DETAILED ACTION
Status of Claims
This action is in reply to the RCE filed on August 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 1-3, 6-9, 11-15, 17-19 and 21 have been amended.
Claims 22-25 have been added.
Claims 4-5, 10, 16 and 20 have been canceled.
Claims 1-3, 6-9, 11-15, 17-19 and 21-25 are currently pending and have been examined.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 4, 2026 has been entered.
Response to Amendments
Applicant amendments to claims 1-3, 6-9, 11-15, 17-19 and 21 are acknowledged.
Response to Arguments
Applicant's arguments have been considered but not found persuasive. Applicant argues:
Applicant’s invention recites non-abstract elements that reflect an improvement to the computer technology thereby integrating the alleged judicial exception into a practical application.
Examiner’s Response: The claims are directed to contracts management, which is not a technical problem. Contract management encompasses a method of organizing a human activity (commercial/legal interaction) and the limitations regarding the use of machine learning are directed to mathematical relationships/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
The invention reflects an improvement to the computer and technology.
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 trade, which improved the business process of market trading but did not improve computers or technology. Applicant is using a computer and machine learning to improve the abstract idea of contract management, but there are no technological improvements or any new technology involved. To show that the involvement of a computer assists in improving the technology, the claims must recite 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 1-3, 6-9, 11-15, 17-19 and 21-25 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 generating data, aggregating data, obtaining offers/counteroffers, determining data and updating a contract could be all performed in the human mind and/or with the help of paper and pencil. The limitations regarding a neural network are recited at an “apply it” level and are directed to mathematical concepts and calculations. 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. 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 generating, aggregating, obtaining, determining 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 2-3, 6-9, 11-12, 14-15, 18-19 and 21-25 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 1-3, 6-9, 11-15, 17-19 and 21-25 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 alone 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 generating a recommendation to add an options clause to a contract, generating options offer, obtaining an option offer, obtaining a counteroffer, making a determination using the counteroffer & acceptability criteria and updating the contract to include the option clause. These limitations as claimed and 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
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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