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 .
Status of the Application
This is a Final Action in response to the claims and remarks submitted on 06/25/2026.
Claim 14 is amended.
Claims 14-18 are pending and examined herein.
The Effective Filling Date for the embodiment elected is 04/04/2024. The Examiner notes that the provisional filled on 04/05/2023 does not provide support for the embodiment elected. The elected embodiment is directed to negotiation strategies using LLM, as disclosed on Figure 4 (and related paragraphs) of the specification as filled on 04/04/2024.
Claim Rejections - 35 USC § 112, first paragraph
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 14-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
“While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) en banc. The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002).” (MPEP 2163.03)
In the instant case the newly added limitation is disclosed “ipsis verbis” in the originally filled specification; however, the specification does not provide a written description support because while the functions claimed are disclosed in the specification, the specification does not disclose how the functions are performed by the system. How specifically the Applicant intended the system to operate as claimed is not disclosed in the originally filled specification.
For claim 14 the claimed functions and steps includes: assessing, by the organization computer program, a potential further negotiation based on feasibility and an impact of the response to the initial timekeeper rate structure and in response to the assessment indicating that there is a potential for further negotiation, providing the response to the initial timekeeper rate structure and the assessment to the large language model; however the originally filled specification fail to provide support as to how the organization computer program asses a potential further negotiation based on feasibility and an impact of the response to the initial timekeeper rate structure. In regard to these functions of the system, the originally filled specification generically discloses:
[00102] In one embodiment, in addition to receiving a response or counteroffer to the initial rate structure, the computer program may perform further analysis on the received information. This analysis may involve evaluating the feasibility and impact of the response, considering any constraints or requirements, and assessing the potential for further negotiation. The revised rate structure generated by the LLM may take these factors into account and may then be presented to the user. This paragraph is just describing that the analysis may involve evaluating the feasibility and impact of the response but does not provide any guidance as to how the organization computer program perform such assessment.
As shown, the originally filed specification provide a vague disclosure as to what is being done as far as the end result but fail to provide a clear disclosure as to how the claimed invention perform the features claimed. The disclosure is informing the reader of what happens as far as end results is concerned but fails to disclose the process that results in the claimed function. The disclosure fails to show how the organization computer program perform a feasibility and impact of the response assessment. For example, there is no disclosure as to how the system uses the response of the initial timekeeper rate structure and asses that information based on feasibility and an impact of the response to determine that there is a potential for further negotiation. The broad disclosure of the result that is desired is not providing an adequate written description of the invention, because this is not actually showing that applicant had developed any specific method to do what is claimed. This is different from the enablement issue, which is a separate part of 112,1st paragraph. For the examiner to be able to search this aspect of the invention, the examiner must ascertain how applicant is accomplishing the disclosed result of the method steps being claimed. All that the examiner has to work from is the broad disclosure of assessing a response to determine that there is potential for further negotiation, with no further comments or guidance as to how this would be done. The examiner takes the position that with respect to these limitations or features of the claims, the specification fails to provide an adequate written description of the invention to an extent that would sufficiently show that applicant was in possession of an invention that could operate as claimed. Simply disclosing a vague description, without actually explaining how the system perform the functions claimed, results in a written description problem under 112,1st paragraph. The examiner is uncertain as to how applicant actually contemplated doing these steps because nothing is disclosed other than the broad disclosure of the specification. This does not satisfy the written description part of 112,1st paragraph in the opinion of the examiner. The examiner is left guessing as to how this is accomplished.
In a general sense, upon reading the specification the examiner took notice of the fact that the specification contains a lot of result oriented language that is explaining what is happening as far as a desired result, but applicant never actually discloses how the result is accomplished. The written description requirement is separate from the enablement requirement. Applicant has an obligation under 112,1st to disclose more than the generic result that is being obtained. The specification as originally filed must contain an adequate written description of the invention that shows that applicant was actually in possession of an invention that could be expected to do what is claimed. This has not been done. Other than disclosing and claiming some very broad and generic concepts, the examiner cannot ascertain exactly how the Applicant had contemplated the desired results to be obtained as far as the system is concerned because the specification is silent as to how the system is going to perform the claimed invention.
As the courts have made clear, the first paragraph 35 U.S.C §112 contains a written description requirement that is separate and distinctive from the enablement requirement. See Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010).
As the Federal Circuit has stated in Ariad:
a generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented the species sufficient to support a claim to a genus. The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus.
Ariad, 598 F.3d at 1349 (emphasis added). While Ariad relates to chemical compounds, the legal principles are the same. Since Applicant has failed in providing throughout the specification examples as to how the invention is accomplishing the results, Applicant has failed to provide a disclosure and therefore possession of any species of the genus of what is being claim.
Claim(s) 14-18 contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 14 discloses the limitation “assessing, by the organization computer program, a potential for further negotiation based on a feasibility and an impact of the response to the initial timekeeper rate structure; in response to the assessment indicating that there is a potential for further negotiation, providing, by the organization computer program, the response to the initial timekeeper rate structure and the assessment to the large language model” However regarding feasibility and impact of the response, the originally filled specification merely discloses “[00102] In one embodiment, in addition to receiving a response or counteroffer to the initial rate structure, the computer program may perform further analysis on the received information. This analysis may involve evaluating the feasibility and impact of the response, considering any constraints or requirements, and assessing the potential for further negotiation. The revised rate structure generated by the LLM may take these factors into account and may then be presented to the user.” As presented, the originally filled specification merely discloses that the computer program may perform further analysis which may involve evaluating feasibility and impact of the response and assessing the potential for further negotiation. It appears, from the specification, that these are separate considerations and not specifically assessing a potential for further negotiation based on a feasibility and an impact of the response to the initial timekeeper rate structure. Further, the originally filled speciation discloses that the LLM may take these factors into account, as if the factors are separated, and present to the user. However, the specification does not provide the details of the amended claim which requires assessing a potential for further negotiation based on feasibility and an impact of the response to the initial timekeeper rate structure; and in response to the assessment indicating that there is a potential for further negotiation, providing, by the organization computer program, the response to the initial timekeeper rate structure and the assessment to the large language model.
For this reason, the limitations are rejected for containing new matter not disclosed on the originally filled specification.
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 14-18 are rejected under 35 U.S.C. 101 because the claims are directed to an abstract idea without significantly more.
With respect to Step 1 of the eligibility inquiry (as explained in MPEP 2106), it is first noted that the claims are directed to at least one potentially eligible category of subject matter (i.e., process and machine, respectively). Thus, Step 1 of the Subject Matter Eligibility test for claims 14-18 is satisfied.
With respect to Step 2A Prong One, it is next noted that the claims recite an abstract idea that falls under the “Certain Methods of Organizing Human Activity” groups within the enumerated groupings of abstract ideas set forth in the MPEP 2106 since the claims set forth steps that recite concepts directed to managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) and commercial or legal interactions (including agreements in the form of contracts; business relations).
Claim 14 recites the abstract idea of timekeeper rate negotiations[045]. In claim 14, this idea is described by the following claim steps:
training, by an organization a model with legal and financial data for the organization;
receiving, by an organization, an inquiry for a timekeeper rate structure from a service provider for a service provider;
providing, the inquiry to the model;
receiving, by the organization and from the model, an initial timekeeper rate structure;
providing, by the organization the initial timekeeper rate structure to the service provider;
receiving, by the organization and from the service provider, a response to the initial timekeeper rate structure;
assessing a potential for further negotiation based on a feasibility and an impact of the response to the initial timekeeper structure;
in response to the assessment indicating that there is a potential for further negotiation, providing, by the organization, the response to the initial timekeeper rate structure and the assessment to the model;
receiving, by the organization and from the model, a revised timekeeper rate structure; and
providing, by the organization, the revised timekeeper rate structure to the service provider.
This idea falls within the Certain Methods of Organizing Human Activity grouping of abstract ideas because it is directed towards concepts directed to commercial and legal interactions (including business relations). The noted abstract idea is also directed to managing interactions between people such as that required during communications when negotiating a rate conforms to the requirements of more than one party.
Because the above-noted limitations recite steps falling within the Certain Methods Of Organizing Human Activity abstract idea groupings of the MPEP 2106, they have been determined to recite at least one abstract idea when evaluated under Step 2A Prong One of the eligibility inquiry.
Therefore, because the limitations above set forth activities falling within the Certain Methods Of Organizing Human Activity abstract idea groupings described in the MPEP 2106, the additional elements recited in the claims are further evaluated, individually and in combination, under Step 2A Prong Two and Step 2B below.
With respect to Step 2A Prong Two, the judicial exception is not integrated into a practical application. The additional elements that fail to integrate the abstract idea into a practical application are:
training, by an organization computer program for an organization executed by an organization computer processor, a large language model;
a service provider interface computer program;
However, using a computer environment such as a computer processor, and the generic use of large language model amounts to no more than generally linking the use of the abstract idea to a particular technological environment. Negotiating a rate structure can reasonably be performed by pen and paper until limited to a computerized environment by requiring the use of a computer and large language model to perform the steps.
In regards to the limitation “training, by an organization computer program for an organization executed by an organization computer processor, a large language model” the examiner views these additional elements as results-oriented steps given that there is no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result are currently present such that this is viewed as equivalent to “apply it” for merely implementing the abstract idea using generic computing components (See Id.).
These additional element, alone and in combination, have been evaluated, but fail to integrate the abstract idea into a practical application because they amount to using generic computing elements or computer-executable instructions (software) to perform the abstract idea, similar to adding the words “apply it” (or an equivalent), and alternatively serve to link the use of the judicial exception to a particular technological environment. See MPEP 2106.05(f) and 2106.05(h).
In addition, these limitations fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, fail to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Accordingly, because the Step 2A Prong One and Prong Two analysis resulted in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
With respect to Step 2B of the eligibility inquiry, it has been determined that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As noted above, the claims as a whole merely describes a method, computer system, and computer program product that generally “apply” the concepts discussed in prong 1 above. (See MPEP 2106.05 f (II)) In particular applicant has recited the computing components at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components. As the court stated in TLI Communications v. LLC v. AV Automotive LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) merely invoking generic computing components or machinery that perform their functions in their ordinary capacity to facilitate the abstract idea are mere instructions to implement the abstract idea within a computing environment and does not add significantly more to the abstract idea. Accordingly, these additional computer components do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, even when viewed as a whole, nothing in the claim adds significantly more (i.e. an inventive concept) to the abstract idea and as a result the claim is not patent eligible.
In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements integrates the abstract idea into a practical application. Their collective functions merely provide generic computer implementation. Therefore, when viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a practical application of the abstract idea or that, as an ordered combination, amount to significantly more than the abstract idea itself.
For the reasons identified with respect to Step 2A, prong 2, claim 14 fails to recite additional elements that amount to an inventive concept. For example, use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a commercial or legal interaction or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more (see MPEP 2106.05(g)). In addition, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application (see MPEP 2106.05(h)).
Dependent claims 15-18 recite the same abstract idea as recited in the independent claims, and when evaluated under Step 2A Prong One are found to merely recite details that serve to narrow the same abstract idea recited in the independent claims accompanied by the same generic computing elements or software as those addressed above in the discussion of the independent claims, which is not sufficient to amount to a practical application or add significantly more, or other additional elements that fail to amount to a practical application or add significantly more, as noted above.
Dependent claim 15 further limits the abstract idea by introducing wherein the legal and financial data comprises organization requirements, historical billing data, desired rate structures, budgets, market rates, and/or historical performance of the service provider. Further embellishing the invention by describing the type of data used does not integrate the abstract idea into a practical application or adds significantly more to the abstract idea. Therefore the claims are also non-statutory subject matter.
Dependent claim 16 further limits the abstract idea by linking the judicial exception to a particular field of use by introducing the limitation wherein the large language model further provides negotiation strategies and potential counteroffers with the initial timekeeper rate structure. The examiner views these additional elements as results-oriented steps given that there is no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result are currently present such that this is viewed as equivalent to “apply it” for merely implementing the abstract idea using generic computing components (See Id.). Therefore the claims are also non-statutory subject matter.
Dependent claim 17 further limits the abstract idea by linking the judicial exception to a particular field of use by introducing the limitation wherein the inquiry comprises a prompt for the initial timekeeper rate structure for the service provider. Further embellishing that the invention is capable of communicate data in a generic computing environment does not integrate the abstract idea into a practical application or adds significantly more to the abstract idea.
Dependent claim 18 further limits the abstract idea by introducing the limitations re-training the large language model with an agreed-up timekeeper rate structure. The examiner views these additional elements as results-oriented steps given that there is no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result are currently present such that this is viewed as equivalent to “apply it” for merely implementing the abstract idea using generic computing components (See Id.). Therefore the claims are also non-statutory subject matter.
The ordered combination of elements in the dependent claims (including the limitations inherited from the parent claim(s)) add nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and the collective functions merely provide high level of generality computer implementation. Therefore, whether taken individually or as an order combination, the claims are nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
For more information see MPEP 2106.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 14-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fields (US Patent Publication 2024/0291778) VanPuymbrouck (US Patent Publication 2020/0274834).
Regarding claim 14, Fields discloses a method, comprising:
training, by an organization computer program for an organization executed by an organization computer processor, a large language model with legal and financial data for the organization ([015] “a hosting server or user computing device, is enhanced with a trained machine learning chatbot/voice bot to accurately determine one or more products desired by a party, determine parties corresponding to the product, determine/generate terms (e.g., acceptable terms, prospective terms, counter terms) acceptable to the party, and finalize a contractual agreement between parties for agreed upon terms.” [0016] As mentioned, the model(s) may be trained using machine learning and may utilize machine learning during operation. Therefore, in these instances, the techniques of the present disclosure may further include improvements in computer functionality or in improvements to other technologies at least because the disclosure describes such models being trained with a plurality of training data (e.g., example inputs and associated example outputs, response signals, parameters, acceptable terms, prospective terms, counter terms, products, etc.) to output the system-specific conditions configured to negotiate with party/parties for product(s) on another party's behalf. Further see [0048] wherein it is disclosed the use of ChatGPT which is based on large language model. [0055] … various embodiments, examples, and/or aspects disclosed herein may include training and generating one or more ML models and/or ML chatbot 152 for the server 105 to load at runtime…);
receiving, by the organization computer program, an inquiry for a timekeeper rate from a service provider interface computer program for a service provider (See Figs.2-3 and [080-081] disclosing the system receiving from a first party a plurality of terms to be negotiated, including cost for the service. Paragraph [063] further discloses wherein the parameters to be negotiated include the hurly billing rate of a professional (i.e. timekeeper rate). See also [060, 062]);
providing, by the organization computer program, the inquiry to the large language model (See Figs.2-3 and [081] disclosing the inquiry being provided to the by the AI chatbot. “The first contracting party 240 may thereafter propose new terms (prospective terms) for the specific product and the server 105 may receive input 242 from the first contracting party 240 indicating the prospective terms. The server 105 may determine the prospective terms of input 242 to be unacceptable terms and send output 244 to the first contracting party 240 indicating a plurality of counter terms generated by the server 105.” Further see [0048] wherein it is disclosed the use of ChatGPT which is based on large language model. See also [062]);
receiving, by the organization computer program and from the large language model, initial timekeeper rate (See Fig. 2B [052] discloses the model being fed with acceptable terms, parameters and others. “wherein it is disclosed the parameters and other data received for negotiating “Data associated with the negotiation (e.g., negotiating period), such as response signals, product information, prospective terms, counter terms, acceptable terms, parameters indicated by a user,… and/or other suitable data may be captured by the server 105 as negotiating data. In some aspects, the server 105 may store the negotiating data in the database 126. The data may be cleaned, labeled, vectorized, weighted and/or otherwise processed, especially processing suitable for data used in any aspect of ML.” See also [062-063] disclosing an example with the timekeeper rate.);
providing, by the organization computer program, the initial timekeeper rate to the service provider interface computer program (See Fig. 2B and [081] wherein it is disclosed the parameters provided to the first party “The server 105 may determine the prospective terms of input 242 to be unacceptable terms and send output 244 to the first contracting party 240 indicating a plurality of counter terms generated by the server 105.” wherein the inquiry is fed to the server (AI chatbot, [079]). Further see [0048] wherein it is disclosed the AI chatbot as ChatGPT, an artificial intelligence based on large language model. See also [062-063] disclosing an example with the timekeeper rate.);
receiving, by the organization computer program and from the service provider interface computer program, a response to the initial timekeeper rate (See Fig, 2B and [0082] disclosing the first party providing a response to the parameters received by the AI chatbot “The exchange of terms via output(s) 244 and input(s) 242 may be characterized as a negotiation. The negotiation between the first contracting party 240 and the server 105 on behalf of the second contracting party 220 may continue for any number of cycles, wherein the server 105 may receive input(s) 242 indicating prospective terms and may send output(s) 244 indicating counter terms until a set of terms (e.g., prospective terms, counter terms) acceptable to both parties is finalized by a contractual agreement or the negotiation is abandoned by one or both parties. For example, the negotiation may be abandoned when the first contracting party 240 may abandon the negotiation and the server 105 may not receive the input 242, and/or the server 105 may determine subsequently generated counter terms that may be unacceptable terms to the first contracting party 240, such that the server 105 may not send the output 244 and/or may prohibit receipt of the input 242. In any event, the negotiation may include the negotiating session and/or the negotiating period, as described elsewhere herein.” See also [062-063] disclosing an example with the timekeeper rate.);
assessing, by the organization computer program, a potential for further negotiation based on a feasibility and an impact of the response to the initial timekeeper rate structure ([0092] The method 300 may further include determining, via an AI chatbot, whether the plurality of prospective terms are acceptable terms based on a plurality of parameters indicated by a second contracting party (block 304).);
in response to the assessment indicating that there is a potential for further negotiation, providing, by the organization computer program, the response to the initial timekeeper rate and the assessment to the large language model (See Fig. 2B and [0083] wherein it is disclosed that the input/output responses provided by the first and second party are processed first by the AI chatbot “In some embodiments, the server 105 may determine prospective terms of the input 242 to be acceptable terms to the second contracting party 220 and may not send the output 244 indicating counter terms. In various embodiments, the server 105 may determine prospective terms of the input 242 to be acceptable terms and send the input/output 228 to the second contracting party 220 indicating the prospective terms. See also [062] and [0093] The method 300 may further include, responsive to determining that the plurality of prospective terms are unacceptable terms, generating, via the AI chatbot, a plurality of counter terms based on the plurality of parameters (block 306). [0094] The method 300 may further include transmitting the plurality of counter terms to the first contracting party (block 308).);
receiving, by the organization computer program and from the large language model, a revised timekeeper rate (See Figure 2B and [083] disclosing receiving revised parameters by the AI chatbot. “The server 105 may subsequently receive the input/output 228 in the form of a response signal from the second contracting party 220 indicating whether the second contracting party 220 accepts the plurality of prospective terms. In certain embodiments where the response signal may indicate the second contracting party 220 accepts the plurality of prospective terms, the server 105 may finalize a contractual agreement between the first contracting party 240 and the second contracting party 220 with the plurality of prospective terms. In some embodiments where the response signal may indicate the second contracting party 220 does not accept (declines) the plurality of prospective terms, the server 105 may generate a plurality of counter terms based on the plurality of prospective terms and send the output 244 to the first contracting party 240 indicating the generated counter terms.” See also [062-063] disclosing an example with the timekeeper rate.); and
providing, by the organization computer program, the revised timekeeper rate to the service provider interface computer program (See Figure 2B and [083] disclosing providing the revised parameters to the first party. “The server 105 may subsequently receive the input/output 228 in the form of a response signal from the second contracting party 220 indicating whether the second contracting party 220 accepts the plurality of prospective terms. In certain embodiments where the response signal may indicate the second contracting party 220 accepts the plurality of prospective terms, the server 105 may finalize a contractual agreement between the first contracting party 240 and the second contracting party 220 with the plurality of prospective terms. In some embodiments where the response signal may indicate the second contracting party 220 does not accept (declines) the plurality of prospective terms, the server 105 may generate a plurality of counter terms based on the plurality of prospective terms and send the output 244 to the first contracting party 240 indicating the generated counter terms. See also [062-063] disclosing an example with the timekeeper rate.).
Fields discloses negotiating a variety of terms and parameters between a first and second party, including the hourly rate for a service to be provided by a professional. (See [063]) However does not explicitly disclose such timekeeper rate to be a timekeeper rate structure.
However VanPuymbrouck which is directed to a system and method for facilitating and negotiating the hire or discover of professionals such as legal counsels (see [005]) further teach:
Negotiating timekeeper rate structure ([0024] The price for legal services charged by outside counsel to companies is one of the most oblique aspects of the legal industry. Although law firms maintain and annually update billing rates for all of their time keepers, those “rate sheets” are not provided to clients much less prospective clients or made public and generally consist of multiple rates for each time keeper so that lawyers and law firms are free to charge clients the highest rate possible while remaining within the confines of their rate schedules. Embodiments of the instant disclosure allow companies to simultaneously compare and negotiate the rates charged by multiple outside counsel with similar experience and expertise thereby allowing companies to accurately gauge the true cost for such services and to negotiate the best price allowing them to reduce their legal spend by 50-100%.).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filled to include in the negotiation of terms and parameters of Fields, a timekeeper rate structure since such modification in the system of Fields provides the well-known benefit of taking into consideration the costs of the services provided for all the timekeepers since such modification will allow the clients of the system to accurately gauge the true cost for such services and to negotiate the best price as disclosed by VanPuymbrouck.
Regarding claim 15, Fields discloses
wherein the legal and financial data comprises organization requirements, historical billing data, desired rate structures, budgets, market rates, and/or historical performance of the service provider ([015] “(e.g., acceptable terms, prospective terms, counter terms) [0016] (e.g., example inputs and associated example outputs, response signals, parameters, acceptable terms, prospective terms, counter terms, products, etc.)).
Regarding claim 16, Fields discloses
wherein the large language model further provides negotiation strategies and potential counteroffers with the initial timekeeper rate structure ([0052] In some aspects, the application may use the chatbot 150 to negotiate with a user (e.g., first contracting party) on behalf of a second user (e.g., second contracting party) until a contractual agreement between the user and the second user is finalized [053] In certain aspects, the server 105 may use the stored data and/or negotiation data to generate, train and/or retrain one or more ML models and/or chatbots 150 [054] In certain aspects, once an appropriate ML model is trained and validated to provide accurate predictions and/or responses, e.g., the ML chatbot 152 generated by MLTM 142, the trained model and/or ML chatbot 152 may be loaded into MLOM 144 at runtime, may process the user inputs (e.g., prospective terms, parameters indicated by a user, response signals), and may generate outputs (e.g., counter terms, finalizing a contractual agreement, acceptable terms). [081] The server 105 may determine the prospective terms of input 242 to be unacceptable terms and send output 244 to the first contracting party 240 indicating a plurality of counter terms generated by the server 105. ).
Regarding claim 17, Fields discloses
wherein the inquiry comprises a prompt for the initial timekeeper rate structure for the service provider (See Figs.2-3 and [080-081] disclosing the system receiving from a first party a plurality of terms to be negotiated, including cost for the service. Paragraph [063] further discloses wherein the parameters to be negotiated include the hurly billing rate of a professional (i.e. timekeeper rate). See also [060, 062]).
Regarding claim 18, Fields discloses
further comprising: re-training the large language model with an agreed-up timekeeper rate structure ([053] . In certain aspects, the server 105 may use the stored data and/or negotiation data to generate, train and/or retrain one or more ML models and/or chatbots 150, and/or for any other suitable purpose.).
Response to Arguments
Applicant's arguments filed 06/25/2026 have been fully considered but they are not persuasive.
Claim Rejections Under 35 USC 101
“Here, amended claim 14 recites the additional elements of "assessing, by the organization computer program, a potential for further negotiation based on a feasibility and an impact of the response to the initial timekeeper rate structure" and "in response to the assessment indicating that there is a potential for further negotiation, providing, by the organization computer program, the response to the initial timekeeper rate structure and the assessment to the large language model." These additional element use the response to the initial timekeeper rate structure to assess the potential for further negotiation, and only continuing negotiation if there is potential. These elements together recite a meaningful way of using the alleged judicial exception beyond generally linking the use of the judicial exception to a particular technological environment.” Examiner respectfully disagrees. Applicant is arguing abstract processes as additional elements. Assessing a potential for further negotiation based on a feasibility and an impact of the response to the initial timekeeper rate structure and in response to the assessment indicating that there is a potential for further negotiation, providing, the response to the initial timekeeper rate structure and the assessment to the model are steps that could be performed manually until limited by the use of an organization computer program. Incorporating an additional abstract step to the abstract process does not add an additional element that could be considered as a meaningful way of using the alleged judicial exception beyond generally linking the use of the judicial exception to a particular technological environment as argued.
Claim Rejections Under 35 USC 103
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Fields discloses negotiating a variety of terms and parameters between a first and second party, including the hourly rate for a service to be provided by a professional. However, does not explicitly disclose such timekeeper rate to be a timekeeper rate structure. VanPuymbrouck, which is directed to a system and method for facilitating and negotiating the hire or discover of professionals such as legal counsels (see [005]) is introduced to teach the concept of negotiating a timekeeper rate structure. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filled to include in the negotiation of terms and parameters of Fields, a timekeeper rate structure since such modification in the system of Fields provides the well-known benefit of taking into consideration the costs of the services provided for all the timekeepers since such modification will allow the clients of the system to accurately gauge the true cost for such services and to negotiate the best price as disclosed by VanPuymbrouck.
“Applicant respectfully submits that the proposed combination does not disclose all of these elements. Specifically, the proposed combination does not disclose "training, by an organization computer program for an organization executed by an organization computer processor, a large language model with legal and financial data for the organization." Instead, Fields, cited as allegedly disclosing this element, discloses:” The Examiner respectfully disagrees. As shown in the cited paragraphs, Fields discloses training the large language model using parameters, acceptable terms, prospective terms, counter terms, products and other related data. A contractual agreement between two parties involves information of a legal and financial nature. Moreover, Applicant does not recite any particular characteristic, structure, or processing requirements for the alleged legal or financial data in the body of the claim. Instead, the characterization of the data as “legal” or “financial” merely identifies the type of or content of information used to train the large language model, without imposing any further limitation on how that data is used or processed by the organization computer program. Accordingly, the distinction is based on the informational content of the data rather than a functional or structural difference in the claimed process and therefore have little to no patentable weight.
“Nor does the proposed combination disclose "receiving, by the organization computer program, an inquiry for a timekeeper rate structure from a service provider interface computer program for a service provider." Examiner reminds the Applicant that it is the combination of Fields and VanPuymbrouck that disclose a timekeeper rate structure. As indicated in the rejection above, Fields discloses “receiving, by the organization computer program, an inquiry for a timekeeper rate from a service provider interface computer program for a service provider”. Fields does not disclose a timekeeper rate structure. Furthermore, In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., billing rate of the professional) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
“Applicant has amended claim 14 to recite "assessing, by the organization computer program, a potential for further negotiation based on a feasibility and an impact of the response to the initial timekeeper rate structure" and "in response to the assessment indicating that there is a potential for further negotiation, providing, by the organization computer program, the response to the initial timekeeper rate structure and the assessment to the large language model." It does not appear that the proposed combination discloses such an assessment and the use of that assessment in responding to the response to the initial timekeeper rate structure.” Examiner respectfully disagrees and points out to the rejections above wherein Fields does assess a potential for further negotiation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ronaghi, US 20040103040, System, Method And Computer Program Product For A Law Community Service System. A system, method and computer program product for an online web-based law community for information sharing, collaboration and vending of services between attorneys and clients.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 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 MARIA C SANTOS-DIAZ whose telephone number is (571)272-6532. The examiner can normally be reached Monday-Friday 8:00AM-5:00PM.
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/MARIA C SANTOS-DIAZ/Primary Examiner, Art Unit 3629
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