DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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/Amendments
2. In respect to 101 Abstract idea rejection, Applicant argues on pages 2-3 of the Remarks that “Under Step 2A, Prong 2 of the USPTO's subject matter eligibility guidance (MPEP § 2106.04(d)(1)), a claim is not directed to a judicial exception if it integrates the exception into a practical application by improving the functioning of a computer or another technology. The recent precedential decision in Ex Parte Desjardins (Appeals Review Panel, Sept. 26, 2025) and the associated USPTO Memorandum (Dec. 5, 2025) reinforce that claims reflecting a technical improvement to computer components or systems-such as reducing system complexity, reducing storage capacity, or streamlining computational tasks-integrate the exception into a practical application. The Memorandum instructs that examiners must evaluate the claim as a whole and must not dismiss additional elements as mere "generic computer components" without considering whether such elements confer a technological improvement to a technical problem.
The specification identifies a specific technological problem in the field of automated document processing: when the corpus of approved segments is very large (e.g., thousands or millions of segments), determining similarity metric between a received segment and each approved segment requires significant processing overhead and time, which hinders real-time processing (Specification, paragraphs [0038], [0063]).
To solve this problem, the specification describes a specific computational architecture utilizing nested clustering. By clustering segments, forming nested clusters within those primary clusters, and using a nested representative approved segment for comparisons, the system acts as a technical filter that drastically reduces the number of similarity metric determinations required (Specification, paragraphs [0064]-[0066]).
The amended independent claims explicitly reflect this technological improvement. The claims go beyond the mere concept of comparing text and recites the specific data structure and operational sequence used to reduce the computational burden. Specifically, the claim requires:
clustering a plurality of approved segments into one or more clusters of approved
segments;
clustering the plurality of approved segments into one or more nested clusters of
approved segments within the one or more clusters of approved segments;
associating the one or more nested clusters with a respective nested representative
approved segment;
determining the approved segment comprises: identifying a closest cluster of
approved segments using a first similarity metric...; and
using a second similarity metric between the received segments and a nested
representative approved segment...
This specific multi-stage computational filtering mechanism improves the functioning of the computer itself by reducing processing overhead and enabling real-time segment processing. Because the claim as a whole reflects the technological improvement disclosed in the specification, it integrates the recited steps into a practical application under MPEP § 2106.04(d)(1) and Ex Parte Desjardins.
Furthermore, amended claim 1 is distinguishable from the claims held ineligible in GoTV Streaming, LLC v. Netflix, Inc. (Fed. Cir. 2026). In GoTV, the claims were directed to the abstract idea of using a generic template and tailoring it to a user's constraints, using only ordinary computer functions (e.g., receiving, storing, transmitting) as a tool. The Federal Circuit emphasized that the claims lacked specificity as to how the tailoring was done to improve the computer's functionality, relying instead on result-focused functional language. Here, amended claim 1 does not merely recite the result of finding a similar segment. Instead, it recites the specific data architecture (nested clusters and nested representative segments) and the specific sequence of operations (a first similarity metric to find the closest cluster, followed by a second similarity metric to the nested representative segment) that achieves the result with reduced computational burden. This is a concrete computer advance, not a mere instruction to apply an abstract idea on a generic computer.
Even if each of the claims are considered to be directed to a judicial exception, arguendo, the ordered combination of limitations in the amended independent claims provides an inventive concept. The specific arrangement of nested clusters and multi-stage representative segment comparisons is not well-understood, routine, or conventional activity in the field, and it confines the claim to a particular, useful application.
Even if clustering were known generally, the specific ordered combination recited in the amended independent claims-forming nested clusters within primary clusters, assigning nested representative segments, and using a first similarity metric to find the closest cluster followed by a second similarity metric to the nested representative segment-is not a conventional arrangement. As noted in MPEP 2106.05(d) (citing BASCOM), an inventive concept can be found in the non-conventional and non-generic arrangement of known pieces that provides a technical improvement.
For at least the foregoing reasons, Applicant respectfully submits that the pending claims are directed to patentable subject matter and hereby requests the withdrawal of the rejection under 35 U.S.C. 101.”
In response, Examiner respectfully notes that clustering a plurality of approved segments, using a first similarity to identifying the closest cluster of approved segments, and using the second similarity to the nested representative segment to determine the approved segment are mental processes. For example, a human could cluster text segments by meaning (e.g., similar items), identify which cluster is the closest cluster by comparing similarity between the received segment and each of the plurality of clusters, and finally determine the approved segment by comparing similarity between the received segment and the nested representative segment. Since the improvement is a part of the abstract mental process, it would not be available to qualify as an improvement to technology in step 2A prong 2.
Desjardins involved a particular approach to training a machine learning model leading to an improvement in the field of artificial intelligent model training. The present process differs in that the computer is not improved as a tool but uses the computer as a tool to implement an otherwise abstract mental process practically performed by a human. See MPEP 2106.05(f) for a discussion of mere instructions to implement an otherwise abstract idea.
The claim in the instant case is unlike the claims in BASCOM. The ‘606 patent in BASCOM is claiming a technology-based solution (not an abstract-idea-based solution implemented with generic technical components in a conventional way) to filter content on the Internet that overcomes existing problems with other Internet filtering systems. By taking a prior art filter solution (one-size-fits-all filter at the ISP server) and making it more dynamic and efficient (providing individualized filtering at ISP server), the claimed invention represents a “soft-ware-based invention that improves the performance of the computer system itself. See Brief for United States as Amicus Curiae in Support of Respondents at 30–31, Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (No. 13-298), 2014 WL 828034. Claim(s) in the instant case does not show any technical solutions to determine approved segment from a plurality of approved segments.
Applicant’s arguments are not persuasive, and thus for these reasons, Examiner respectfully disagrees. Consequently, the 101 abstract idea rejection is maintained.
With respect to 112(b) rejection, the amendment in Claims 1, 19 and 20 overcome the rejection. Thus, 112(b) rejection has been withdrawn.
With respect to 102/103 rejection, the Applicant has amended the independent claims by incorporation of claim 15. Claim 15 was previously indicated as Allowable Subject Matter. Thus, 102/103 rejections have been withdrawn.
Claim Rejections - 35 USC § 101
3. 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.
4. Claims 1-6, 10-11, 14, 16-26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1 recites
“1. (Currently Amended) A computer-implemented method of processing contract documents;
the method comprising:
clustering a plurality of approved segments into one or more clusters of approved segments;
clustering the plurality of approved segments into one or more nested clusters of approved segments within the one or more clusters of approved segments;
associating the one or more nested clusters with a respective nested representative approved segment;
receiving a segment associated with a received contract document;
for the received segment of the received contract document, accessing the plurality of approved segments to determine an approved segment from the one or more approved segments that is similar to the received segment;
wherein determining the approved segment comprises:
identifying a closest cluster of approved segments using a first similarity metric between the received segment and the one or more clusters of approved segments; and
using a second similarity metric between the received segment and a nested representative approved segment of a nested cluster of approved segments within the closest cluster of approved segments; and
using the determined approved segment for further processing of the received segment.”
Claims 1, 19 and 20 recite substantially the same concept but do so in the context of a method, a system and a non-transitory computer-readable medium.
The limitations recited in the independent claims as drafted cover mental processes. More specifically, the underlying abstract idea revolved around what happens once a human clusters text segments by meaning (e.g., similar items), identifies which cluster is the closest cluster by comparing similarity between the received segment and each of the plurality of clusters, and finally determines the approved segment by comparing similarity between the received segment and the nested representative segment.
The judicial exception is not integrated into a practical application. In particular, claims recite the additional limitations of a computer, a memory and a non-transitory computer-readable medium. The additional element(s) or combination of elements such as a computer, a memory and a non-transitory computer-readable medium in the claim(s) other than the abstract idea per se amount(s) to no more than (i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. There is further no improvement to the computing device other than determining how similar between the textual segments. The mere recitation of a memory and a processor and/or the like is akin of adding the word “apply it” and/or “use it” with a computer in conjunction with the abstract idea.
Paragraph [0019] of the specification discloses “[0019] Fig. 1 a schematic diagram of a system 100 for processing documents, according to an example. The computer-implemented system 100 comprises a service provider 110 and a store 130 of approved segments coupled to the service provider 110. The service provider 110 may be a workstation or the backend of a webservice or other online service and comprises a processor 112 and memory 114 having a non-transitory computer readable medium 116 containing instructions 142-146. The instructions, when executed by the processor 112, cause the processor to perform a computer implemented method or process as described in more detail below. The service provider 110 may process one or more received contract documents 105.”
As filed in the specification, the computer is listed as a general-purpose computer and are mainly used as an application thereof. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to the integration of the abstract idea into a practical application, the additional element of using a computer is noted as a general computer. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims are not patent eligible.
The dependent claims further do not remedy the issues noted above. More specifically, Claim 2 recites displaying. Output step on the display is not part of the mental process, however it is insignificant extra-solution activity b/c the output step is using a display for its well-known purpose of presenting data. Claim 3 recites displaying. Output step on the display is not part of the mental process, however it is insignificant extra-solution activity b/c the output step is using a display for its well-known purpose of presenting data. Claim 4 recites a mental process of calculating a risk score. There are no additional limitations presented. Claim 5 recites a mental process of suggesting amendment. There are no additional limitations presented. Claim 6 recites defining the similarity metric. There are no additional limitations presented. Claim 10 recites defining the representative segment. There are no additional limitations presented. Claim 11 recites clustering the plurality of the approved segments. There are no additional limitations presented. Claim 14 recites defining the nested representative segment of a cluster. There are no additional limitations presented. Claim 16 recites notifying a user. There are no additional limitations presented. Claim 17 recites using a semantic vector in determining an approved segment. There are no additional limitations presented. Claim 18 recites database. There are no additional limitations presented. Claims 21 and 24 recite a mental process of sorting a plurality of the determining approved segments. Output step on the display is not part of the mental process, however it is insignificant extra-solution activity b/c the output step is using a display for its well-known purpose of presenting data. Claims 22 and 25 recite a mental process of calculating a risk score. There are no additional limitations presented. Claims 23 and 26 recite a mental process of notifying a user when a similarity metric exceeds a threshold. There are no additional limitations presented.
For at least the supra provided reasons, claims 1-6, 10-11, 14, 16-26 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Conclusion
5. The prior art made of record and not relied upon is considered pertinent to application’s disclosure. See PTO-892.
a. Jayaraman et al. (US 2020/0349183 A1.) In this reference, Jayaraman et al. disclose applying cosine similarity and nearest neighbors clustering algorithms to paragraph vectors to find or group paragraphs on similar topics within the corpus of paragraphs.
b. Li et al. (US 2019/0377793 A1.) In this reference, Li et al. disclose using a k-means algorithm to cluster the plurality of sentence vectors.
c. Zhang (US 2018/0260475 A1.) In this reference, Zhang discloses using clustering algorithm to generate clusters comprising a cluster identifier and the statistical data for each cluster.
6. 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.
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THUYKHANH LE whose telephone number is (571)272-6429. The examiner can normally be reached Mon-Fri: 9am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew C. Flanders can be reached on 571-272-7516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THUYKHANH LE/Primary Examiner, Art Unit 2655
Prosecution Insights