DETAILED ACTION
Status of Application
This action is a Final Rejection. This action is in response to the amendment and response filed on October 16, 2025.
Claims 1, 5, 6, 8, 12, 13, 15, and 20 have been amended.
Claims 4, 7, 11, 14, and 19 have been canceled.
Claim 21 has been added.
Claims 1-3, 5, 6, 8-10, 12, 13, 15-18, 20, and 21 are pending and rejected.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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 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.
Response to Arguments
Regarding the rejection of claims 5, 12, and 17, Applicant states that “Applicant herein cancels these claims, thus rendering these rejections moot.” Remarks at 6. However, these claims have not been canceled. Therefore, the rejection has been maintained.
Regarding the rejections under 35 U.S.C. §§ 102 and 103, the rejections have been withdrawn in light of Applicant’s amendments. Although individual claim concepts were found in the art (see previous rejection of claims 1 and 7, for example), the combination of limitations of the independent claims is not obvious in light of the prior art.
Regarding the rejection under 35 U.S.C. 101, Applicant argues that “Applicant’s claims are directed to a computerized method for verifying one or more amendments to a set of data, not to drafting a contract as alleged by the Examiner.” Remarks at 9. However, claim 1, for example recites steps of amending clauses of a contract. Even if the process is used for amending data for a different type of document, the claims would still be directed to an abstract idea. Applicant points to two examples from the MPEP and asserts that “[n]one of the MPEP examples are analogous to the complex and specific technology solution in the present claims. Accordingly, for at least this reason the claims are not directed to certain methods of organizing human activity.” Id. at 9-10. Applicant should refer to the full rejection, which was drafted in accordance with MPEP 2106.
Regarding step 2A, prong two, Applicant argues that the “claimed invention is integrated into a practical application for at least several reasons: because it effects a transformation or reduction of a particular article to a different state or thing. In particular, it causes an accepted amendment to the contract to be changed to one or more replacement clauses which transforms it from its prior state.” Remarks at 10. Per MPEP 2106.04(d), “Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c)” may indicate that an additional element may have integrated an abstract idea into a practical application. However, MPEP § 2106.05(c) clarifies that the transformation must be physical:
An "article" includes a physical object or substance. The physical object or substance must be particular, meaning it can be specifically identified. "Transformation" of an article means that the "article" has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article. A new or different function or use can be evidence that an article has been transformed. Purely mental processes in which thoughts or human based actions are "changed" are not considered an eligible transformation. For data, mere "manipulation of basic mathematical constructs [i.e.,] the paradigmatic ‘abstract idea,’" has not been deemed a transformation. CyberSource v. Retail Decisions, 654 F.3d 1366, 1372 n.2, 99 USPQ2d 1690, 1695 n.2 (Fed. Cir. 2011) (quoting In re Warmerdam, 33 F.3d 1354, 1355, 1360, 31 USPQ2d 1754, 1755, 1759 (Fed. Cir. 1994)).
As done in the instant claims, transforming data in a contract or other document is not a transformation or reduction that integrates the abstract idea into a practical application.
Regarding step 2B, Applicant argues that claim 1 recites “meaningful limitations [that] amount to significantly more than simply receiving or transmitting data over a network.” Remarks at 11. However, Applicant has not shown that any limitations, alone or in combination, amount to significantly more than the abstract idea. As shown in the rejection, a programmed general purpose computing device is being used as a tool to implement the abstract idea.
Claim Rejections - 35 USC § 112(b)
The following is a quotation 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 5, 12, and 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 5, 12, and 17 recite “wherein the contract is between at least two zero trust parties.” The only description of this limitation found in the Specification is in paragraph 0038: “The contract may be between at least two zero trust parties, for example parties which have no direct communication.” This statement provides an example, but does not explain what is meant by zero trust parties. Therefore, this limitation cannot be properly interpreted. For purposes of examination, zero trust parties is interpreted to mean parties to a contract that do not need to trust each other.
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, 5, 6, 8-10, 12, 13, 15-18, 20, and 21 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Does the Claim Fall within a Statutory Category? (see MPEP 2106.03)
Yes, with respect to claims 1-3, 5, 6, 15-18, 20, and 21 which recite a method and, therefore, are directed to the statutory class of process.
Yes, with respect to claims 8-10, 12, and 13, which recite a system and, therefore, are directed to the statutory class of machine or manufacture.
Step 2A, Prong One: Is a Judicial Exception Recited? (see MPEP 2106.04(a))
The following claims identify the limitations that recite the abstract idea in regular text and that recite additional elements in bold:
1. A method for verifying one or more amendments to a set of data, the method comprising:
processing, by at least one computer processor connected to a cryptographically immutable database, an amendment to the set of data to produce an event data item characterizing the amendment, wherein the set of data is a contract;
storing the event data item in the cryptographically immutable database as a first stored event data item or as a new stored event data item appended to one or more previously stored event data items;
synchronizing all stored event data items to produce a current status of the set of data;
outputting the current status of the set of data on a display;
evaluating, by an artificial intelligence (AI) function, the amendment; and
generating, by the AI function, one or more replacement clauses to the contract based on the amendment,
wherein evaluating the amendment and generating the one or more replacement clauses are based on a governing law governing the contract.
2. The method of claim 1, wherein the cryptographically immutable database is one of: a stream database; or a state transition database.
3. The method of claim 1, wherein the new stored event data item is stored with a cryptographic relationship to the one or more previously stored event data items.
5. The method of claim 1, wherein the contract is between at least two zero trust parties.
6. The method of claim 1, wherein the contract relates to an employer of record (EOR) or agent of record (AOR) contract.
8. A system for verifying one or more amendments to a set of data, the system comprising:
at least one computer processor;
a cryptographically immutable database; and
a memory containing instructions which, when executed by the at least one computer processor, cause the at least one computer processor to:
process an amendment to the set of data to produce an event data item characterizing the amendment, wherein the set of data is a contract;
store the event data item in the cryptographically immutable database as a first stored event data item or as a new stored event data item appended to one or more previously stored event data items;
synchronize all stored event data items to produce a current status of the set of data; and
output the current status of the set of data on a display; and
an artificial (AI) unit configured to evaluate the amendment; and
generate one or more replacement clauses to the contract based on the amendment, wherein the AI unit is configured to evaluate the amendment and generate the one or more replacement clauses based on a governing law governing the contract.
9. The system of claim 8, wherein the cryptographically immutable database is one of: a stream database; or a state transition database.
10. The system of claim 8, wherein the at least one computer processor is configured to store the new stored event data item with a cryptographic relationship to the one or more previously stored event data items.
12. The system of claim 8, wherein the contract is between at least two zero trust parties.
13. The system of claim 8, wherein the contract relates to an employer of record (EOR) or agent of record (AOR) contract.
15. A method for verifying one or more amendments to a contract, the method comprising:
by a computer processor connected to a state transition database:
processing an amendment to the contract to produce an event data item characterizing the amendment;
writing the event data item to the state transition database as a first stored event data item or as a new stored event data item appended to one or more previously stored event data items;
synchronizing all stored event data items to generate a current version of the contract;
displaying the current version of the contract via a user interface; and
evaluating, by an artificial intelligence (AI) function of the user interface, the amendment;
generating, by the AI function, one or more replacement clauses to the contract based on the amendment,
wherein evaluating the amendment and generating the one or more replacement clauses are based on a governing law governing the contract.
16. The method of claim 15, wherein the new stored event data item comprises a cryptographic hash based on the one or more previously stored event data items.
17. The method of claim 15, wherein the contract is between at least two zero trust parties.
18. The method of claim 15, wherein the contract relates to an employer of record (EOR) or agent of record (AOR) contract.
20. The method of claim 15, comprising proposing, by the AI function, based on the amendment to the contract, an alternative amendment to the contract.
21. The method of claim 1 wherein the AI function operates using a double pass flow.
Yes. But for the recited additional elements as shown above in bold, the remaining limitations of the claims recite certain methods of organizing human activity. The claims are directed to drafting a contract. This type of method of organizing human activity is a commercial or legal interaction such as agreements in the form of contracts, legal obligations, and business relations. Thus, the claims recite an abstract idea.
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application? (see MPEP 2106.04(d))
No. The claims as a whole merely use a computer as a tool to perform the abstract idea. The computing components (i.e., additional elements that are in bold above) are recited at a high level of generality and are merely invoked as a tool to negotiate and generate a contract. For example, only a programmed general purpose computing device is needed to implement the claimed process of evaluating contract amendments, generating a current version of the contract, and generating replacement clauses. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea. Additionally, there is no improvement to the functioning of a computer or technology. Therefore, the abstract idea is not integrated into a practical application.
Step 2B: Does the Claim Provide an Inventive Concept? (see MPEP 2106.05)
No. As discussed with respect to Step 2A, Prong 2, the additional elements in the claims, both individually and in combination, amount to no more than tools to perform the abstract idea. Merely performing the abstract idea using a computer cannot provide an inventive concept. Therefore, the claims do not provide an inventive concept.
As such, the claims are not patent eligible.
Relevant Prior Art
The following references are relevant to Applicant’s invention:
Komandur et al., U.S. Patent Application Publication Number 2020/0177373 A1. This reference teaches a method for storing contract data structures on permissioned distributed ledgers.
Lehal et al., U.S. Patent Application Publication Number 2023/0401247 A1. This reference teaches a method for clause and clause cluster classification for structured document analysis, interpretation, annotation, versioning, and construction.
Li et al., U.S. Patent Number 11,880,650 B1. This reference teaches smart detection of and templates for contract edits in a workflow.
GoGwilt et al., U.S. Patent Application Publication Number 2024/0086651 A1. This reference teaches using machine learning models to ingest, create, store, edit, and manage a document such as a contract.
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 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH H ROSEN whose telephone number is (571) 270-1850 and email address is elizabeth.rosen@uspto.gov. The examiner can normally be reached Monday - Friday, 10 AM ET - 7 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Anderson, can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH H ROSEN/Primary Examiner, 3693