Prosecution Insights
Last updated: April 19, 2026
Application No. 18/790,997

HIERARCHICAL COMPLIANCE ANALYSIS OF ELECTRONIC WORKING DOCUMENTS

Non-Final OA §101§103
Filed
Jul 31, 2024
Examiner
JACOB, AJITH
Art Unit
2161
Tech Center
2100 — Computer Architecture & Software
Assignee
Docusign Inc.
OA Round
1 (Non-Final)
79%
Grant Probability
Favorable
1-2
OA Rounds
3y 1m
To Grant
83%
With Interview

Examiner Intelligence

Grants 79% — above average
79%
Career Allow Rate
390 granted / 495 resolved
+23.8% vs TC avg
Minimal +4% lift
Without
With
+4.2%
Interview Lift
resolved cases with interview
Typical timeline
3y 1m
Avg Prosecution
18 currently pending
Career history
513
Total Applications
across all art units

Statute-Specific Performance

§101
14.8%
-25.2% vs TC avg
§103
40.5%
+0.5% vs TC avg
§102
32.9%
-7.1% vs TC avg
§112
4.0%
-36.0% vs TC avg
Black line = Tech Center average estimate • Based on career data from 495 resolved cases

Office Action

§101 §103
DETAILED ACTION The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The instant application having Application No. 18/790,997 has a total of 20 claims pending in the application, there are 3 independent claims and 17 dependent claims, all of which are ready for examination by the examiner. Oath/Declaration The applicant’s oath/declaration has been reviewed by the examiner and is found to conform to the requirements prescribed in 37 C.F.R. 1.63. Drawings The applicant’s drawings submitted are acceptable for examination purposes. Specification The applicant’s specification submitted is acceptable for examination purposes. 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, 11 and 17 are rejected under 35 USC 101 as being drawn to nonstatutory subject matter. The independent claims are rejected under 35 U.S.C. 101 because the claimed invention is drawn to an abstract idea without significantly more. Independent claims 1, 8 and 15 are drawn to determining attributes in a working document, selecting compared documents to a working document based on attributes for compliance, determining compliance based on clauses and reporting it as an output. The gathering and comparison of documents using attributes of the language and clauses to determine compliance could have been accomplished through human mental process, and addition of a system for analysis with computing units and gathering resources, hold as abstract, thus the limitations don’t describe doing significantly more, and the claims as a whole does not provide integration into a practical application. The claims fall within the “Mental Processes” grouping of abstract ideas. Specifically, the limitations as discussed above, as claimed, is a process that covers performance of the limitations in the mind, or with pen and paper, but for the recitation of generic computer components (e.g., computer, storage device) because a user can mentally, or with pen and paper, observe, evaluate and make judgements to perform the claimed limitations. For example, a person can read documents and make judgements to find sections of documents that contain a problem, and provide a report with any findings. A person can further link substantially identical concepts mentally or via taking notes on paper. This judicial exception is not integrated into a practical application. In particular, the claim only recites additional elements (e.g., computer, storage device) that are recited at a high-level of generality (e.g., as a generic processor performing a generic computer function) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. See 2106.05(d)(Il). Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component is not significantly more than the judicial exception. Claim Rejections - 35 USC § 103 The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. Claims 1-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Berger et al. (US 2023/0297604 A1) and in view of Coquard et al. (US 2020/0327151 A1). For claim 1, Berger et al. teaches a system for hierarchical compliance analysis of electronic working documents [hierarchical structured documents for model management, 0078: Berger], the system comprising: processing circuitry; and computer readable media comprising instructions that, when executed, cause the processing circuitry to: determine, for a working document associated with an entity, a working attribute embedding that characterizes attributes for the working document [attributes defined for documents with a system and definitions with characteristics pulled from a target document using the model, 0005 and 0017: Berger]; select, based on a plurality of compliance attribute embeddings associated with a plurality of historical documents and the working attribute embedding, a plurality of compliance documents from the plurality of historical documents [pulling documents based on target model and historical document models, 0017 and 0019: Berger]; but does not teach determine a compliance report based on a plurality of working document clauses of the working document and a plurality of compliance clauses of the plurality of compliance documents; and output an indication of the compliance report. Coquard et al. teaches determine a compliance report based on a plurality of working document clauses of the working document and a plurality of compliance clauses of the plurality of compliance documents [using clauses from other representation vector database of documents for comparison report data, 0005: Coquard]; and output an indication of the compliance report [output data based on comparisons, 0005: Coquard]. Berger et al. (US 2023/0297604 A1) and Coquard et al. (US 2020/0327151 A1) are analogous art because they are from the same field of document comparison. At the time of the invention it would have been obvious to a person of ordinary skill in the art to modify the attribute finding of documents for compliance as described by Berger et al. with clause based comparison as taught by Coquard et al. The motivation for doing so would be so that data would be “accurate for contract documents” [0004: Coquard]. Therefore, it would have been obvious to combine Berger et al. (US 2023/0297604 A1) with Coquard et al. (US 2020/0327151 A1) for comparing documents for compliance. For claim 2, Berger et al. and Coquard et al. teaches: The system of claim 1, wherein to generate the working attribute embedding, the instructions cause the processing circuitry to: extract the attributes for the working document from content included in the working document [recommendation engine using attributes that are gathered, 0064: Berger]; and generate, based on the attributes for the working document, the working attribute embedding [representation vectors used for the embedding model, 0005: Coquard]. For claim 3, Berger et al. and Coquard et al. teaches: The system of claim 1, wherein to select the plurality of compliance documents, the instructions cause the processing circuitry to: determine, for each historical document of the plurality of historical documents, a compliance attribute embedding to generate the plurality of compliance attribute embeddings, wherein each of the plurality of compliance attribute embeddings characterize attributes for a respective historical document [definition from the embed attributes used for historical document compliance matching, 0016: Berger]; generate a plurality of compliance document groups based on the plurality of compliance attribute embeddings, each compliance document group of the plurality of compliance document group including an indication to one or more respective historical documents of the plurality of historical documents [groups used for historical document model and matching, 0068: Berger]; map, based on values of the working attribute embedding, the working attribute embedding to a compliance document group of the plurality of compliance document groups [mapping based on the attributes and matching, 0070: Berger]; determine, based on the compliance document group, the subset of historical documents [subset based on historical document comparison threshold, 0064: Berger]; and select the subset of historical documents as the plurality of compliance documents [recommendation engine choosing based on the subset, 0064: Berger]. For claim 4, Berger et al. and Coquard et al. teaches: The system of claim 1, wherein, the instructions further cause the processing circuitry to: determine a plurality of distinct portions of the working document [parsing of certain words and sentences, 0095: Coquard]; and identify, based on chunking the plurality of distinct portions, the plurality of working document clauses of the working document [determine clauses from documents using the grouping, 0095: Coquard]. For claim 5, Berger et al. and Coquard et al. teaches: The system of claim 1, wherein the plurality of working document clauses include one or more of provisions of the working document, definitions of the working document, amendments of the working document, notices of the working document, schedules of the working document, or appendices of the working document [various clauses including definitions, 0007 and 0115: Coquard]. For claim 6, Berger et al. and Coquard et al. teaches: The system of claim 1, wherein to determine the compliance report, the instructions cause the processing circuitry to: determine, based on the plurality of working document clauses of the working document, a working content embedding [based on content embed, 0008: Coquard]; determine, for each compliance document of the plurality of compliance documents, a compliance content embedding to generate a plurality of compliance content embeddings, wherein each of the plurality of compliance content embeddings characterize respective compliance clauses of the plurality of compliance clauses [embed used to characterize clauses for a plurality of clauses, 0008: Coquard]; determine, based on the working content embedding and the plurality of compliance content embeddings, a compliance score for the working document [scoring for target comparison, 0019: Berger]; determine, based on the compliance score for the working document, whether the working document is compliant [determination made based on scoring, 0066: Berger]; and output an indication of whether the working document is compliant [recommendation based on scoring indication, 0066: Berger]. For claim 7, Berger et al. and Coquard et al. teaches: The system of claim 1, wherein the instructions further cause the processing circuitry to: generate, based on the plurality of working document clauses of the working document and the plurality of compliance clauses of the plurality of compliance documents, comparison data including a summary indicating a difference between a working document clause of the plurality of working document clauses and a compliance clause of the plurality of compliance clauses [comparing of clauses and outputting of results, 0005-0006: Coquard]; determine, based on the summary, the difference between the working document clause and the compliance clause is a material difference [differences are above a certain threshold, 0012: Coquard]; and wherein to determine the compliance report, the instructions cause the processing circuitry to determine, further based on the comparison data, the compliance report to include an indication of the material difference [differences used for compliance analysis, 0111: Coquard]. For claim 8, Berger et al. and Coquard et al. teaches: The system of claim 7, wherein the instructions further cause the processing circuitry to: identify, based on the comparison data, one or more portions included within the working document associated with the material differences between the working document and the plurality of compliance documents [during comparison attributes showing the multiple difference between documents and target document, 0063: Berger]; and add, to the working document and based on the one or more portions of the working document, graphical elements including summaries of the differences between the working document and the plurality of compliance documents [identified differences presented as a result, 0063: Berger]. For claim 9, Berger et al. and Coquard et al. teaches: The system of claim 1, wherein the working document attributes for the working document include one or more of an agreement type identifier, a price term identifier, a counterparty identifier, a product identifier, a product quantity, or a geographical region identifier [attribute type being agreement, 0005: Berger]. For claim 10, Berger et al. and Coquard et al. teaches: The system of claim 1, wherein the instructions further cause the processing circuitry to: generate, based on a template defining a first attribute for the working document, the working document [template for definition, 0006: Berger]; identify, based on the working document, a field value of the working document associated with a second attribute [document model having attributes of variable field, 0047: Berger]; and determine, based at least on the field value and the template, the attributes for the working document, the attributes for the working document including the first attribute and the second attribute [multiple attributes with first characteristic defining a second value attribute for the definition of a document, 0048: Berger]. Claim 11 is a method of the system taught by claim 1. Berger et al. and Coquard et al. teaches the limitations of claim 1 for the reasons stated above. Claim 12 is a method of the system taught by claim 2. Berger et al. and Coquard et al. teaches the limitations of claim 2 for the reasons stated above. Claim 13 is a method of the system taught by claim 3. Berger et al. and Coquard et al. teaches the limitations of claim 3 for the reasons stated above. Claim 14 is a method of the system taught by claim 4. Berger et al. and Coquard et al. teaches the limitations of claim 4 for the reasons stated above. Claim 15 is a method of the system taught by claim 6. Berger et al. and Coquard et al. teaches the limitations of claim 6 for the reasons stated above. Claim 16 is a method of the system taught by claim 7. Berger et al. and Coquard et al. teaches the limitations of claim 7 for the reasons stated above. Claim 17 is a medium of the system taught by claim 1. Berger et al. and Coquard et al. teaches the limitations of claim 1 for the reasons stated above. Claim 18 is a medium of the system taught by claim 3. Berger et al. and Coquard et al. teaches the limitations of claim 3 for the reasons stated above. Claim 19 is a medium of the system taught by claim 6. Berger et al. and Coquard et al. teaches the limitations of claim 6 for the reasons stated above. Claim 20 is a medium of the system taught by claim 7. Berger et al. and Coquard et al. teaches the limitations of claim 7 for the reasons stated above. Conclusion The Examiner requests, in response to this Office action, that support be shown for language added to any original claims on amendment and any new claims. That is, indicate support for newly added claim language by specifically pointing to page(s) and line no(s) in the specification and/or drawing figure(s). This will assist the Examiner in prosecuting the application. When responding to this Office action, Applicant is advised to clearly point out the patentable novelty which he or she thinks the claims present, in view of the state of the art disclosed by the references cited or the objections made. He or she must also show how the amendments avoid such references or objections See 37 CFR 1.111(c). Any inquiry concerning this communication or earlier communications from the examiner should be directed to AJITH M JACOB whose telephone number is (571)270-1763. The examiner can normally be reached on Monday-Friday: Flexible Hours. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Apu Mofiz can be reached on 571-272-4080. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /AJITH JACOB/Primary Examiner, Art Unit 2161 2/7/2026
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Prosecution Timeline

Jul 31, 2024
Application Filed
Feb 07, 2026
Non-Final Rejection — §101, §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
79%
Grant Probability
83%
With Interview (+4.2%)
3y 1m
Median Time to Grant
Low
PTA Risk
Based on 495 resolved cases by this examiner. Grant probability derived from career allow rate.

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