the output may include a set of pricing models and/or a set of sales growth models associated with the potential contract. [0059] … the output may detail the expected returns and risks for a potential contract across various pricing archetypes).
Although not explicitly taught by Srivastava, Cheng teaches: wherein the contract analysis unit is configured to re-analyze the risks changed responsive to the words of the contract being changed, wherein the contract analysis results presentation unit is configured to present information on the re-analyzed risks such that the information is associated with the changed words ([0021] … Output from a risk assessment system according to an embodiment of the invention include predictions on financial outcome given the risk assessment, pricing adjustment recommendations based on the financial outcome prediction, and the capability of doing "what-if" analysis).
It would have been obvious, before the effective filing date of the claimed invention, for one of ordinary skill in the art to have modified the teachings of Srivastava with the aforementioned teachings of Cheng with the motivation of predicting impact of risks (Cheng [0023]). Further, one of ordinary skill in the art would have recognized that applying the teachings of Cheng to the system of Srivastava would have yielded predictable results and doing so would have been recognized by those of ordinary skill in the art as resulting in an improved system that would allow for the evaluation of different possible scenarios.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2010/0145767 (Snow) – discloses a system that analyzes a contract and provides a valuation-risk profile.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN TORRICO-LOPEZ whose telephone number is (571)272-3247. The examiner can normally be reached M-F 10AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Beth Boswell can be reached at (571)272-6737. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALAN TORRICO-LOPEZ/Primary Examiner, Art Unit 3625