DETAILED ACTION
The following is a Final Office Action in response to communications filed February 8, 2026. Claims 1, 4–6, and 19 are amended. Currently, claims 1–20 are pending, of which claims 2–3, 7–18, and 20 are withdrawn.
Response to Amendment/Argument
Applicant’s Response is sufficient to overcome the previous objection to claims 1 and 6 for informalities. Accordingly, the previous objection is withdrawn.
However, Applicant’s Response necessitates a new objection for informalities, and Examiner directs Applicant to the relevant explanation below.
Applicant’s Response is sufficient to overcome the previous rejection of claims 4–6 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Accordingly, the previous rejection of claims 4–6 under 35 U.S.C. 112(b) is withdrawn.
With respect to the previous rejection of claims under 35 U.S.C. 101, Applicant’s remarks have been fully considered but are not persuasive.
Under Step 2A Prong One, Applicant asserts that the claims do not recite an abstract idea because the claims do not recite mental processes. Examiner disagrees. As an initial matter, Examiner notes that Applicant does not present any arguments asserting that the claims do not recite certain methods of organizing human activity. As a result, even if the claims do not recite mental processes, Examiner maintains that the claims recite an abstract idea under Step 2A Prong One.
Further, to the extent that Applicant asserts that the claims do not recite mental processes because the claims are implemented on a computer, Examiner disagrees. MPEP 2106.04(a)(2)(III)(C) sets forth that a claim requiring a computer may still recite a mental process when the elements of the claim may be performed mentally or using pen and paper. Here, Examiner maintains that the elements identified under Step 2A Prong One recite mental processes because the identified elements embody observations or evaluations that can be practically performed in the mind or by a human using pen and paper. Additionally, Examiner notes that the elements relating to machine-learning models are not asserted as reciting an abstract idea under Step 2A Prong One. Instead, the machine-learning models are identified as additional elements and addressed under Step 2A Prong Two and Step 2B. As a result, Applicant’s remarks are not persuasive.
Applicant next asserts that the claims require computational processing that cannot be performed mentally. Examiner disagrees. Under a broadest reasonable interpretation of the claims in view of Applicant’s Specification, the claims do not require processing of large and complex datasets. For example, neither the claims nor the Specification require analyzing a large number of requirements, laws, and policies. As a result, Applicant’s remarks are not commensurate with the scope of the claims and are not persuasive.
Applicant further asserts that the claims are directed to a specific technological improvement in AI-based contract drafting systems. Examiner disagrees. As asserted below, the AI and machine learning elements are recited generically in the claims and do no more than generally link the use of the recited abstract idea to a particular technological environment. The claims do not recite any details or specific steps that would limit the AI and machine learning elements to a particular implementation, and as a result, the AI and machine learning elements do not embody improvements in AI or machine learning because the elements are implemented generically. Therefore, Applicant’s remarks are not persuasive.
Under Step 2A Prong Two, Applicant asserts that the claims integrate the abstract idea into a practical application because the claims improve computer-implemented contract drafting systems by reducing drafting errors and omissions. Examiner disagrees. Examiner submits that improvements in contract drafting are business improvements embodied in the abstract claim elements under Step 2A Prong One rather than technical improvements in the claimed technical elements under either Step 2A Prong Two or Step 2B because contract drafting, and any improvements associated therewith, are improvements in a business process. Further, as noted above, the technical elements are generically recited and do not embody any technical improvements. As a result, Applicant’s remarks are not persuasive.
Applicant’s remarks under Step 2B have been fully considered but are not persuasive for the same reasons as stated above. Accordingly, Applicant’s remarks are not persuasive, and the previous rejection is maintained and reasserted below.
With respect to the previous rejection of claims under 35 U.S.C. 103, Applicant’s remarks have been fully considered but are not persuasive. As an initial matter, Applicant’s remarks are not persuasive because the remarks fail to comply with the requirements set forth under 35 CFR 1.111(b), which requires that Applicant’s Response “present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.” Here, Applicant’s remarks amount to no more than a general allegation of patentability because the remarks neither address the asserted citations of the rejection of record nor present any argument or rationale underpinning in support of Applicant’s assertions. As a result, Applicant’s remarks are not persuasive.
Further, Applicant’s remarks address the references individually when the rejections are based on a combination of Li and Wodetzki. For example, Applicant asserts that Li does not disclose applying machine-learning models trained on dispute outcomes. However, the rejection of record asserts Wodetzki as disclosing an application of machine-learning models trained on dispute outcomes. As a result, Applicant’s remarks are not persuasive under MPEP 2145(IV), which sets forth that “[o]ne cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As a result, Applicant’s remarks are not persuasive.
In view of the above, Applicant’s remarks are not persuasive, and the previous rejection is maintained and reasserted below.
Response to Amendment
The amendment to the claims filed on February 8, 2026 do not comply with the requirements of 37 CFR 1.121(c) because the claims because the claims include improper claim markings. Amendments to the claims filed on or after July 30, 2003 must comply with 37 CFR 1.121(c) which states:
(c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
(1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of “canceled” or “not entered” may be aggregated into one statement (e.g., Claims 1–5 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.
(2) When claim text with markings is required. All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended,” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn—currently amended.”
(3) When claim text in clean version is required. The text of all pending claims not being currently amended shall be presented in the claim listing in clean version, i.e., without any markings in the presentation of text. The presentation of a clean version of any claim having the status of “original,” “withdrawn” or “previously presented” will constitute an assertion that it has not been changed relative to the immediate prior version, except to omit markings that may have been present in the immediate prior version of the claims of the status of “withdrawn” or “previously presented.” Any claim added by amendment must be indicated with the status of “new” and presented in clean version, i.e., without any underlining.
(4) When claim text shall not be presented; canceling a claim.
(i) No claim text shall be presented for any claim in the claim listing with the status of “canceled” or “not entered.”
(ii) Cancellation of a claim shall be effected by an instruction to cancel a particular claim number. Identifying the status of a claim in the claim listing as “canceled” will constitute an instruction to cancel the claim.
(5) Reinstatement of previously canceled claim. A claim which was previously canceled may be reinstated only by adding the claim as a “new” claim with a new claim number.
Applicant’s filing on February 8, 2026 includes improperly underlined text. As noted above in 37 CFR 1.121(c)(2), the “text of any added subject matter must be shown by underlining the added text.” For purposes of clarification, Examiner notes that “added subject matter” references subject matter added from a previously entered submission. For example, amended claim 1 underlines material that was added in the submission dated November 24, 2025, which was previously entered. In any future filing, Applicant is instructed to mark only text that is newly added or deleted in comparison with the most recent claim entry. In view of the above, Applicant’s filing on February 8, 2026 does not comply with the requirements set forth under 37 CFR 1.121(c), and Examiner notes that future failures to comply with the requirements set forth under 37 CFR 1.121(c) may result in the issuance of a Notice of Non-Compliant Amendment.
Claim Objections
Claim 6 is objected to because of the following informalities:
Claim 6 recites “the predicted issues or conflicts” in line 4. However, claim 6 previously recites functionality “to predict potential legal issues or conflicts”. In view of the above, Examiner recommends amending claim 6 to recite “the potential legal issues or conflicts” in line 4 in order to avoid issues of clarity under 35 U.S.C. 112(b).
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, 4–6, and 19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Specifically, claims 1, 4–6, and 19 are directed to an abstract idea without additional elements amounting to significantly more than the abstract idea.
With respect to Step 2A Prong One of the framework, claim 1 recites an abstract idea. Claim 1 includes elements for “analyzing entity-specific requirements, international laws, and corporate policies”; “generating customized draft agreements based on the analyzed entity-specific requirements, the international laws, and the corporate policies”; “providing a review and approval process that allows for manual adjustments or corrections before finalizing the draft agreements”; and “wherein the analyzing further comprises applying historical agreements and dispute outcomes to improve contextual interpretation of contractual terminology.”
The limitations above recite an abstract idea. More particularly, the elements above recite certain methods of organizing human activity for commercial or legal interactions for agreements in the form of contracts because the elements describe a process for generating and reviewing draft agreements. Further, the elements recite mental processes because the elements embody observations or evaluations that can be practically performed in the mind or by a human using pen and paper. As a result, claim 1 recites an abstract idea under Step 2A Prong One.
Claims 4–6 and 19 further describe the process for generating and reviewing draft agreements and further recite certain methods of organizing human activity and/or mental processes for the same reasons as stated above. As a result, claims 4–6 and 19 recite an abstract idea under Step 2A Prong One.
With respect to Step 2A Prong Two of the framework, claim 1 does not include additional elements that integrate the abstract idea into a practical application. Claim 1 includes additional elements that do not recite an abstract idea under Step 2A Prong One. The additional elements include natural language processing (NLP) techniques and trained machine learning models. When considered in view of the claim as a whole, the additional elements do not integrate the abstract idea into a practical application because the additional elements do no more than generally link the use of the recited abstract idea to a particular technological environment. As a result, claim 1 does not include any additional elements that integrate the abstract idea into a practical application under Step 2A Prong Two.
Claim 6 includes additional elements that do not recite an abstract idea under Step 2A Prong One. The additional elements include “an AI module utilizes machine learning algorithms” (claim 6). When considered in view of the claims as a whole, the additional elements do not integrate the abstract idea into a practical application because the additional elements do no more than generally link the use of the recited abstract idea to a particular technological environment. As a result, claim 6 does not include additional elements that integrate the abstract idea into a practical application under Step 2A Prong Two.
Claims 4–5 and 19 do not include any additional elements beyond those included with respect to the claims from which claims 4–5 and 19 depend. As a result, claims 4–5 and 19 do not include any additional elements that integrate the abstract idea into a practical application under Step 2A Prong Two for the same reasons as stated above.
With respect to Step 2B of the framework, claim 1 does not include additional elements amounting to significantly more than the abstract idea. As noted above, claim 1 includes additional elements that do not recite an abstract idea under Step 2A Prong One. The additional elements include natural language processing (NLP) techniques and trained machine learning models. The additional elements do not amount to significantly more than the recited abstract idea because the additional elements do no more than generally link the use of the recited abstract idea to a particular technological environment. Further, looking at the additional elements as an ordered combination adds nothing that is not already present when considering the additional elements individually. As a result, claim 1 does not include any additional elements that amount to significantly more than the recited abstract idea under Step 2B.
Claim 6 includes additional elements that do not recite an abstract idea under Step 2A Prong One. The additional elements include “an AI module utilizes machine learning algorithms” (claim 6). The additional elements do not amount to significantly more than the recited abstract idea because the additional elements do no more than generally link the use of the recited abstract idea to a particular technological environment. Further, looking at the additional elements as an ordered combination adds nothing that is not already present when considering the additional elements individually. As a result, claim 6 does not include additional elements that amount to significantly more than the recited abstract idea under Step 2B.
Claims 4–5 and 19 do not include any additional elements beyond those included with respect to the claims from which claims 4–5 and 19 depend. As a result, claims 4–5 and 19 do not include any additional elements that amount to significantly more than the recited abstract idea under Step 2B for the same reasons as stated above.
Therefore, the claims are directed to an abstract idea without additional elements amounting to significantly more than the abstract idea. Accordingly, claims 1, 4–6, and 19 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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.
Claims 1, 4–6, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (U.S. 2023/0237570) in view of Wodetzki et al. (U.S. 2022/0398680).
Claim 1: Li discloses a method for automated drafting of intercompany agreements using artificial intelligence (Al) (See Abstract),comprising:
analyzing entity-specific requirements and international laws using natural language processing (NLP) techniques (See paragraph 44, wherein pre-contract files are analyzed using NLP text processing; and paragraph 61, wherein important laws are parsed using NLP);
generating customized draft agreements based on the analyzed entity-specific requirements and the international laws (See FIG. 2, FIG. 4, and paragraph 6, in view of paragraphs 48 and 61, wherein a contract is generated based on the analyzed requirements and relevant laws);
providing a review and approval process that allows for manual adjustments or corrections before finalizing the draft agreements (See FIG. 2 and paragraphs 42 and 50, wherein a review and approval process is disclosed); and
wherein the analyzing further comprises applying machine learning models trained on historical agreements to improve contextual interpretation of contractual terminology (See paragraphs 6 and 40, wherein machine learning data analysis is performed with respect to previous contracts). Li does not expressly disclose the remaining claim elements.
Wodetzki discloses analyzing corporate policies (See paragraph 122, wherein the AI platform is deployed using industry and customer-specific rules; see also Table 4 and paragraphs 104–105);
generating customized draft agreements based on the corporate policies (See paragraph 122, wherein the AI platform is deployed using industry and customer-specific rules; see also Table 4 and paragraphs 104–105); and
applying machine learning models trained on historical agreements and dispute outcomes to improve contextual interpretation of contractual terminology (See paragraph 59, in view of paragraphs 119–120, wherein process improvements are identified using machine analysis of historical outcomes, and wherein machine analysis implicitly includes machine learning).
Li discloses a system directed to analyzing and generating contracts. Wodetzki discloses a system directed to machine evaluation of contract terms. Each reference discloses a system directed to analyzing and generating contracts. The technique of utilizing corporate policies and outcomes is applicable to the system of Li as they each share characteristics and capabilities, namely, they are directed to analyzing and generating contracts.
One of ordinary skill in the art would have recognized that applying the known technique of Wodetzki would have yielded predictable results and resulted in an improved system. It would have been recognized that applying the technique of Wodetzki to the teachings of Li would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate contract analysis and generation into similar systems. Further, applying corporate policies and outcomes to Li would have been recognized by those of ordinary skill in the art as resulting in an improved system that would allow more detailed analysis and more reliable results.
Claim 4: Examiner notes that claim 4 does not include any method steps and is afforded limited patentable weight because the claimed elements amount to no more than an intended use. The elements are addressed only in the interest of compact prosecution. Li does not expressly disclose the elements of claim 4.
Wodetzki discloses wherein the Al employs the natural language processing (NLP) techniques of claim 1 to understand and incorporate nuances of legal language and corporate terminology, including semantic analysis, clause classification, and contextual interpretation of industry-specific terms (See Table 4 and paragraphs 104–105, in view of paragraph 133, wherein sentences/clauses are analyzed semantically to classify and interpret included clauses).
One of ordinary skill in the art would have recognized that applying the known technique of Wodetzki would have yielded predictable results and resulted in an improved system for the same reasons as stated above with respect to claim 1.
Claim 5: Li discloses the method of claim 1, further comprising the review and approval process including revision cycles and tracked change history maintained within a drafting process associated with the customized draft agreements (See FIG. 4 and paragraph 40, wherein versions of a contract are managed by the system and user interface; see also paragraphs 42 and 57–58, wherein a review and approval process is disclosed). Li does not expressly disclose the remaining claim elements.
Wodetzki discloses iterative revision cycles (See paragraph 133, wherein contract corrections are disclosed in the context of a feedback loop).
One of ordinary skill in the art would have recognized that applying the known technique of Wodetzki would have yielded predictable results and resulted in an improved system for the same reasons as stated above with respect to claim 1.
Claim 6: Examiner notes that claim 6 does not include any method steps and is afforded limited patentable weight because the claimed elements amount to no more than an intended use. The elements are addressed only in the interest of compact prosecution.
Li discloses the method of claim 1, wherein an Al utilizes machine learning algorithms to predict potential legal issues or conflicts within the customized draft agreements based on historical data and trends and generates recommended clause modifications to mitigate the predicted issues or conflicts (See paragraph 50, wherein the AI model identifies recommended clause modifications upon identifying omitted clauses, and wherein identifying omitted clauses mitigates identified risk issues; see also paragraphs 39–40, in view of paragraph 6, wherein agreements are analyzed based on historical contracts and machine learning).
Claim 19: Examiner notes that claim 19 does not include any method steps and is afforded limited patentable weight because the claimed elements amount to no more than an intended use. The elements are addressed only in the interest of compact prosecution.
Li discloses the method of claim 1, further including a template library that stores customizable contract templates for various intercompany transactions including version control, and automated template selection based on detected transaction context (See FIG. 5 and paragraphs 6 and 40, wherein template versions are stored, and wherein templates are implicitly selected for a given negotiation based upon a comparison process). Although Li discloses templates (See citations above), Li does not expressly disclose the remaining claim elements.
Wodetzki discloses tagging (See paragraphs 110 and 128, wherein tags and annotations are applied to contract documents).
One of ordinary skill in the art would have recognized that applying the known technique of Wodetzki would have yielded predictable results and resulted in an improved system for the same reasons as stated above with respect to claim 1.
Conclusion
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 WILLIAM S BROCKINGTON III whose telephone number is (571)270-3400. The examiner can normally be reached M-F, 8am-5pm, EST.
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/WILLIAM S BROCKINGTON III/Primary Examiner, Art Unit 3623