DETAILED ACTION
This Non Final office action is in response to Applicant’s communication received March 13, 2026.
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 .
Elections/Restriction
3. Applicants hereby elects the embodiments of Group I (Claims 1-8, with traverse).
Applicant asserts that there would not be a serious search burden on the Office because the embodiments of Group II are directed to structurally similar embodiments as encompassed by Group I and Group II. Applicant further supported his assertion by arguing that “a search of Group II would necessarily include a search of Group 1, and therefore does not pose a serious search burden”.
In response, the Examiner disagrees. The invention of group I (Claims 1-8) relates to a computer-implemented engine for generating a verified business contract, over a network, responsively to input company information comprising at least one certified information input. The invention of group II (claims 9-12) relates to a method for purchasing and distributing goods.
In the invention of Group I, it is not necessary to include the functions of receiving an indication of acceptance of the contract and production of the at least one good may be started", as required in Group II. Thus, the restriction of claims 1-12 is maintained and made FINAL.
Claims 9-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on March 13, 2026.
Double Patenting
4. The non-statutory 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 non-statutory double patenting rejection is appropriate where the claims at issue 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); and /n 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 a non-statutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321 (b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http:/Awww.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to
http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-8 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12/141,816. Although the conflicting claims are not identical, they are not patentably distinct from each other because it is well settled that the omission of an element 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).
Claim Rejections - 35 USC§ 101
5. 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.
6. Claims 1-8 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.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
STEP One:
Under Step one of the analysis, claim 1 belongs to a statutory category, namely it is a system claim.
If the claim does fall within one of the statutory categories, it must then be
determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea).
Claims 1-8 recites the claim limitations in the abstract idea indicated in non-bold and the additional elements in bold.
Specifically, claim 1 recites:
a graphical user interface capable of locally querying a contract requester for the input company information comprising at least general company information, at least one company attribute, company presence information, third party market information, proposed goods to be purchased, and the at least one certified information input;
at least one network port capable of remotely receiving the company information from said graphical user interface;
at least one rules engine communicatively connected to said at least one network port, and comprising a plurality of rules to generate, responsively to the input company information, at least one verified business contract of the company correspondent to the proposed goods to be purchased.
Claim 2 further recites wherein one of the plurality of rules comprises an indication of time correspondent to the validity of the at least one verified business contract.
Claim 3 further recites wherein the at least one verified business contract comprises a purchasing plan.
Claim 4 further recites wherein the at least one certified information input comprises a value correspondent to at least one financial rating of the company.
Claim 5 further recites wherein the at least one certified information input comprises one selected from the group consisting of a credit report; a bank statement, a form of personal identification, a mortgage statement, and a letter of intent.
Claim 6 further recites wherein the at least one company attribute comprises a business goal of the company.
Claim 7 further recites wherein the third party market information comprises the name of at least one company competitor.
Claim 8 further recites wherein the third party market information comprises the name of at least one company customer.
STEP 2A, Prong One:
Regarding claim 1, Applicant is to be noted that the steps or functions of “querying”, and “generating” involve mental processes and/or generic computer functions.
The steps of “receiving” involve data gathering function.
Here, the claimed concept falls into the category of functions of organizing human activities such as managing commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).
Step 2A, Prong Two of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception(s) into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application.2019 PEG Section III(A)(2), 84 Fed. Reg. at 54-55.
In addition to the abstract ideas recited in claim 1 above, the claim recites additional elements noted in bolded limitations above including a “graphical user interface”, a “network port” and one “rules engine”. The additional elements in the steps are recited at a high level of generality, i.e., as a generic computer performing a generic computer function of processing data (receiving company information). These generic processor limitations are no more than mere instructions to apply the exception using a generic computer component.
The claimed “graphical user interface”, a “network port” and “rules engine” are similarly understood in light of applicant's specification (i.e., paragraph [0054] “The various illustrative logics, logical blocks, modules, and engines, described in connection with the embodiments disclosed herein may be implemented or performed with a general purpose processor, a digital signal processor (DSP), an application specific
integrated circuit (ASIC), a field programmable gate array (FPGA) or other programmable logic device, discrete gate or transistor logic, discrete hardware components, or any combination thereof designed to perform the functions described herein. A general-purpose processor may be a microprocessor, but, in the alternative, the processor may be any conventional processor, controller, microcontroller, or state machine. A processor may also be implemented as a combination of computing devices, e.g., a combination of a DSP and a microprocessor, a plurality of microprocessors, one or more microprocessors in conjunction with a DSP core, or any other such configuration” ) as mere usage of any arrangement of computer software or hardware intermediate components potentially using networks to communicate with instructions are properly understood to be mere instructions to apply the abstraction using a computer or device or computer system. Performing steps or functions by a processor merely limits the abstraction to a computer field by execution by generic computers to process data (i.e. monitoring user interactions data).
Accordingly, the 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. Thus claim 1 is directed to an abstract idea.
Thus, under Step 2A, prong 2 of the analysis, even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception. No specific practical application is associated with the claimed system.
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.
Step 2B: The elements discussed above with respect to the practical application in Step 2A, Prong 2 are equally applicable to consideration of whether the claims amount to significantly more. Accordingly, the clams fail to recite additional elements which, when considered individually and in combination, amount to significantly more.
Reconsideration of these elements identified as insignificant extra-solution activity as part of Step 2B does not change the analysis.
Positively reciting a “graphical user interface”, “network port”, and a “rule engine” does not change the analysis as these aspects are properly considered as additional elements which amount to instructions to apply it with a computer.
These claimed elements also as found in the dependent claims are also recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using a generic component.
In processing the claims, it is noted that the recitation of these additional elements does not impact the analysis of the claims because these elements in combination are noted only to be a general purpose computer for performing basic or routine computer functions. The claimed “graphical user interface”, “network port”, and a “rule engine” are noted to a be a generic computer for selecting data and performing routine and expected computer functions therein. These additional elements do not overcome the analysis as these elements are merely considered as additional elements which amount to instructions to be applied to the generic computer.
The judicial exception is not integrated into a practical application. In particular, the claimed tools, a tool library, an interface are recited at a high level of generality such they amount to no more than mere instructions to apply the exception using generic components.
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.
Accordingly, claim 1 is directed to an abstract idea.
Dependent claims 2-8 include additional elements beyond those recited by independent claim 1. The claimed steps do not amount to significantly more than the abstract idea, because they are well-understood, routine, and conventional computer functions in view of MPEP 2106 .05(d)(11). The recited computer elements do not amount to significantly more than the abstract idea because the computer elements are generic computer elements that are merely used as a tool to perform the recited abstract idea. As a result, claims 2-8 do not include additional elements that amount to significantly more than the abstract idea under Step 2B.
Therefore, the claims are directed to an abstract idea without additional elements amounting to significantly more than the abstract idea. Accordingly, claims 1-8 are rejected under 35 USC. 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC§ 102
7. In the event the determination of the status of the application as subject to AIA 35 7U.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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless - (a)(2) the claimed invention was
described in a patent issued under section 151, or in an application for patent
published or deemed published under section 122(b), in which the patent or
application, as the case may be, names another inventor and was effectively filed
before the effective filing date of the claimed invention.
8. Claims 1-8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by
Hahn-Carlson et al (US Publication No. 20090150304 hereinafter referred to “Hahn-Carlson”).
Regarding claim 1, Hahn-Carlson teaches or discloses a graphical user interface capable of locally querying a contract requester for the input company information comprising at least general company information, at least one company attribute, company presence information, third party market information, proposed goods to be purchased, and the at least one certified information input (Paragraphs [0040-0041]);
at least one network port capable of remotely receiving the company information from said graphical user interface (Paragraph 0035]);
at least one rules engine communicatively connected to said at least one network port, and comprising a plurality of rules to generate, responsively to the input company information, at least one verified business contract of the company correspondent to the proposed goods to be purchased (Paragraph [0047]).
Regarding claim 2, Hahn-Carlson teaches further wherein one of the plurality of rules comprises an indication of time correspondent to the validity of the at least one verified business contract (Paragraph [0059]).
Regarding claim 3, Hahn-Carlson further wherein the at least one verified business contract comprises a purchasing plan (Paragraph [0060]).
Regarding claim 4, Hahn-Carlson teaches further wherein the at least one certified information input comprises a value correspondent to at least one financial rating of the company (Paragraph [0009]).
Regarding claim 5, Hahn-Carlson further teaches or discloses wherein the at least one certified information input comprises one selected from the group consisting of a credit report; a bank statement, a form of personal identification, a mortgage statement, and a letter of intent (Paragraph [0053]).
Regarding claim 6, Hahn-Carlson further teaches or discloses wherein the at least one company attribute comprises a business goal of the company (Paragraph [0037]).
Regarding claim 7, Hahn-Carlson teaches further value correspondent to at least one financial rating of the company competitor (Paragraph [0009]).
Regarding Claim 8, Hahn-Carlson teaches or discloses wherein the third party market information comprises the name of at least one company customer (Paragraph [0059]).
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. As per attached PTO 892 form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Romain Jeanty whose telephone number is (571) 272-6732. The examiner can normally be reached M-F 9:00AM to 5:30PM.
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, Jerry O'Connor can be reached at 571 272-6787. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RJ/
/ROMAIN JEANTY/Primary Examiner, Art Unit 3624
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