DETAILED ACTION
This is responsive to the amendment filed 18 June 2026.
Claims 26-42 are currently pending and considered below.
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 .
Response to Arguments
Applicant's arguments filed 18 June 2026 have been fully considered but they are not persuasive.
Regarding the Double Patenting rejection, Applicant notes that a terminal disclaimer has been submitted. However, no terminal disclaimer was filed with the amendment.
Regarding the 35 USC 101 rejection, Applicant argues:
Even assuming, purely for sake of argument, that claim 26 implicates a judicial exception (which the Applicant does not necessarily concede), claim 26 is not "directed to" such an exception because it integrates the recited analysis into a practical application through a concrete, computer-implemented architecture and data transformation pipeline that reflects an improvement in document analysis technology.
The Examiner respectfully disagrees. Other than the abstract idea, the claim recites the additional elements – a “document analysis system”, a “preprocessing module”, a “processing system” and a “machine learning module” which are recited at a high-level of generality (i.e., as generic processors performing generic computer functions) such that they amount to no more than mere instructions to apply the judicial exception using a generic computer components. The judicial exception is therefore not integrated into a practical application.
Applicant further argues:
This technical implementation is captured in claim 26 via the claimed preprocessing module that produces abstracted document data using defined interface elements mapped to scoring elements, coupled with the processing system's provision-level operations and ML textual analysis relative to reference-provision information to generate metrics used for report generation. This represents a specific technical architecture for document analysis, not an abstract mental process as the Office asserts.
However, a human may produce abstracted document data using defined interface elements mapped to scoring elements, perform the provision-level operations and analyze text to generate metrics used for report generation. Applicant’s specification actually admits at least some of these steps may be performed by a human. In particular, the specification notes that a human may:
develop abstracted document data, providing a defined set of interface elements mapped to document scoring elements (“such abstracting may involve answering a series of standardized questions for specific topics and associating scoring elements with the answers. This process may be manual”, [0010]);
obtain classification information regarding a source document and the abstracted document data (“manual or automated textual analysis may be employed to identify a classification of each contract provision, such as indemnification, limitations on liability, representations and warranties, etc.”, [0042]),
obtain one or more parsed provisions of the source document (“the abstracting function involves answering a series of standardized questions to assist in characterizing and scoring individual document provisions. This process entails a customized series of questions for different types of provisions and may be performed manually”, [0043]),
obtain reference information regarding reference document provisions based on the one or more parsed provisions (“For purposes of efficiency, scalability, and objectivity, it is desirable to have many of the functions be machine implemented. However, there are a number of functions that may be performed or assisted by operators 124 at least initially. For example, operators 124 may be involved in conducting an initial scan of a source document to identify the document type, provision types, industry involved, and competitors or peers. The operators may also collect and import available reference documents of competitors or peers”, [0028]).
A human is then capable of obtaining these information and generate metrics from which to generate a report.
Applicant also argues:
For example, Applicant submits that the subject matter of claim 26 is similar to USPTO Subject Matter Eligibility Example 47, Claim 3 of the USPTO, Subject Matter Eligibility Examples: Abstract Ideas, Example 47 (Oct. 2019), (https://www.uspto.gov/sites/default/files/documents/ 101_examples_37to42_20190107.pdf), which was found patent eligible. In Example 47, Claim 3, the claimed example invention reflects an improvement in the technical field of network intrusion detection. The additional steps provided for improved network security using the information from the detection to enhance security by taking proactive measures to remediate the danger. Specifically, the claim reflected the improvement by detecting the source address associated with potentially malicious packets, dropping potentially malicious packets, and blocking future traffic from the source address. These steps reflected the improvement described in the background, and thus the claim as a whole integrated the judicial exception into a practical application.
Similarly here, pending claim 26 reflects an improvement in document analysis technology through its specific technical architecture: the preprocessing module develops abstracted document data with interface elements mapped to scoring elements, the processing system obtains parsed provisions and reference information, and the machine learning module performs textual analysis of the parsed provisions in relation to the reference information to generate metrics and reports. Like Example 47, Claim 3, the claimed system takes proactive, automated action based on ML-based analysis, generating actionable metrics and reports based on the ML module's textual analysis of document provisions relative to reference provisions.
But, unlike Claim 3 of Example 47, claim 26 does not improve a technical field. The claimed machine learning module is merely used to apply the abstract idea. Improvement to the machine learning module is neither claimed nor disclosed.
Applicant finally argues:
Additionally, the Office asserts that the additional elements are recited at a high level of generality and amount to generic computer components performing generic functions. However, the Office identifies U.S. Patent Application Publication No. 2021/0049140 ("Seth") as the "closest prior art" and expressly states that Seth, alone or combined with the prior art of record, does not disclose the claimed preprocessing module that develops abstracted document data using a defined set of interface elements mapped to scoring elements, nor the claimed pipeline that obtains parsed provisions and reference-provision information and generates metrics via ML textual analysis "in relation to" the reference information, followed by report generation. Office Action, page 10. Such an acknowledgment by the Office is inconsistent with the assertion that the ordered combination of claim 26 is merely "well-understood, routine, and conventional." Claim 26 recites a specific ordered combination in which structured abstraction via defined interface elements mapped to scoring elements produces "abstracted document data," and that structured data is used together with provision-level parsing and indexed reference-provision information to drive machine-learning textual comparison "in relation to" reference information to generate reportable metrics. Accordingly, claim 26 recites a patent-eligible, inventive concept, not "generic computer components" as asserted by the Office.
However, it was the additional elements, not the ordered combination, which was deemed to be "well-understood, routine, and conventional." The ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Therefore, all of Applicant’s arguments have been addressed and they are unpersuasive. The rejections stand.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 26-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 12,008,316. Although the claims at issue are not identical, they are not patentably distinct from each other because the parent claims include all of the limitations of the instant application claims, respectively. The parent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective parent claims. As such, the instant application claims are anticipated by the parent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”).
Further, it is well settled that the omission of an element/step and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element or step whose function is not needed would be obvious to one of ordinary skill in the art.
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 26-42 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Further, the judicial exception is not integrated into a practical application.
In claim 26, the limitations
That is, other than reciting a “document analysis system”, a “preprocessing module”, a “processing system” and a “machine learning module” nothing in the claim precludes the steps from practically being performed in the mind. For example, a person may provide a defined set of interface elements mapped to document scoring elements (Applicant specification admits this, see [0010]); obtain classification information regarding a source document and the abstracted document data, obtain one or more parsed provisions of the source document, obtain reference information regarding reference document provisions based on the one or more parsed provisions (e.g. a human may obtain the claimed data, read and understand it), generate one or more metrics based on an analysis of the parsed provisions, the scoring elements, and the reference information, the generating of the one or more metrics including to perform a textual analysis of the parsed provisions in relation to the reference information (e.g. the human may generate some metrics based on the obtain data); and generate a report according to the one or more metrics (e.g. the human may generate a report based on the metrics).
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements – a “document analysis system”, a “preprocessing module”, a “processing system” and a “machine learning module” which are recited at a high-level of generality (i.e., as generic processors performing generic computer functions) such that they amount to no more than mere instructions to apply the exception using a generic computer components.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. As stated above, the claim recites the additional limitations of a “document analysis system”, a “preprocessing module”, a “processing system” and a “machine learning module”. However, these are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications (see Applicant’s specification [0020]-[0022] and [0024]-[0025]). Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system.
Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
Moreover, see Recentive Analytics, Inc. v. Fox Corp. (Fed. Cir. April 18, 2025)- “Machine learning is a burgeoning and increasingly important field and may lead to patent-eligible improvements in technology. Today, we hold only that patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101.”
The dependent claims, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea.
The dependent claims recite:
wherein the classification information indicates one of a document type and a type of goods or service involved;
wherein the processing system receives the source document from a user system of a user via a web-based interface;
wherein the processing system obtains the one or more parsed provisions of the source document by performing a parsing of the source document;
wherein the document analysis system is further configured to receive, via an interface, classification information entered by a subject matter expert;
wherein the processing system obtains the classification information based on a machine-based textual analysis performed by the processing system;
wherein the defined set of interface elements includes a defined series of questions concerning the source document, wherein an answer to one or more of the defined series of questions corresponds to an individual scoring elements;
wherein the defined series of questions is selected from a plurality of sets of questions, each of the plurality of sets of questions corresponding to different source documents and is selected based on the classification information;
wherein the report includes a summary of document provisions of the source document;
wherein the report includes rating information derived from the textual analysis of the parsed provisions;
wherein the rating information relates to a favorability of one or more provisions of the source document with respect to one or more parties associated with the source document;
wherein the rating information includes a score relating to a fairness of one or more provisions of the source document with respect to one or more parties associated with the source document;
wherein the report includes a certification that the source document satisfies a defined standard relating to fairness;
wherein the report includes information regarding most common terms in relation to a context of the source document;
wherein the processing system is further configured to monitor changes to the source document and selectively generate an alert based on a determined change to the source document;
wherein the alert module is configured to obtain a revised version of the source document and identify whether there is a change between the source document and the revised version;
wherein the machine learning module is trained by comparing output analytics to a subject matter expert evaluation and updating a trained model based on the comparison.
The additional recited limitations further narrow the steps of the independent claims without however providing “a practical application of” or "significantly more than" the underlying “Mental Processes” abstract idea. Therefore, the dependent claims are also not patent eligible.
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 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 SAMUEL G NEWAY whose telephone number is (571)270-1058. The examiner can normally be reached Monday-Friday 9:00am-5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Washburn can be reached at 571-272-5551. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMUEL G NEWAY/ Primary Examiner, Art Unit 2657
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