DETAILED ACTION
This Non-Final Office Action is in response to the application filed on 10/16/2023, the Amendment & Remark filed on 03/20/2026 and the Request for Continued Examination filed on 03/20/2026.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/20/2026 has been entered.
Claim Rejections - 35 USC § 112
The previous rejection under 35 USC 112(a) is withdrawn in view of the Amendment filed on 03/20/2026.
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 21, 22, 24-29 and 31-34 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. The recitation of the claimed invention is analyzed as follow, in which the abstract elements are boldfaced.
The claims recite: an application server comprising a processing device and a non-transitory storage medium for storing instructions that when executed by the processing device cause the processing device to perform the following:
store a plurality of template fee agreements with different payment options;
receive identification of a legal field from a user device;
responsive to the legal field, provide a plurality of template fee agreements to the user device;
receive identification of a single template fee agreement of the plurality of template fee agreements from the user device to provide a selected template fee agreement;
based on the selected template fee agreement for the potential client, provide a list of attorneys and billable rates to the user device, the billable rates adjusted based on where the client is located;
receive a selection of one or more attorneys and billable rates from the user device;
OCR a scanned document and output one or more billable rates, contingency fees, terms of payment or other terms and conditions to update the selected template fee agreement from for the potential client the user device to provide selected terms;
automatically run a credit report on the potential client to determine whether the potential client has acceptable credit;
automatically generate a generated fee agreement for the potential client upon determination of the potential client having acceptable credit using the selection of the one or more attorneys and billable rates and the selected terms for the selected template fee agreement;
display the generated fee agreement for review and electronic signature;
return the generated fee agreement with the electronic signature to the user device.
wherein the selected template fee agreement corresponds to at least one of the following:
a flat fee agreement; a capped fee agreement; a banded fee agreement; a discounted" 'hourly rate agreement; or a discounted hourly rate agreement according to task, matter, activity, phase or client group.
receiving, by the application server form the user device, identification of at least one attorney and at least one corresponding billable rate as part of the terms selection data.
accessing a third party credit report; and provide a term of the generated fee agreement based on the credit report.
adding an additional client to a client group; and providing a discount to the generated fee agreement based on the additional client being added to the client group.
receiving a selection of one or more interest rate indices; and providing a term to the generated fee agreement based on the selection of one or more interest rate indices.
receiving a selection of a sort type relating to at least one of date or timekeeper; and providing a term to the generated fee agreement based on the selection of the sort type.
wherein the sort type relates to at least one of a date or timekeeper.
The ordered combination of the recited limitations is a process that, under its broadest reasonable interpretation, covers the generation of a fee agreement but for the recitation of generic computer components. That is, other than reciting generic computing language such as “processing device”, “executed by the processing device cause the processing device to perform” and “by the application server”, nothing in the claim elements that precludes the steps from that of a commercial interaction of generating a fee agreement. For example, but for the “processing device” and “executed by the processing device cause the processing device to perform” language, “store a plurality of template fee agreements with different payment options” in the context of the claimed invention encompasses one or more person manually storing the plurality of template fee agreements with different payment options;
but for the “processing device” and “executed by the processing device cause the processing device to perform” language, “receive identification of a legal field from a user device;” in the context of the claimed invention encompasses one or more person manually receiving the identification from a user;
but for the “processing device” and “executed by the processing device cause the processing device to perform” language, “responsive to the legal field, provide a plurality of template fee agreements to the user device;” in the context of the claimed invention encompasses one or more person manually providing the fee agreement templates to the user;
but for the “processing device” and “executed by the processing device cause the processing device to perform” language, “receive identification of a single template fee agreement of the plurality of template fee agreements from the user device to provide a selected template fee agreement;” in the context of the claimed invention encompasses one or more person manually receiving the identification of template;
but for the “processing device” and “executed by the processing device cause the processing device to perform” language, “based on the selected template fee agreement, provide a list of attorneys and billable rates to the user device, the billable rates adjusted based on where the client is located” in the context of the claimed invention encompasses one or more person manually providing a list of attorneys and billable rates to the user;
but for the “processing device” and “executed by the processing device cause the processing device to perform” language, “receive a selection of one or more attorneys and billable rates from the user device” in the context of the claimed invention encompasses one or more person manually receiving the selection of attorneys and billable rates from the user;
but for the “processing device” and “executed by the processing device cause the processing device to perform” language, “OCR a scanned document and output one or more billable rates, contingency fees, terms of payment or other terms and conditions to update the selected template fee agreement from for the potential client the user device to provide selected terms” in the context of the claimed invention encompasses one or more person manually recognizing a document and output one or more billable rates, contingency fees, terms of payment or other terms and conditions to update the selected template fee agreement;
but for the “processing device” and “executed by the processing device cause the processing device to perform” language, “automatically run a credit report on the potential client to determine whether the potential client has acceptable credit;
automatically generate a generated fee agreement for the potential client upon determination of the potential client having acceptable credit using the selection of the one or more attorneys and billable rates and the selected terms for the selected template fee agreement” in the context of the claimed invention encompasses one or more person manually running a credit report on the potential client and generating a fee agreement based on the selected;
but for the “processing device” and “executed by the processing device cause the processing device to perform” language, “return the generated fee agreement with the electronic signature to the user device” in the context of the claimed invention encompasses one or more person manually returning the generated fee agreement to the user;
but for the “processing device” and “executed by the processing device cause the processing device to perform” language, “provide the term or condition to the fee agreement based on the analysis with the another fee agreement” in the context of the claimed invention encompasses one or more person manually providing the term or condition of the fee agreement based on the analysis with the another fee agreement;
but for the “processing device” and “executed by the processing device cause the processing device to perform” language, “display the fee agreement for review and electronic signature” in the context of the claimed invention encompasses one or more person manually showing the fee agreement for review and signature;
but for the “by the application server form the user device” language, “receiving, by the application server form the user device, identification of at least one attorney and at least one corresponding billable rate as part of the terms selection data” in the context of the claimed invention encompasses one or more person manually receiving the identification and rate;
but for the “processing device” and “executed by the processing device cause the processing device to perform” language, “access a third party credit report; and provide a term of the generated fee agreement based on the credit report” in the context of the claimed invention encompasses one or more person manually accessing a third party credit report and providing a term of the generated fee agreement based on the credit report;
but for the “processing device” and “executed by the processing device cause the processing device to perform” language, “add an additional client to a client group; and provide a discount to the generated fee agreement based on the additional client being added to the client group” in the context of the claimed invention encompasses one or more person manually adding an additional client to a client group; and providing a discount to the generated fee agreement based on the additional client being added to the client group.;
but for the “processing device” and “executed by the processing device cause the processing device to perform” language, “receive a selection of one or more interest rate indices; and provide a term to the generated fee agreement based on the selection of one or more interest rate indices” in the context of the claimed invention encompasses one or more person manually receiving a selection of one or more interest rate indices; and providing a term to the generated fee agreement based on the selection of one or more interest rate indices;
but for the “processing device” and “executed by the processing device cause the processing device to perform” language, “receive a selection of a sort type; and provide a term to the generated fee agreement based on the selection of the sort type” in the context of the claimed invention encompasses one or more person manually receiving a selection of a sort type relating to at least one of date or timekeeper; and providing a term to the generated fee agreement based on the selection of the sort type. If a claim, under its broadest reasonable interpretation, covers a commercial activity, such as the generating of a fee agreement but for the recitation of certain generic computing components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. As such, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recite the additional element of processing device or application server to perform the receiving, providing, generating, comparing, updating and displaying steps. The processing device or application server in the above steps is recited at a high-level of generality (i.e., as a generic computer components performing steps of the recited abstract idea) such that it amounts no more than mere instruction to apply the exception using a generic computer component. As to the feature “scan and perform optical character recognition on another fee agreement”, the scanning and performing of OCR amount only to insignificant extra-solution activity for extracting data from a document. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Thus, the claims is directed to an abstract idea.
The claims, when considered both individually and as an ordered combination, 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 element of using a computer to generate a fee agreement amounts to no more than mere instructions to apply the exception using generic computer component. Mere instruction to apply an exception using a generic computer cannot provide an inventive concept. Such additional elements are determined to not contain an inventive concept according to MPEP 2106.05(f). It should be noted that (1) the “recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not provide significantly more because this type of recitation is equivalent to the words “apply it””, and (2) “use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more”. (See MPEP 2106.05 (f))
Additional elements that require no more than a generic computer to perform generic computer functions includes receiving identification and receiving selection data (Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec,) and scan and perform optical character recognition (Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank). These generic computer functions are factually determined to be well-understood, routine and conventional activities previously known to the industry as referenced by MPEP 2106.05(d) II according the USPTO Memorandum on Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) dated April 19 2018.
No additional element currently recited in the claims amount the claims to be significantly more than the cited abstract idea. Therefore, claims 21, 22, 24-29 and 31-34 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's arguments filed on 03/20/2026 have been fully considered but they are not persuasive.
Regarding the applicant’s argument that the claims are eligible based on Ex parte Desjardin and Enfish, the examiner respectfully disagrees. It should be noted that the eligibility rationale of Desjardin is an improvement to how the machine learning model operates, while Enfish’s eligibility is based on its improvement to the functionality of computer. The claimed invention in contrast is completely related to machine learning. The entire disclose is silent on machine learning. As to OCR a scanned document, the rejection has clearly articulated performing optical character recognition is well-understood, routine and convention computing activity and the mere usage of technology does not improve such technology. Thus, the argument is not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHO KWONG whose telephone number is (571)270-7955. The examiner can normally be reached 9am - 5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL W ANDERSON can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHO YIU KWONG/Primary Examiner, Art Unit 3693
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