DETAILED ACTION
Status of Claims
The following is a Final office action in response to the communications received on March 4, 2026.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1, 13 and 14 have been amended.
Claim 10 has been canceled.
Claim 21 has been added.
Claims 1-9 and 11-21 are pending and have been examined.
Response to Amendments
Applicant amendments to claims 1, 13 and 14 are acknowledged.
Response to Arguments
Applicant's arguments have been considered but not found persuasive. Applicant argues:
Applicant’s invention is not directed to mental process.
Examiner’s Response: Not being able to perform something manually or in the human mind is not enough to confer eligibility or show an improvement to the computer or the technology. The claims are directed to contracts management which is a method of organizing a human activity (commercial/legal interaction) and the limitations on training a neural network are directed to mathematical relationships or calculations. The computer elements are recited at a high level of generality as a tool to implement the abstract idea. Merely using general computer elements to replace or automate human work is not enough to confer eligibility. Claims can recite a mental process even if they are claimed as being performed by computer elements. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without a computer"). There are no improvements to the technology or any new technology involved.
The invention reflects an improvement to the computer and the technology. The invention integrates the abstract idea into a practical application.
Examiner’s Response: It is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited commercial interaction) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology. To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. See MPEP § 2106.05(f) for more information about mere instructions to apply an exception.
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 1-9 and 11-21 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without “significantly more.”
Regarding Claims 1, 13 and 17, the claims recite managing contracts which is a method of organizing a human activity (commercial/legal interaction). The limitations on obtaining information, making a determination and updating a contract could be all performed in the human mind and/or with the help of paper and pencil. Other than reciting a processor and a memory, nothing in the claim precludes the steps for being performed in the human mind and/or the help of paper and pencil. The limitations regarding training a neural network are directed to mathematical concepts and calculations. This judicial exception is not integrated into a practical application. The computers are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using generic computer components. 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. Simply implementing the abstract idea on a generic computer environment is not a practical application of the abstract idea and does not take the claim out of the mental process and method of organizing a human activity grouping. The claims are directed to an abstract idea. The claims do not include additional elements that even in combination 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 computers to perform the obtaining, training, generating, making and updating steps 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. The claims are not patent eligible.
Regarding dependent claims 2-9, 11-12, 14-16 and 18-21, these claims are directed to limitations which serve to limit the components, the processing steps and the information used. These claims neither introduce a new abstract idea nor additional limitations which are significantly more than an abstract idea. They provide descriptive details that offer helpful context, but have no impact on statutory subject matter eligibility.
Therefore, the limitations on the invention, when viewed individually and in ordered combination are directed to in-eligible subject matter.
Allowable Subject Matter
Claims 1-9 and 11-21 are allowed over prior art and would be allowed if 101 rejection is overcome. Menninger (US 2003/0069818 A1) discloses creating contracts and bid proposals in a supply chain environment. However, Menninger separately or in combination, does not explicitly disclose or render obvious each and every one of the limitations in independent claims 1, 13 and 17. The independent claims as a whole discloses specific limitations for options clause management in contracts such as indicating that an options clause is to be added to a contract of the contracts, obtaining an option offer, training a neural network, generating options offer, obtaining a counteroffer, making a determination using the counteroffer & acceptability criteria and updating the contract to include the option clause. These limitations as an ordered combination in sequence with the other limitations on independent claims 1, 13 and 17 are novel and non-obvious over the prior art of record.
CONCLUSION
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 DENISSE Y ORTIZ ROMAN whose telephone number is (571)270-5506. The examiner can normally be reached Monday-Thursday 9-7.
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/DENISSE Y ORTIZ ROMAN/Examiner, Art Unit 3627 /ARIEL J YU/Primary Examiner, Art Unit 3627
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