DETAILED ACTION
Status of Claims
This communication is the final action on the merits in response to the amendments and arguments filed on November 25, 2025. Claims 2-3, 6-10, 15, and 19-21 were amended. Claims 2-21 are currently pending and have been examined.
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 .
Terminal Disclaimer
The terminal disclaimer filed on November 25, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Patent Number 11,887,055 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
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Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,445,698. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 2 is generic to all that is recited in Claim 1 of U.S. Patent No. 10,445,698. That is, Claim 1 of U.S. Patent No. 10,445,698 falls entirely within the scope of Claim 2 or, in other words, Claim 2 is anticipated by Claim 1 of U.S. Patent No. 10,445,698.
Claim 2 of the instant application and Claim 1 of the Patent are exemplary. The subject matter of Claims 3-21 of the instant application is similarly disclosed by Claims 2-26 of the Patent.
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 2-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 2-18 are directed to a process. Claims 19-20 are directed to a machine. Claim 21 is directed to an article of manufacture. As such, each claim is directed to a statutory category of invention.
Step 2A Prong 1
The examiner has identified independent Claim 19 as the claim that represents the claimed invention for analysis and is similar to independent Claims 1 and 21.
Independent Claim 19 recites the following abstract ideas: “determine an execution of one or more signatures from parties associated with an contract document composed into a contract object graph, the contract object graph comprising a plurality of object components ; in response to determining the execution of the of one or more signatures, determine a contract state update for the contract object graph; appendan object component to the contract object graph based on the contract state update; verify a state of the contract object graph ; and output an indication that the contract document has been verified based on the verification of the state of the contract object graph.”
The limitations, as drafted, are a process that, under its broadest reasonable interpretation, relates to legal interactions including agreements in the form of contracts (i.e., determine an execution of one or more signatures from parties associated with a contract document composed into a contract object graph, the contract object graph comprising a plurality of object components; in response to determining the execution of the of one or more signatures, determine a contract state update for the contract object graph; append an object component to the contract object graph based on the contract state update; verify a state of the contract object graph; and output an indication that the contract document has been verified based on the verification of the state of the contract object graph), but for the recitation of generic computer components (i.e., a system comprising one or more processors, memory storing instructions, connecting via hash linking, and determining a hash identifier based on the hash linking). If a claim limitation, under its broadest reasonable interpretation, relates to legal interactions including agreements in the form of contracts, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas.
Accordingly, the claim recites an abstract idea.
Step 2A Prong 2
This judicial exception is not integrated into a practical application. Limitations that are not indicative of integration into a practical application include: (1) Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (MPEP 2106.05(f)), (2) Adding insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g)), (3) Generally linking the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)). In particular, the claim recites the additional elements of a system comprising one or more processors, memory storing instructions, connecting via hash linking, and determining a hash identifier based on the hash linking (in addition to the computing system of Claim 2 and the non-transitory CRM of Claim 21). The computer hardware is recited at a high level of generality (i.e., generic computers receiving and processing data, and generic recitation of hash linking) such that it amounts to no more than mere instructions to apply the exception using generic computer components. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application, since they do not involve improvements to the functioning of a computer or to any other technology or technical field (MPEP 2106.05(a)), they do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), they do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and they do not apply or use the abstract idea in some other meaningful way beyond generally linking its use to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e)). Therefore, the claim is directed to an abstract idea without a practical application.
Step 2B
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. The additional elements of using computer hardware (a system comprising one or more processors, memory storing instructions, connecting via hash linking, and determining a hash identifier based on the hash linking (in addition to the computing system of Claim 2 and the non-transitory CRM of Claim 21)) amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. Therefore, the claim is not patent-eligible.
Dependent claims 4-5 recite a “distributed ledger,” recited in a generic manner. Dependent claim 11 recites a “repository,” which is a generic recitation of a storage element. Dependent claim 15 recites an “Application Programming Interface,” recited in a generic manner. The additional elements are generic computers/technology used to implement the abstract idea, and they do not integrate the abstract idea into a practical application, nor are they sufficient to amount to significantly more than the abstract idea when considered both individually and as an ordered combination.
Dependent claims 3, 6-10, 12-14, 16-18, and 20 do not include any additional elements beyond those identified above. They further define the abstract idea that is present in their respective independent claims and hence are abstract for at least the reasons presented above. As such, they do not integrate the abstract idea into a practical application, nor are they sufficient to amount to significantly more than the abstract idea when considered both individually and as an ordered combination.
Therefore, dependent claims 3-18 and 20 are directed to an abstract idea, and do not include additional elements that integrate the abstract idea into a practical application, or that are sufficient to amount to significantly more than the abstract idea. Thus, the aforementioned claims are not patent-eligible.
Allowable Subject Matter
Claims 2-21 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 101 set forth in this Office action.
Konopnicki et al. (US-7756772), the closest prior art, teaches a contract management system, a contract object graph comprising object components, receiving a contract state update, and appending an updated object component to the contract object graph. However, Konopnicki does not teach that the object components are connected via hash linking, nor does it teach appending updated object components via hash linking. It also does not teach the execution of signatures from involved parties.
The closest NPL, “Blockchains and Smart Contracts for the Internet of Things,” teaches executing a smart contract via signed messages on a blockchain. However, it does not teach a contract object graph comprising object components connected via hash linking, or determining a contract state update, or appending using the hash linking, an appended object component to a contract object graph based on the contract state update.
Response to Arguments
Applicant’s Argument Regarding 35 USC 101 Rejection of Claims 2-21:
To the extent that Applicant's claims could be considered to recite an abstract idea, Applicant's claims are integrated into a practical application. For example, Applicant's specification sets forth an improvement in technology of securely storing a contract object graph for an electronic contract document in a manner that enables verification of the state of the contract object graph. In this way, claim 2 improves the technical fields of electronic document security and verification. For example, Applicant's Specification states: [0095] Another potential benefit is that the system and method provides a common underlying data structure (see FIGURES 6 and 7) for computable contracts that is versioned, auditable, searchable, and replayable. In some variations using Merkle links as described below, the data structure can also be cryptographically immutable. This enables the contractual lifecycle to be entirely cryptographically secure - throughout negotiation to execution, performance, and completion/termination. One potential benefit is that the underlying data structure enables legal contracts and other documents to be securely and verifiably linked together. For example, contracts can be integrated with other contracts using the system and method through common object references or otherwise. This may facilitate inter-contract references at the formation stage as well as consistency and real-time updates between contracts (and/or other documentation that may use the system and method) at the post-formation stage. Similarly, the data structure may integrate with BDLs to the same qualities (see FIGURE 8). The data structure may also be used to extend beyond the contract to manage workflows or other events that may pertain to the contract such as interfacing with an IoT device or platform, an API, or other external data resources and systems.
That is, the Applicant's specification explains that a contract object graph that connects object components via hash linking allows for replaying contract state updates to verify a state of the contract object graph. Appending, with the hash identifier, an object component to the contract object graph allows for a verification of the state of the contract object graph, which cryptographically secures the contract object graph throughout negotiation to execution, performance, and completion/termination. This improves a performance of the system by reducing or even eliminating reliance on backup systems to prevent tampering.
Much like the claims in Diamond v. Diehr limited the Arrhenius equation to the practical application of molding rubber products, amended independent claim 2 limits the alleged abstract idea into the practical application of securely storing a contract object graph for an electronic contract document in a manner that enables verification of the state of the contract object graph. In this way, claim 2 improves the technical fields of electronic document security and verification.
The claimed invention reflects this improvement in the technical fields of electronic document security and verification. For example, the recitation of "determining, by the computing system, a hash identifier based on the hash linking," "appending, by the computing system and with the hash identifier, an object component to the contract object graph based on the contract state update," "verifying, by the computing system, a state of the contract object graph based on the hash identifier," and "outputting, by the computing system, an indication that the electronic contract document has been verified based on the verification of the state of the contract object graph" in amended claim 2 provide for a way to "replay" the contract state update with the hash identifier to verify the state of the contract object graph.
Examiner’s Response: Applicant’s arguments have been fully considered but they are not persuasive.
The enabling of verification of the state of the contract object graph is a recitation of an improvement to the abstract idea itself, rather than a technical improvement. Further, the additional elements in the claim are used in their ordinary capacity, without a technical improvement to the technology itself.
Regarding Diamond v. Diehr, the claim in Diehr included the additional elements such as the steps of installing rubber in a press, closing the mold, constantly measuring the temperature in the mold, and automatically opening the press at the proper time. The present claims are not analogous to the claim in Diehr, and do not limit the use of the additional elements into a practical application.
Conclusion
The prior art made of record and not relied upon, considered pertinent to applicant’s disclosure or directed to the state of art, is listed on the enclosed PTO-892.
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARMA EL-CHANTI whose telephone number is (571)272-3404. The examiner can normally be reached T-Sa 10am-6pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sarah Monfeldt can be reached at (571)270-1833. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARMA A EL-CHANTI/Examiner, Art Unit 3629 /SARAH M MONFELDT/Supervisory Patent Examiner, Art Unit 3629