DETAILED ACTION
This is responsive to the preliminary amendment filed 01 April 2025.
Claims 26-41 are 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 .
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 26-41 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 26-41 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.
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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The closest prior art of record, Seth et al. (US 2021/0049140) discloses a document analysis system for analyzing a source document, comprising: a processing system configured to: obtain classification information regarding a source document (“identify a class of each of the data records”, [0032]), obtain one or more data (parameters) of the source document and generate one or more metrics based on an analysis of the one or more data (“analyze one or more parameters related to each of the data records to calculate a data potency score for each of the data records, wherein the one or more parameters that are analyzed for a data record are selected based on the class of the data record”, [0055]); and generate a report according to the one or more metrics (“process the data records with corresponding tagged data potency scores into a uniform format”, [0035], see also “store the processed data records in a database arrangement as structured data records”, [0036]).
Seth, individually or in combination with the prior art of record, does not disclose a preprocessing module for developing abstracted document data, said preprocessing module providing a defined set of interface elements mapped to document scoring elements and a processing system configured to 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, 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 employing a machine learning module to perform a textual analysis of the parsed provisions in relation to the reference information; and generate a report according to the one or more metrics.
Wodetzki et al. (US 2018/0268506) discloses a method of machine representation and tracking of contract terms over the lifetime of a contract including a step of defining an object model having object model components. Object model components are associated with other object model components where the object model components have object model component types. Further, words of object model components are evaluated to identify whether the words contain one or more core attributes pertaining to details of the contract terms. From the object model components, and the terms they contain, prevailing terms of the contract are evaluated, stored and updated as changes are made to the object model components.
Boyce et al. (US 2019/0266196) discloses a method for generating a document (e.g., a contract) that satisfies constraints of at least one party in a negotiation. Information can be obtained from parties seeking to negotiate document sections (e.g., clauses or provisions) of a document such as a contract. Ranking values for a plurality of candidate contracts can be determined based on information from the parties, including their preferences for different sections (e.g., provisions) of the contract. The values can be used to optimize an optimization function that measures the degree to which candidate contracts satisfy the information provided by the parties. For example, an optimization technique, machine learning-based technique, or other appropriate technique can be utilized to determine a document or document information that satisfies the constraints of the parties. Thereafter, a contract can be selected and presented to the parties. The parties can execute the contract, modify, store, or otherwise interact with and/or process the contract.
Straus (US 8,209,278) discloses a computer system that surveys numerous legal documents which memorialize business or legal transactions and then determines common provisions in such documents. The forms of these "core provisions" are then stored in a knowledge base of the system. The system then allows attorney users to apply the system to analyze unsurveyed documents and use the knowledge base to recognize the core provisions that are most similar to the text of these unsurveyed documents. The user can then edit these unsurveyed documents in a rapid accurate fashion by automated means to revise text to match these core provisions. Document editing functionality is also present, along with means to use correlations to determine the likelihood of the presence/absence of specific provisions and the presence/absence of various particular documents in groups of documents used to memorialize certain types of transactions.
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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/SAMUEL G NEWAY/ Primary Examiner, Art Unit 2657