DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/04/2026 has been entered.
Status of Claims
Claims 1-20 are pending and examined herein per Applicant’s 08/04/2026 submission to the Office.
Claims 1, 5, 10, 14, and 18 were amended. No claims were canceled, withdrawn or newly added.
Response to Amendment
Applicant’s amendments to claims 5 and 14 are sufficient to overcome the claims objections of the previous Office action.
Applicant’s amendment do not overcome the 35 USC 101 rejection of the previous Office action.
Response to Arguments
Applicant's arguments filed 35 USC § 101 have been fully considered but they are not persuasive. Applicant argues:
the Examiner's reference in the Advisory Action to "embedding is a label or metadata for the document or content" is entirely unclear, vague and ambiguous.
Respectfully, the Office disagrees with Applicant’s position. The Examiner apologizes if the prior response was unclear. Further the argument has been considered – the embedding provided in the claim. The data stored as contextualized embeddings “a type of word representation in natural language processing that takes into account the context in which a word appears. Unlike traditional static word embeddings, which represent each word with a fixed vector, contextualized embeddings vary depending on the specific context in which the word is used.” (Spec. [182]).
While the contextualized embeddings are NOT metadata (see Fig. 7 and Spec [143-144), it is a searchable information/vectors that allows one to manipulate and organize information (Spec. [181] and [189-190]). The holding of the Intellectual Ventures I v. Capital One Fin. Corp. as described in MPEP 2106.05(f) still applies to the claimed invention. For these reason the rejection of the previous Office action is maintained as updated below.
Disagrees with the Examiner's comparison of the currently pending claims to those in Intellectual Ventures I V. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017). Specifically, the amended claims are not directed to "collecting, displaying, and manipulating data". (Advisory Action, pg. 3). The Examiner is respectfully requested to reconsider the previously submitted amendments to the claims and arguments (as are also reiterated and incorporated herein by reference in their entireties). Remarks p. 10
Respectfully, the Office disagrees with Applicant’s position. It is noted that this argument is addressed above.
It is respectfully submitted that the subject matter of the amended claims is integrated into a practical application. In particular, the amended claims define a specific technological improvement to natural language processing, and specifically, searching of documents, and computer systems. Rather than performing generic data parsing or routine automated agreement execution, the current subject matter implements a machine learning model to construct contextualized embeddings to perform more effective and efficient searching of electronic document corpus for identification of specific subject matter. Remarks p. 12
Respectfully, the Office disagrees with Applicant’s position. Applicant seems to be arguing that you have invented contextualized embedding rather than using it in it normal and routine manner. The manner in which the models are used seems to be normal and routine in the context of the claim. The claims seek to monitor compliance issues and sending an alert about the detected event using rules and artificial intelligence.
Simply adding software to a generic computer does not make the claim patent eligible. See MPEP 2106, eligibility should not be evaluated based on whether the claim recites a "useful, concrete, and tangible result," State Street Bank, 149 F.3d 1368, 1374, 47 USPQ2d 1596, 1602 (Fed. Cir. 1998) (quoting In re Alappat, 33 F.3d 1526, 1544, 31 USPQ2d 1545, 1557 (Fed. Cir. 1994)), as this test has been superseded. In re Bilski, 545 F.3d 943, 959-60, 88 USPQ2d 1385, 1394-95 (Fed. Cir. 2008) (en banc), aff'd by Bilski v. Kappos, 561 U.S. 593, 95 USPQ2d 1001 (2010). See also TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) ("It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea"). The programmed computer or "special purpose computer" test of In re Alappat, 33 F.3d 1526, 31 USPQ2d 1545 (Fed. Cir. 1994) (i.e., the rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim for the "special purpose" of executing the algorithm or software) was also superseded by the Supreme Court’s Bilski and Alice Corp. decisions. Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015) ("[W]e note that Alappat has been superseded by Bilski, 561 U.S. at 605–06, and Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 110 USPQ2d 1976 (2014)".
For these reason the rejection of the previous Office action is maintained as updated below.
amended claim 1 does not recite (a) a fundamental economic practice, (b) mathematical relationships or formulas, (c) certain methods of organizing human activity, or (d) an idea 'of itself. Claim 1 is clearly directed to a technical process that, along with technological components (e.g., programmable processor(s), data store(s), networking elements, etc.), involves separate processing, programming, etc. that along with various specific rules provide an ability to process information, transform it from one state to the other, etc. to execute various programmable logic associated with a data-driven document resulting in triggering of various actions. Remarks p.12.
Respectfully, the Office disagrees with Applicant’s position. The claimed limitations do not transform it from one state to the other within the meaning of the Alice/Mayo analysis. A transformation can be viewed in the claims of Diamond v. Diehr, (450 U.S. 175, 209 USPQ 1 (1981) a process that transformed raw, uncured synthetic rubber into precision-molded synthetic rubber products) and In re Abele (684 F.2d 902 (1982) a process that used math to transform the incoherent beam propagation through a body into a reconstructed pictorial representation of the body’s features) are more illustrative of the type transformation that lifts an abstract idea from patent ineligible subject matter to patent eligible subject matter. The instant claimed invention neither transforms raw material into a tangible finished product nor does it take unseeable information (interior of a body part) and transform it into something completely different, seeable information (2d or 3d representation of muscles, bones and organs).
For these reason the rejection of the previous Office action is maintained as updated below.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (i.e. certain methods of organizing human activity) without practical application or significantly more when the elements are considered individually and as an ordered combination.
Step 1: Is the claimed invention to a process, machine, manufacture or composition of matter?
Yes, the claims fall within at least one of the four categories of patent eligible subject. Claims 1-9 are to a computer-implemented method; claims 10-17 are to a system; and claims 18-20 are to a non-transitory computer-readable storage medium.
Step 2A, prong 1: Does the claim recite an abstract idea, law or nature, or natural phenomenon?
Yes, the claims are found to recite an abstract idea. Specifically, the abstract idea of certain methods of organizing human activity and mental processes.
Where certain methods of organizing human activity include fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II).
Where mental processes relates to concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
Claim 1 (as a representative claim) recites the following, where the limitations found to contain elements of the abstract idea are in bold italics:
1. A computer-implemented method, comprising:
selecting, using at least one processor, at least one machine learning model from a plurality of machine learning models based on at least one parameter associated with an electronic document;
extracting, using the at least one processor, one or more document portions from the electronic document the using at least one machine learning model;
identifying, using the at least one processor, one or more entities in the one or more document portions of the electronic document, wherein the identifying includes
generating, using the at least one machine learning model, one or more contextualized embeddings corresponding to content of the one or more document portions,
searching, using the one or more contextualized embeddings, stored contextualized embedding corresponding to stored content of an electronic document corpus, and
identifying, using one or more top scoring matches between the one or more contextualized embeddings and the stored contextualized embeddings, the one or more entities;
sending, using the at least one processor, the one or more entities to a generative artificial intelligence (AI) model, wherein the generative AI model is configured to generate one or more rules defining one or more obligations associated with the one or more entities;
encoding, using the at least one processor, the one or more rules and providing the one or more encoded rules to an obligation management system for executing, the obligation management system is configured to execute the one or more encoded rules to monitor compliance with the one or more obligations by the one or more entities, wherein monitoring of compliance by the obligation management system includes receiving data associated with one or more events from the one or more entities;
detecting, using the at least one processor, an event in the one or more events based on the data received from the obligation management system and identifying at least one rule in the one or more rules corresponding to the detected event;
determining, using the at least one processor, compliance of the detected event with the at least one rule by comparing data associated with the detected event with one or more conditions associated with the at least one rule; and
transmitting, using the at least one processor, an alert representative of a determination of the compliance and generating, in response to the transmitting, a graphical user interface representative of the determination of the compliance of the detected event with the at least one rule.
The instant specification describes the claimed entities as “Obligations may refer to responsibilities and associated actions that each entity (e.g., party to an agreement, specific term/condition in an agreement, specific requirement in the agreement, etc.) must fulfill to comply with a particular agreement.” (Spec. [27]) and “one or more entities (e.g., parties, terms and/or conditions, specific requirements, etc.)” (Spec. [30]). The Office finds that the claimed invention is to the use of generic computing components to implement an agreement – encoding rules base on extracted document data – which is a business process of a commercial or legal interactions. Where the specification discloses “ML model(s) 208 to find and retrieve specific clauses related to shipping, payment, termination, governing law, liabilities, etc. This may allow for generation of one or more rules that may be used for tracking compliance with obligations that may be associated with the agreements” (Spec. [88]). Where the agreement drives what needs to be governed by rules and what needs to be tracked as an obligation. An agreement is the basis of a legal interactions. The rules generation and obligation tracking is simply the electronic fulfillment or management of the agreement to ensure that it is properly carried out.
Thus the claims fall into the abstract bucket of certain methods of organizing human activity – the organizing of legal/commercial interactions.
Step 2A, prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application?
No, the claimed invention does not recite additional elements that integrate the abstract idea into a practical application. Where a practical application is described as integrating the abstract idea by applying it, relying on it, or using the abstract idea in a manner that imposes a meaningful limit on it such that the claim is more than a drafting effort designed to monopolize it, see October 2019: Subject Matter Eligibility at p. 11.
The identified judicial exception is not integrated into a practical application. In particular, the claims recites the additional limitations see non-bold-italicized elements above. The sending and transmitting elements are determined to be old and well know functions of a computer. The extracting elements are found to be insignificant extra-solution activity – data gathering.
Where 2106.05(g) MPEP states, “term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity includes both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent. An example of post-solution activity is an element that is not integrated into the claim as a whole, e.g., a printer that is used to output a report of fraudulent transactions, which is recited in a claim to a computer programmed to analyze and manipulate information about credit card transactions in order to detect whether the transactions were fraudulent.”
The Office finds that merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra solution activity to the judicial exception; or only generally linking the use of the abstract idea to a particular technological environment or field is not sufficient to integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the abstract idea?
No, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception, when considered individually and as part of the ordered combination. The claimed invention is determined to use generic, general-purpose, or off-the-shelf computing components, see Spec [247] and [249].
Where 2106.05(d)(I)(2) of the MPEP states, “A factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity. Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed. Cir. 2018). However, this does not mean that a prior art search is necessary to resolve this inquiry. Instead, examiners should rely on what the courts have recognized, or those in the art would recognize, as elements that are well-understood, routine, conventional activity in the relevant field when making the required determination. For example, in many instances, the specification of the application may indicate that additional elements are well-known or conventional. See, e.g., Intellectual Ventures v. Symantec, 838 F.3d at 1317; 120 USPQ2d at 1359 ("The written description is particularly useful in determining what is well-known or conventional"); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015) (relying on specification’s description of additional elements as "well-known", "common" and "conventional"); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 614, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (Specification described additional elements as "either performing basic computer functions such as sending and receiving data, or performing functions ‘known’ in the art.").”
These limitations do NOT offer an improvement to another technology or technical field; improvements to the functioning of the computer itself; apply the judicial exception with, or by use of, a particular machine; effect a transformation or reduction of a particular article to a different state or thing; add a specific limitation other than what is well-understood, routine and conventional in the field, or add unconventional steps that confine the claim to a particular useful application; or other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. Therefore, these additional limitations when considered individually or in combination do not provide an inventive concept that can transform the abstract idea into patent eligible subject matter.
The other independent claims recite similar limitations and are rejected for the same reasoning given above.
The dependent claims do not further limit the claimed invention in such a way as to direct the claimed invention to statutory subject matter.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
He et al (US 2024/0362286 A1) teaches method may generate a contextualized embedding for the natural language query request to form a search vector. A contextualized embedding may comprise a vector representation of a sequence of words in the search query that includes contextual information for the sequence of words. The method may include searching a document index of contextualized embeddings for the electronic document with the search vector, where each contextualized embedding comprises a vector representation of a sequence of words in the electronic document that includes contextual information for the sequence of words. The search results may include a set of candidate document vectors that are semantically similar to the search vector.
Selman (US 12,411,896 B1) teaches a model evaluator 406 may also use feedback information from the deployed ML model 330. The model inferencer 408 may implement the trained ML model 330 to receive as input new unseen data, generate one or more inferences on the new data, and output a result such as an alert, a recommendation or other post-solution activity.
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/FOLASHADE ANDERSON/Primary Examiner, Art Unit 3623
