DETAILED ACTION
This FINAL office action is in response to Applicant’s amendment filed August 21, 2026. Applicant’s August 21st amendment amended claims 1, 4, 11, 13, 16, 20; canceled claim 12 and added new claim 21. Claims 1-11 and 13-21 are pending. Claims 1, 13 and 20 are the independent claims.
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 Amendment
The Objection to the Title in the previous office action is maintained.
The 35 U.S.C. 101 rejection of claims 1-11 and 13-20 in the previous office action is maintained.
Applicant's amendments to the claims necessitated the new grounds of rejection.
Response to Arguments
Applicant's arguments filed August 21, 2026 have been fully considered but they are not persuasive. Specifically, Applicant argues the claims are patent eligible under 35 U.S.C. 101 as the claims are not directed to an abstract idea (e.g. not a mental process / cannot be performed in the human mind - executing machine learning model on natural language text of a plurality of documents, wherein the ML models has been trained to scan for specific keywords, clauses, etc..; not document management - commercial or legal interactions; Remarks: Last Two Paragraphs, Page 10; Pages 11, 12); the claims integrate the abstract idea into a practical application (e.g. improves the functioning of a computer or technical field - improves technical field of generating/storing/processing audit data for electronic documents; converts unstructured natural language text into structure format for ESG goal data, executes ML model on natural language text trained to scan natural language; Specification: Paragraphs 23, 51, 52, 66; Remarks: Pages 14-17; Paragraph 1, Page 18); the claims are similar to SME 42 (Remarks: Last Paragraph, Page 18; Page 19); the claims are similar to Desjardins (e.g. trains ML model to scan natural language text; Remarks: Paragraph 1, Page 20); and the claims recite significantly more than the abstract idea (Specification: Paragraphs 50-55; Figures 6-8; Remarks: Paragraph 3, Page 10).
In response to Applicant’s argument that the claims are patent eligible under 35 U.S.C. 101 as the claims are not directed to an abstract idea/cannot be performance in the human mind, the examiner respectfully disagrees.
The claims are directed to a well-known business practice – document management/analysis – wherein the documents being managed/analyzed, in the instant application, are business agreements (e.g. contracts, statement of work, service level agreements, etc.) see at least Specification Paragraphs 23, 24, 30, 33, 34, 36 and 76. More specifically, the claims output a generated Environmental, Social and Governance (ESG) dashboard comprising ESG metrics related to first/second document close commitments (e.g. ESG obligations in contracts, statement of works, etc.; Figure 6 - below; Specification Paragraph 75), wherein document management is a fundamental economic practice that falls into the abstract idea subcategories of sales activities and/or commercial interactions. See 2106.04(a). While the claims may represent an improvement to the fundamental economic process of document management/document workflow for business agreements/contracts, the claims in no way either claimed or disclosed integrate the abstract idea into a practical application, provide a technical solution to a technical problem, or improve any of the underlying technology (e.g. machine learning, processing circuitry, database, etc.).
Additionally, the claims are directed to a mental process practically capable of being performed in the human mind via observation, evaluation, judgement and opinion. Representative claim 1: The step of a database configured to store a plurality of electronic documents may be performed in the human mind using observation of data. The step of determine ESG goal data may be performed in the human mind using judgement or opinion. The step of determining a first/second clause from first/second electronic document may be performed in the human mind via judgement or opinion. That the step utilizes a generic machine learning model trained (external to the claims/invention) to scan natural language text for specific keywords, clauses and commitments, merely recites the application of ‘other machinery’ (ML model) recited at a high level of generality and executed on a generic computer/processing circuitry (see MPEP § 2106.05(f)). The recitation of a machine learning mode, even one trained to scan natural language text, in this claim does not negate the mental nature of these limitations because the trained neural network is merely used at a tool to perform an otherwise mental process. The step of convert the natural language corresponding to the first clause in the first document into a first ESG commitment data comprising a numerical value may be performed in the human mind via evaluation and judgement. This step is also directed to a mathematical operation/concept. The step of convert the natural language corresponding to the second clause in the second document into a second ESG commitment data comprising a numerical value may be performed in the human mind via evaluation and judgement. This step is also directed to a mathematical operation/concept. The step of generate ESG metric data comprising an aggregate value may be performed in the human mind via evaluation and judgement. This step is also directed to a mathematical operation/concept. The step of generate and output dashboard data based on the ESG metric data may be performed in the human mind via evaluation.
Other than the recitation of a processing circuitry, database, computer readable medium comprising instructions nothing in the claimed steps precludes the step from practically being performed in the mind. The claims do not recite additional elements that are sufficient to amount to significantly more than the abstract idea. The limitations directed to a processing circuitry, database, computer readable medium comprising instructions are each recited at a high level of generality and amount to no more than mere instructions to apply the exception using a generic computer/processing circuitry. See MPEP 2106.05(f). Further the mere nominal recitation of a generic computer (i.e., processing circuitry, database, computer readable medium comprising instructions - each used for their well-understood, conventional and routine purpose) does not take the claim limitation out of the mental processes grouping. The claims use “conventional or generic technology in a nascent but well-known environment” to implement the abstract idea of electronic document management. In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016). The recited technology (processor, memories, etc.), are used as a “conduit for the abstract idea,” not to provide a technological solution to a specific technological problem. Id.; see also id. at 611–13 (holding claims reciting the use of a cellular telephone and a network server to classify an image and store the image based on its classification to be abstract because the patent did “not describe a new telephone, a new server, or a new physical combination of the two” and did not address “how to combine a camera with a cellular telephone, how to transmit images via a cellular network, or even how to append classification information to that data”).
Nothing in Applicant’s disclosures suggests that the Applicant intended to accomplish any of the steps recited in the claims through anything other than well understood technology used in a routine and conventional manner. Therefore, the claims lack an inventive concept. See also, e.g., Elec. Power Grp., 830 F.3d at 1355 (holding claims lacked inventive concept where “[n]othing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information”); Content Extraction, 776 F.3d at 1348 (holding claims lacked an inventive concept where the claims recited the use of “existing scanning and processing technology”).
Reevaluating the steps of a database configured to store a plurality of electronic documents and output the dashboard data which are considered insignificant extra solution activity, these limitations are mere data gathering and output recited at a high level of generality and amount to nothing more than receiving data or outputting data which are both well-understood, routine and conventional activities. The limitations remain insignificant extra solution activity even upon reconsideration. Even when considered in combination the additional elements represent mere instructions to apply an exception and insignificant extra solution activity which cannot provide an inventive concept.
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
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In response to Applicant’s argument that the claims are patent eligible under 35 U.S.C. 101 as the claims integrate the abstract idea into a practical application, the examiner respectfully disagrees.
The claims are directed to a well-known business practice – The claims are directed to a well-known business practice – document (contract) management –output a generated Environmental, Social and Governance (ESG) dashboard comprising ESG metrics related to first/second document close commitments (e.g. ESG obligations in contracts, statement of works, etc.; Figure 6 – above) they in no way either claimed or disclosed represent a practical application.
Under the see MPEP § 2106.05, the claims are evaluated to determine if additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure ("MPEP") §§ 2106.05(a)-(c), (e)- (h)). A claim that integrates a judicial exception into a practical application applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.
For example, limitations that are indicative of "integration into a practical application" include:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP § 2106.05(a);
Applying the judicial exception with, or by use of, a particular machine - see MPEP § 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP § 2106.05(c); and
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of "integration into a practical application" include:
Adding the words "apply it" (or an equivalent) with the judicial exception, or merely include instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP § 2106.05(±);
Adding insignificant extra-solution activity to the judicial exception- see MPEP § 2106.05(g); and
Generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP 2106.05(h).
In view of the MPEP § 2106.05, one must consider whether there are additional elements set forth in the claims that integrate the judicial exception into a practical application. The identified additional non-abstract elements recited in the independent claims are the generic processing circuitry, database, computer readable medium comprising instructions. This generic computer hardware merely performs generic computer functions of storing, processing and outputting data and represent a purely conventional implementation of applicant’s document/contract management in the general field of business management and do not represent significantly more than the abstract idea. See at least MPEP § 2106.05(a) ("Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field").
These recited additional elements are merely generic computer components. The claims do present any other issues as set forth in the MPEP § 2106.05 regarding a determination of whether the additional generic elements integrate the judicial exception into a practical application. Rather, the claims merely use instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea.
The claims do not recite improvements to the functioning of a computer or any other technology field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition, the claims to do apply the abstract idea with a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (e.g. data remains data even after processing; MPEP 2106.05(c)), the claims no not apply or use the abstract idea in some other meaningful way beyond generally linking the user of the abstract idea to a particular technological environment (i.e. a generic computer) such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea (MPEP 2106.05(e)). The recited generic computing elements are no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
As for the machine learning model recited in independent claims 1, 13 and 20 (executing a machine learning model on natural language text of a plurality of electronic documents using the ESG clause type to determine first/second clause of natural language text in the electronic documents), the machine learning model is recited at a high level of generality and amounts to no more than mere instructions to apply the abstract idea using a generic machine learning model on a generic computer (e.g. processing circuitry), also recited at a high level of generality. The machine learning model is used to generally apply the abstract idea without limiting how the machine learning functions. The machine learning model is described at a high level such that it amounts to using a generic computer with generic machine learning to apply the abstract idea. These limitations only recite outcomes/results of the steps without any details about how the outcomes are accomplished. Specification Paragraphs 46 and 47, make clear that the claimed machine learning model is well-known, conventional and routine (i.e. traditional).
[0046] Machine learning model 216 may include one or more generative machine learning models and/or one or more traditional machine learning models. Examples of generative machine learning models may include, for example, transformer-based deep neural networks or large language models (LLMs). Generative machine learning models may be associated with natural language prompts, or simply “prompts.” Examples of traditional machine learning models may include, for example, a rule-based machine learning model or a deterministic machine learning model. Traditional machine learning models may be associated with training data.
[0047] Machine learning model 216 may include a generative machine learning model configured to summarize information. Examples of a generative machine learning model may include encoder based models, decoder based models, or encoder/decoder based models. Examples of encoder based models may include, for example, a bidirectional encoder representations from transformers or “BERT” machine learning model, convolutional neural networks (CNNs), and/or recurrent neural networks (RNNs). Examples of decoder based models may include, for example, generative pre-trained transformers (GPT) models, variational autoencoders (VAEs), and/or generative adversarial networks (GANs). Examples of encoder/decoder based models may include, for example, a transformer encoder-decoder, such as a bidirectional (BERT-like) encoder and an autoregressive (GPT-like) decoder (e.g., BART), a Text-To-Text Transfer Transformer (T5) model, and/or large language models (LLMs). Machine learning model 216 may include a visualization tool model, such as Tensorboard™ or matplotlib™).
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)-(c) and (e)- (h)), the claims do not integrate the judicial exception into a practical application.
There is a fundamental difference between computer functionality improvements, on the one hand, and uses of existing computers as tools to perform a particular task, on the other — a distinction that the Federal Circuit applied in Enfish, in rejecting a § 101 challenge at the first stage of the Mayo/Alice framework because the claims at issue focused on a specific type of data structure, i.e., a self-referential table, designed to improve the way a computer stores and retrieves data in memory, and not merely on asserted advances in uses to which existing computer capabilities could be put. See Enfish, 822 F.3d at 1335-36. Here the claims simply use a computer as a tool and nothing more.
For the reasons outlined above, that the claims recite a method of organizing human activity, i.e., an abstract idea, and that the additional element recited in the claim beyond the abstract idea (i.e., processing circuitry, database, computer readable medium comprising instructions) is no more than a generic computer component used as a tool to perform the recited abstract idea. As such, it does not integrate the abstract idea into a practical application. See Alice Corp., 573 U.S. at 223-24 (“[Wholly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)).
Accordingly, the claims are directed to an abstract idea.
Step Two of the Mayo/Alice Framework (Step 2B)
Having determined under step one of the Mayo/Alice framework that the claims are directed to an abstract idea, we next consider under Step 2B of the Guidance, the second step of the Mayo/Alice framework, whether the claims include additional elements or a combination of elements that provides an “inventive concept,” i.e., whether an additional element or combination of elements adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional activity” in the field (which is indicative that an inventive concept is present) or simply appends well-understood, routine, conventional activities previously known to the industry to the judicial exception. See MPEP § 2106.05.
Under step two of the Mayo/Alice framework, the elements of each claim are considered both individually and “as an ordered combination” to determine whether the additional elements, i.e., the elements other than the abstract idea itself, “transform the nature of the claim” into a patent-eligible application. Alice Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72-73 (requiring that “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself’ (emphasis added) (citation omitted)).
Here the only additional element recited in the claims beyond the abstract idea is a processing circuitry, database, computer readable medium comprising instructions” i.e., generic computer component. See Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”). Applicant has not identified any additional elements recited in the claim that, individually or in combination, provides significantly more than the abstract idea.
As for the recited step of executing a machine learning model on natural language text of a plurality of electronic documents using the ESG clause type to determine first/second clause of natural language text in the electronic documents, the machine learning model is recited at a high level of generality and amounts to no more than mere instructions to apply the abstract idea using a generic machine learning model on a generic computer (e.g. processing circuitry), also recited at a high level of generality. The machine learning model is used to generally apply the abstract idea without limiting how the machine learning functions. The machine learning model is described at a high level such that it amounts to using a generic computer with generic machine learning to apply the abstract idea. These limitations only recite outcomes/results of the steps without any details about how the outcomes are accomplished.
Examiner suggests Applicant review the recently posted 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence (2024 AI SME Update) in the Federal Register on July 17, 2024 (https://www.federalregister.gov/public-inspection/2024-15377/guidance-2024-update-on-patent-subject-matter-eligibility-including-on-artificial-intelligence ) and specifically review the three new examples 47-49 announced by the 2024 AI SME Update which provide exemplary SME analyses under 35 U.S.C. 101 of hypothetical claims related to AI inventions (https://www.uspto.gov/sites/default/files/documents/2024-AI-SMEUpdateExamples47-49.pdf).
As for Applicant’s argument that the invention improves the function of a computer – specifically improve generating/storing/processing audit data for electronic documents and/or converts unstructured natural language text into a structured form for ESG goa data, the examiner respectfully disagrees. At best the argued ‘improvements’ are business improvements in the business problem of managing business agreements and in no way represent an improvement in the functioning of a computer or computer network, do not represent a technical solution to a technical problem inherent in computers or another technical field.
Similar to the discussion in Uniloc USA, Inc. v. LG Electronics USA, Appeal No. 19-1835 (Fed. Cir. Apr. 30, 2020), where the Federal Circuit reaffirmed that software inventions are patentable in the U.S. with a bright-line statement: “Our precedent is clear that software can make patent-eligible improvements to computer technology, and related claims are eligible as long as they are directed to non-abstract improvements to the functionality of a computer or network platform itself.” the instant application merely applies the abstract idea using a generic computer as a conduit/tool for the abstract idea and does not improve the functioning of a computer or computer networks, does not improve another technical field and does not provide a technical solution to a technical problem.
With regards to argued Specification Paragraph 23, this paragraph discloses that the invention may manage the workflow for electronic documents helping to commit to agreements faster, more securely with better customer, partner and employee experience or helping managing documents dynamically eliminating or reducing risk as well as provide a central repository to store, manage and analyze agreements across an organization unlocking data trapped in agreements to drive efficiencies, uncover opportunities and reduce risk. These disclosed improvements are at best wished for business improvements – i.e. improvements in the abstract idea itself. Nowhere in this paragraph, like the remainder of Applicant’s disclosure, is there any discussion at any level of improving the functioning of a computer, improving another technical field (document management/workflow/analysis is not a technical field), or improve another technology.
With regards to argued Specification Paragraph 52, this paragraph discloses that the invention determines first/second clause from a first/second electronic document with a machine learning model. This paragraph, fails to disclose or discuss a technical solution to a technical problem, disclose a specific machine learning model, disclose an improvement to the functioning of a computer or other technology, or disclose/discuss improving another technical field.
With regards to argued Specification Paragraph 66, this paragraph states that the techniques described herein may provide one or more technical advantages that realize one or more practical applications including improving system efficiency of managing electronic documents by proactively determining ESG data directed from documents or omit data from the dashboard which may reduce an computational burden, reduce an amount of power or reduce an amount of data received/transmitted. These are merely wished for benefits – outcomes – recited at a very high level of generality and not associated with specific method steps (merely discloses techniques described herein MAY provide…..). Nowhere in Applicant’s arguments or disclosure is there a clear mapping of the invention as claimed to specific improvements in computers, computer technology or computer networks as argued.
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
In response to Applicant’s arguments that the claims are patent eligible under 35 U.S.C. 101 because the claims are similar to Subject Matter Eligibility Example 42 the examiner respectfully disagrees.
Subject Matter Eligibility Example 42 is directed to a method for transmitting notifications when medical records are updated via a network based patient management system that collects, converts and consolidates patient information from various local healthcare systems/providers via a graphical user interface into a standardized format, stores the standardized data on network based storage devices and generates/transmits messages containing the updated patient information in a standardized format to all the physicians/healthcare providers that have access to the patients information so that all users can be quickly notified of any changes without manually having to go lookup or consolidate all of the providers information (i.e. providing an improvement to prior systems by allowing remote users to share information in real-time in a standardized format regardless of the format in which the information was inputted by the user).
In sharp contrast the instant application does not recite a network of any kind, does not consolidate data from multiple data sources, does not provide remote access over a network to users or standardize/normalize data of any kind, and does not s share information in real-time in a standardized format regardless of the format in which the information was inputted by the user.
Accordingly, the claims are not similar to those found patentable in Subject Matter Eligibility Example 42 and are therefore not patent eligible under 35 U.S.C. 101.
In response to Applicant’s argument that the claims are patent eligible under 35 U.S.C. 101 as the claims are similar to the recent Appeals Review Panel review of Ex parte Desjardins et al., the examiner respectfully disagrees.
While the Desjardins decision cautions against overbroad application of 35 U.S.C. 101 to artificial intelligence inventions, such inventions not categorically excluded from patentability, the thrust of the decision made clear that improvements to an AI model itself can be sufficient for the purpose of patent eligibility, even when the claims recite, on their face, an ostensibly “abstract idea.” Specifically, the Appeals Review Panel found that the claims under review provided a technical improvement in the functioning of machine learning models by enabling continual learning, reducing storage requirements, and preserving performance across tasks. In particular, the decision emphasized that the claimed invention addresses a technical problem ("catastrophic forgetting") and improves the operation of AI systems, not just through generic computer implementation but by a specific training strategy. To support this determination, the Appeals Review Panel looked to the specification which, on its own, disclosed how the invention would improve functioning of an AI model--in particular, the specification explained how the proposed invention would use less “storage capacity” and lead to “reduced system complexity." These improvements, which the Appeals Review Panel found were incorporated into the claims as a whole, constituted an “improvement to how the machine learning model itself operates”.
None of Applicant’s arguments, disclosure or claims discusses at any level that the generically applied/utilization of machine learning model represents or provides an improvement in machine learning itself.
Independent claims 1, 13 and 20, as newly amended, recite the step of executing a machine learning model on natural language text of a plurality of electronic documents using the ESG clause type to determine first/second clause of natural language text in the electronic documents, the machine learning model is recited at a high level of generality and amounts to no more than mere instructions to apply the abstract idea using a generic machine learning model on a generic computer (e.g. processing circuitry), also recited at a high level of generality. The machine learning model is used to generally apply the abstract idea without limiting how the machine learning functions. The machine learning model is described at a high level such that it amounts to using a generic computer with generic machine learning to apply the abstract idea. These limitations only recite outcomes/results of the steps without any details about how the outcomes are accomplished.
Further nowhere in Applicant’s disclosure is there any discussion at any level that the utilization of a generic machine learning model to determine a first/second clause in a first/second electronic document improves the general field of machine learning or addresses a technical problem in the field of machine learning or provides an improvement to a specific machine learning model, algorithm, technique or the like.
Accordingly, the claims are nothing like those in the Desjardins decision and are therefore not patent eligible under 35 U.S.C. 101.
Applicant's invention is more akin to the recent Recentive Analytics, Inc. V. Fox Corp., No. 2023- 2437 (Fed. Cir. Apr. 18, 2025) wherein the instant application fails to be patent eligible under 35 U.S.C. 101 for very similar reasons the court found Recentive's patents ineligible, namely the claims do no more than apply established methods of machine learning to a new data environment (workflow/process automation). Recentive sued Fox in November 2022 for infringement of four patents - Network Map patents and Machine learning training patents. Recentive asserted that its patents claim eligible subject matter because they involve "the unique application of machine learning to generate customized algorithms, based on training the machine learning model, that can then be used to automatically create event schedules that are updated in real-time." Recentive characterized its patents as introducing "the application of machine learning models to the unsophisticated, and equally niche, prior art field of generating network maps for broadcasting live events and live event schedules." The court did not find Recentive's arguments persuasive and found the patents ineligible under 35 U.S.C. 101. Similar to the discussion on Page 12 of the Recentive decision, the Applicant has failed to provide support or substantiative arguments that the disclosed invention or the claimed invention improves the recited machine learning model now claimed ("But Recentive also admits that the patents do not claim a specific method for "improving the mathematical algorithm or making machine learning better." Oral Arg. at 4:40-4:44.). As such the recited machine learning model is merely a tool/conduit for the abstract idea - recited at a high level and applied using a generic computer/processing circuitry which is likewise not improved by the recited or disclosed invention (i.e. claims lack a specific technological improvement). More specifically not only does Applicant's specification fail to disclose am improvement which the newly claimed machine learning model, Applicant's disclosure and subsequent arguments fail to delineate steps through which the machine learning, now claimed, achieve an improvement. See, e.g., IBM V. Zillow Grp., Inc., 50 F.4th 1371, 1381 (Fed. Cir. 2022) (holding abstract a claim that "d[id] not sufficiently describe how to achieve [its stated] results in a non-abstract way," because "[s]uch functional claim language, without more, is insufficient for patentability under our law." (quoting Two-Way Media Ltd V. Comcast Cable Commc'ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017))); see also Intell. Ventures I LLC V. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (similar); Elec. Power Grp., LLC V. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016) (similar). "[T]he patent system represents a carefully crafted bargain that encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time." Pfaff V. Wells Elecs., 525 U.S. 55, 63 (1998); Sanho Corp. V. Kaijet Tech. Int'ILtd., 108 F.4th 1376, 1382 (Fed. Cir. 2024). Allowing a claim that functionally describes a mere concept without disclosing how to implement that concept risks defeating the very purpose of the patent system. In this respect, the patents' claims are materially different from those in McRO, Inc. V. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), and Koninklijke, the cases on which Recentive relies. Instead of disclosing "a specific implementation of a solution to a problem in the software arts," Enfish, LLC V. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016), or "a specific means or method that solves a problem in an existing technological process," Koninklijke, 942 F.3d at 1150, the only thing the claims disclose about the use of machine learning is that machine learning is used in a new environment. This new environment is identifying and performing process (worklow) variants. Similar to the court's conclusion that simply applying machine learning to a new field of use does not result in patent eligibility, Applicant's disclosure makes clear that the recited machine learning processes are not improved in any way and do not result in an improvement in an underlying technology or another technical field) ("We see no merit to Recentive's argument that its patents are eligible because they apply machine learning to this new field of use. We have long recognized that "[a]n abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment." Intell. Ventures I LLC V. Capital One Bank (USA), 792 F.3d 1363, 1366 (Fed. Cir. 2015); see also Alice, 573 U.S. at 222; Parker V. Flook, 437 U.S. 584, 593 (1978); Stanford, 989 F.3d at 1373 (rejecting argument that a claim was not abstract where patentee contended "the specific application of the steps [was] novel and enable[d] scientists to ascertain more haplotype information than was previously possible").
Accordingly, the claims are more similar to those the court found ineligible under 35 U.S.C. 101.
In response to Applicant’s argument that the claims are patent eligible under 35 U.S.C. 101 as the claims recite significantly more than the abstract idea, the examiner respectfully disagrees.
As discussed above the claim limitations which recite a processing circuitry, database, computer readable medium comprising instructions and the like and at best recite generic, well-known computer hardware or other machinery each performing conventional and ordinary computer or machinery functions. The recited generic computer hardware simply performs generic computer function of storing, processing and outputting data. Generic computers performing generic, well known computer functions, alone, do not amount to significantly more than the abstract idea. Further the recited processing circuitry, database, computer readable medium comprising instructions are part of every conventional general-purpose computer. As for the recited machine learning model is directed to generic ‘other machinery’ each recited and disclosed at a high level of generality and each used for its conventional, routine and well-known purposes. See discussion above.
Applicant has not demonstrated that a special purpose machine/computer is required to carry out the claimed invention. A special purpose machine is now evaluated as part of the significantly more analysis established by the Alice decision and current 35 U.S.C. 101 guidelines. It involves/requires more than a machine only broadly applying the abstract idea and/or performing conventional functions.
Applicant’s claimed features directed to a system and components do not represent custom or specific computer hardware circuits, instead the term system merely refers to commercially available software and/or hardware.
As discussed above and as described in MPEP § 2106.05(f), the recited computer and other machinery (must “play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly” in order to add significantly more than the abstract idea. The claims merely invoke computers or other machinery merely as a tool to perform an existing process and use of a computer or other machinery in its ordinary capacity for economic or other tasks and as such do not recite significantly more than an abstract idea.
As discussed above the additional elements in the claims amount to no more than a mere instruction to apply the abstract idea using generic computing components or other machinery, wherein mere instructions to apply an judicial exception using generic computer components or other machinery do not provide an inventive concept.
The claims use “conventional or generic technology in a nascent but well-known environment” to implement the abstract idea of “visualizing flow direction is a distribution network” (Claim 20, preamble). In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016). The recited technology (processor, memories, etc.), are used as a “conduit for the abstract idea,” not to provide a technological solution to a specific technological problem. Id.; see also id. at 611–13 (holding claims reciting the use of a cellular telephone and a network server to classify an image and store the image based on its classification to be abstract because the patent did “not describe a new telephone, a new server, or a new physical combination of the two” and did not address “how to combine a camera with a cellular telephone, how to transmit images via a cellular network, or even how to append classification information to that data”).
Nothing in Applicant’s disclosures suggests that the Applicant intended to accomplish any of the steps recited in the claims through anything other than well understood technology used in a routine and conventional manner. Therefore, the claims lack an inventive concept. See also, e.g., Elec. Power Grp., 830 F.3d at 1355 (holding claims lacked inventive concept where “[n]othing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information”); Content Extraction, 776 F.3d at 1348 (holding claims lacked an inventive concept where the claims recited the use of “existing scanning and processing technology”).
The claimed invention is drawn to a patent-ineligible abstract idea and merely require a generic computer implementation (see Figure 3), which fails to transform that abstract idea into a patent-eligible invention. The instant invention/claims are drawn to document management/analysis, and furthermore does not include much else, individually or as an ordered combination, that transforms the nature of the claim into a patent-eligible application. In the current language, the claim is merely implemented or executed using processing circuitry and therefore does not improve upon the technology or functionality of the computer beyond the abstract idea. In other words, Examiner submits that the inventive concept, i.e. an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept (of an abstract idea itself)”, is unable to be determined within the limitations as claimed.
With regards to argued Specification Paragraphs 50-55, discussed the invention processing/analyzing, using machine learning, electronic documents to identify commitments made by an entity (e.g. green clauses, ESG clauses, regulatory requirements, etc.) as well as track ESG obligations or ESG tasks (due dates, owner, etc. – not claimed), determine ESG clause types using metadata maps (not claimed) and determine such metrics as a total monetary value for electronics documents with a first clause type, a number of electronic documents executed by month having a clause type, a total quantity of waste reduce associated with a clause type and/or determine a risk value for compliance (not claimed). Nothing in these paragraphs discloses significantly more than the abstract idea, these claims focus on the method steps of performing the business process of document management/analysis. These paragraphs do not disclose utilizing a computer beyond performing the abstract idea.
With regards to argued Specification Figures 6-8, these figures disclose example ESG metric data displayed/outputted via a dashboard (graphical data presented to human users). Outputting data, even graphical data (charts, graphs, etc.) represents a conventional, routine and well-known use of computers. Displaying/outputting data, even in a ‘dashboard’ format, does not recite an inventive concept/is not significantly more than the abstract idea. Outputting data is merely directed to insignificant post solution activity.
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: Environmental, Social and Governance Dashboard for Statement of Work, Environmental, Social and Governance Contract Clause Risk Identification, Environmental, Social and Governance Contract Clause Compliance Dashboard, Dashboard for Contract ESG Goal Compliance or the like.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 and 13-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding independent claims 1, 13, 20, the claims recite “wherein the machine learning model is trained to scan natural language text for specific keywords, clauses and commitments” wherein Applicant’s specification does not provide a sufficient description to show possession of the invention. Specifically, Applicant’s specification fails to provide a specific algorithm, models, flow-charts, steps, processes or the like for at least the step training a machine learning model to scan natural language text for specific keywords, clauses and commitments as claimed. Applicant’s specification only describes an indication of a result that one might achieve. This is insufficient to show possession or enablement under 35 U.S.C. 112.
The phrase training and pre-trained only appears in Specification Paragraphs 46 and 47, neither of which specifically disclose/discuss that the machine learning model is trained to scan natural language text for specific keywords, clauses and commitments as claimed. Specification Paragraph 46 merely discloses that the traditional machine learning models may be associated with training data. Specification Paragraph 47 merely discloses that decoder based models may include, for example, generative pre-trained transformers (GPT) models.
While specification tangentially machine learning model may be pre-trained and/or be associated with training data, these brief and unrelated disclosures are insufficient to show possession of the invention as claimed. The specification merely recites a desired result without any discussion as to how that result is actually implemented or achieved.
Accordingly, Applicant's specification fails to provide adequate written support to show possession as well as lacks written disclosure to enable one to use the invention without undue experimentation as claimed. Applicant's disclosure fails to disclose any specific method, algorithm, approach, process or working example for the step “wherein the machine learning model is trained to scan natural language text for specific keywords, clauses and commitments” as claimed nor the claimed embodiment as a whole.
While Applicant’s specification appears to suggest some potential capabilities of the claimed system/method, the Specification merely lists potential features and fails to disclose any specific method, mechanism, process, algorithm, or example for how to perform any of the claimed steps much alone the combination of the steps as claimed. Applicant’s specification simply represents a wish list of potential system/device capabilities without any disclosure as to HOW those wished for capabilities are actually performed or implemented (e.g. HOW to train a machine learning model to scan natural language text for specific keywords, clauses and commitments).
The Federal Circuit explained that “[t]he test for the sufficiency of the written description ‘is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.’” Id. at 682 (quoting Ariad, 598 F.3d at 1351). The Federal Circuit emphasized that “[t]he written description requirement is not met if the specification merely describes a ‘desired result.’” Vasudevan, 782 F.3d at 682 (quoting Ariad, 598 F.3d at 1349). Thus, in applying this standard to the computer implemented functional claim at issue, the Federal Circuit stated that “[t]he more telling question is whether the specification shows possession by the inventor of how [the claimed function] is achieved.” Vasudevan, 782 F.3d at 683.
It is noted that the written description requirement under 112(a) is not satisfied by stating that one of ordinary skill in the art could devise an algorithm to perform the specialized programmed functions. For written description, the specification as filed must describe the claimed invention in sufficient detail so that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. An original claim may lack written description when the claim defines the invention in functional language specifying a desired result but the specification does not sufficiently identify how the inventor has devised the function to be performed or result achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient).
Further, the structure corresponding to claim limitations that are computer-implemented specialized functions must include a general-purpose computer or computer component along with the algorithms that the computer uses to perform each claimed specialized function.
It is not enough that one skilled in the art could theoretically write a program to achieve the claimed function, rather the specification itself must explain how the claimed function is achieved to demonstrate that the applicant had possession of it. See, e.g., Vasudevan, 782 F.3d at 682-83.
Applicant’s specification does not provide a disclosure of the computer and algorithms in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention that achieves the claimed result.
Accordingly, Applicant's specification fails to provide adequate written support to show possession as well as lacks written disclosure to enable one to use the invention without undue experimentation as claimed. Applicant's disclosure fails to disclose any specific method, algorithm, approach, process or working example for the step of “wherein the machine learning model is trained to scan natural language text for specific keywords, clauses and commitments” as claimed.
Further regarding independent claims 1, 13, 20, the claims recite “based on the determination that the first clause corresponds to the ESG clause type, convert, based on a unit of value of the ESG goal data, the natural language text of the first electronic document into determine first ESG commitment data comprising a first numerical value indicating the unit of value of the ESG goal data; based on the determination that the second clause corresponds to the ESG clause type, convert, based on the ESG goal data, the natural language text of the second electronic document into determine second ESG commitment data comprising a second numerical value indicating the unit of value of the ESG goal data” wherein Applicant’s specification does not provide a sufficient description to show possession of the invention. Specifically, Applicant’s specification fails to provide a specific algorithm, models, flow-charts, steps, processes or the like for at least the step of based on the determination that the first/second clause corresponds to the ESG clause type convert based on a unit value of the ESG goal data, the natural language text of the first/second electronic data into first ESG commitment data comprising a first/second numerical value indicating the unit value of the ESG goal data as claimed. Applicant’s specification only describes an indication of a result that one might achieve. This is insufficient to show possession or enablement under 35 U.S.C. 112.
Initially it is noted that none of the phrases convert, converting, conversion, transform, transforming, calculate, calculating, or the like appear anywhere in Applicant's disclosure.
While specification Paragraphs 5-7, disclose at a high level of generality of generating ESG metric data based on ESG commitment data, these paragraphs do not disclose convert based on a unit value of the ESG goal data, the natural language text of the first/second electronic data into first ESG commitment data comprising a first/second numerical value indicating the unit value of the ESG goal data based on the determination that the first/second clause corresponds to the ESG clause type as claimed.
Similarly, Specification Paragraphs 56, 57, 86 and 87, disclose sorting ESG clauses into risk categories (e.g. low/medium risk bands or colors). These paragraphs do not disclose convert based on a unit value of the ESG goal data, the natural language text of the first/second electronic data into first ESG commitment data comprising a first/second numerical value indicating the unit value of the ESG goal data based on the determination that the first/second clause corresponds to the ESG clause type as claimed.
Specification paragraphs 58 and 88 disclose counting the number of documents that have a corresponding ESG clause type, however these paragraphs do not disclose convert based on a unit value of the ESG goal data, the natural language text of the first/second electronic data into first ESG commitment data comprising a first/second numerical value indicating the unit value of the ESG goal data based on the determination that the first/second clause corresponds to the ESG clause type as claimed.
Accordingly, Applicant's specification fails to provide adequate written support to show possession as well as lacks written disclosure to enable one to use the invention without undue experimentation as claimed. Applicant's disclosure fails to disclose any specific method, algorithm, approach, process or working example for the step recite “based on the determination that the first clause corresponds to the ESG clause type, convert, based on a unit of value of the ESG goal data, the natural language text of the first electronic document into determine first ESG commitment data comprising a first numerical value indicating the unit of value of the ESG goal data; based on the determination that the second clause corresponds to the ESG clause type, convert, based on the ESG goal data, the natural language text of the second electronic document into determine second ESG commitment data comprising a second numerical value indicating the unit of value of the ESG goal data” as claimed nor the claimed embodiment as a whole.
While Applicant’s specification appears to suggest some potential capabilities of the claimed system/method, the Specification merely lists potential features and fails to disclose any specific method, mechanism, process, algorithm, or example for how to perform any of the claimed steps much alone the combination of the steps as claimed. Applicant’s specification simply represents a wish list of potential system/device capabilities without any disclosure as to HOW those wished for capabilities are actually performed or implemented (e.g. HOW to convert, based on the first/second determined clause/ESG clause type and based on the ESG goal data, the natural language of the first/second document into a first/second numerical value of the ESG goal data).
Further, the structure corresponding to claim limitations that are computer-implemented specialized functions must include a general-purpose computer or computer component along with the algorithms that the computer uses to perform each claimed specialized function.
It is not enough that one skilled in the art could theoretically write a program to achieve the claimed function, rather the specification itself must explain how the claimed function is achieved to demonstrate that the applicant had possession of it. See, e.g., Vasudevan, 782 F.3d at 682-83.
Applicant’s specification does not provide a disclosure of the computer and algorithms in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention that achieves the claimed result.
Accordingly, Applicant's specification fails to provide adequate written support to show possession as well as lacks written disclosure to enable one to use the invention without undue experimentation as claimed. Applicant's disclosure fails to disclose any specific method, algorithm, approach, process or working example for the step of recite “based on the determination that the first clause corresponds to the ESG clause type, convert, based on a unit of value of the ESG goal data, the natural language text of the first electronic document into determine first ESG commitment data comprising a first numerical value indicating the unit of value of the ESG goal data; based on the determination that the second clause corresponds to the ESG clause type, convert, based on the ESG goal data, the natural language text of the second electronic document into determine second ESG commitment data comprising a second numerical value indicating the unit of value of the ESG goal data” as claimed.
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 13-21 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.
Regarding independent Claims 1, 13 and 20, the claims are directed to the abstract idea of document management. This is a process (i.e. a series of steps) which (Statutory Category – Yes –process).
The claims recite a judicial exception, a method for organizing human activity, document management/analysis (see at least Specification Paragraphs 23, 24, 30, 33, 34, 36 and 76; Figures 6, 7) (Judicial Exception – Yes – organizing human activity). More specifically, the claims output a generated Environmental, Social and Governance (ESG) dashboard comprising ESG metrics related to first/second document close commitments (e.g. ESG obligations in contracts, statement of works, etc.; Figure 6 - above; Specification Paragraph 75), wherein document management is a fundamental economic practice that falls into the abstract idea subcategories of sales activities and/or commercial interactions. See 2106.04(a). Further all of the steps of “store”, “determine”, “determine”, “convert”, “convert”, “generate” “generate” and “output” recite functions of the document management are also directed to an abstract idea that falls into the abstract idea subcategories of sales activities and/or commercial interactions. The intended purpose of independent claims 1, 13 and 20 appears to be to output (to a human) an ESG dashboard data associated with an ESG clauses/commitments within an electronic document.
Accordingly, the claims recite an abstract idea – fundamental economic practice, specifically in the abstract idea subcategories of sales activities and/or commercial interactions. The exceptions are the generic computer elements: system, computer readable medium, processing circuitry, database including instruction. See 2106.04(a).
Accordingly, the claims recite an abstract idea under Step 2A, Prong One, we proceed to Step 2A, Prong Two. Considering whether the additional elements set forth in the claim integrate the abstract idea into a practical application (See 2106.04(a)), the previously identified non-abstract elements directed to generic computing components include: system, computer readable medium, processing circuitry, database including instruction. These generic computing components are merely used to process or display data as described extensively in Applicant’s specification (Specification: Figure 3). Generic computers performing generic computer functions, alone, do not amount to significantly more than the abstract idea. Moreover, when viewed as a whole with such additional elements considered as an ordered combination, the claim modified by adding a generic computer would be nothing more than a purely conventional computerized implementation of applicant's document management in the general field of business management and would not provide significantly more than the judicial exception itself. Note McRo, Inc. v. Bandai Namco Games America Inc. (837 F.3d 1299 (Fed. Cir. 2016)), guides: "[t]he abstract idea exception prevents patenting a result where 'it matters not by what process or machinery the result is accomplished."' 837 F.3d at 1312 (quoting O'Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). The claims are not directed to a particular machine nor do they recite a particular transformation (MPEP § 2106.05(b)).
Additionally, the claims do not recite any specific claim limitations that would provide a meaningful limitation beyond generally linking the use of the judicial exception to a particular technological environment. Nor do the claims present any other issues as set forth in the MPEP 2106.04(a) regarding a determination of whether the additional generic elements integrate the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 55. Rather, the claims on merely use instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea. Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)-(c) and (e)- (h)), claims 1-11 and 13-21 do not integrate the judicial exception into a practical application.
Regarding the use of the generic (known, conventional) recited system, computer readable medium, processing circuitry, database," the Supreme Court has held "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 573 U.S. 208, 223. Generic computers performing generic computer functions, alone, do not amount to significantly more than the abstract idea. The claims as a whole do not recite more than what was well-known, routine and conventional in the field (see MPEP § 2106.05(d)). In light of the foregoing and under the MPEP 2106.04(a), that each of the claims, considered as a whole, is directed to a patent-ineligible abstract idea that is not integrated into a practical application and does not include an inventive concept.
As for the machine learning model recited in independent claims 1, 13 and 20 (executing a machine learning model on natural language text of a plurality of electronic documents using the ESG clause type to determine first/second clause of natural language text in the electronic documents), the machine learning model is recited at a high level of generality and amounts to no more than mere instructions to apply the abstract idea using a generic machine learning model on a generic computer (e.g. processing circuitry), also recited at a high level of generality. The machine learning model is used to generally apply the abstract idea without limiting how the machine learning functions. The machine learning model is described at a high level such that it amounts to using a generic computer with generic machine learning to apply the abstract idea. These limitations only recite outcomes/results of the steps without any details about how the outcomes are accomplished. Specification Paragraphs 46 and 47 make clear that the claimed machine learning model is well-known, conventional and routine (i.e. traditional).
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
Additionally, the claims recite a judicial exception, a mental processes, which can be performed in the human mind or via pen and paper (Judicial Exception – Yes – mental process).
The claimed steps of determine ESG goal data, determining a first/second clause from first/second electronic document, convert the natural language corresponding to the first clause in the first document into a first ESG commitment data comprising a numerical value(also directed to a mathematical operation/concept), convert the natural language corresponding to the second clause in the second document into a second ESG commitment data comprising a numerical value (also directed to a mathematical operation/concept), generate ESG metric data comprising an aggregate value (also directed to a mathematical operation/concept), and generate dashboard data based on the ESG metric data all describe the abstract idea. These limitations as drafted are directed to a process that under its reasonable interpretation covers performance of the steps in the mind but for the recitation of the generic computer components. Other than the recitation of a system, computer readable medium, processing circuitry, database nothing in the claimed steps precludes the step from practically being performed in the mind. The claims do not recite additional elements that are sufficient to amount to significantly more than the abstract idea because the step store a plurality of electronic documents is directed to insignificant pre-solution activity (i.e. data gathering). The step of output the dashboard data is directed to insignificant post-solution activity (i.e. data output). The mere nominal recitation of a generic processor/processing circuitry does not take the claim limitation out of the mental processes grouping. Thus, the claim recites a mental process. (Judicial Exception recited – Yes – mental process).
The claims do not integrate the abstract idea into a practical application. The generic system, computer readable medium, processing circuitry, database are each recited at a high level of generality merely performs generic computer functions of retrieving, processing or displaying data. The generic processor/computer merely applies the abstract idea using generic computer components. The 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 claims do not recite improvements to the functioning of a computer or any other technology field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition, the claims to do apply the abstract idea with a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (e.g. data remains data even after processing; MPEP 2106.05(c)), the claims no not apply or use the abstract idea in some other meaningful way beyond generally linking the user of the abstract idea to a particular technological environment (i.e. a generic computer) such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea (MPEP 2106.05(e)). The recited generic computing elements are no more than mere instructions to apply the exception using a generic computer component.
Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. (Integrated into a Practical Application – No).
As discussed above the additional elements in the claims amount to no more than a mere instruction to apply the abstract idea using generic computing components, wherein mere instructions to apply an judicial exception using generic computer components cannot integrate a judicial exception into a practical application or provide an inventive concept. For the store and output steps that were considered extra-solution activity, this has been re-evaluated and determined to be well-understood, routine, conventional activity in the field. Applicant’s specification does not provide any indication that the computer/processor is anything other than a generic, off-the-shelf computer component, and the Symantec, TLI, and OIP Techs. court decisions (MPEP 2106.05(d)(II)) indicate that mere collection or receipt of data is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). For these reasons, there is no inventive concept. The claim is ineligible (Provide Inventive Concept – No).
As for the recited execution of a machine learning model on natural language text of a plurality of electronic documents using the ESG clause type to determine first/second clause of natural language text in the electronic documents, the machine learning model is recited at a high level of generality and amounts to no more than mere instructions to apply the abstract idea using a generic machine learning model on a generic computer (e.g. processing circuitry), also recited at a high level of generality. The machine learning model is used to generally apply the abstract idea without limiting how the machine learning functions. The machine learning model is described at a high level such that it amounts to using a generic computer with generic machine learning to apply the abstract idea. These limitations only recite outcomes/results of the steps without any details about how the outcomes are accomplished. The recitation of a machine learning model, even one trained to scan natural language text, in this claim does not negate the mental nature of these limitations because the trained neural network is merely used at a tool to perform an otherwise mental process.
The claims are ineligible under 35 U.S.C. 101 as being directed to an abstract idea without significantly more.
Regarding dependent claims 2-11, 14-19 and 21, the claims are directed to the abstract idea of document management and merely further limit the abstract idea claimed in independent claims 1, 13 and 20.
Claims 2 and 14 further limits the abstract idea by determine a risk value for compliance and generate dashboard data based on risk value for compliance (a more detailed abstract idea remains an abstract idea). Claims 3 and 15 further limit the abstract idea by generating dashboard data to display both ESG clause type and risk value for compliance (a more detailed abstract idea remains an abstract idea). Claims 4 and 16 further limit the abstract idea by generating the dashboard data to display at least a portion of the first clause (a more detailed abstract idea remains an abstract idea). Claims 5 and 17 further limit the abstract idea by generating the dashboard data to display an indication of contact data to the ESG clause type (a more detailed abstract idea remains an abstract idea). Claims 6 and 18 further limit the abstract idea by determining a risk value for compliance does not satisfy a threshold, determining a number of documents that comprise at least one ESG clause and generate dashboard based on the count (a more detailed abstract idea remains an abstract idea). Claims 7 and 19 further limit the abstract idea by selecting a risk category for the ESG clause type and generating the dashboard data based on the selected risk category (a more detailed abstract idea remains an abstract idea). Claim 8 further limits the abstract idea by determining to add an ESG clause to a working document and generated an electronic document based on the ESG clause (a more detailed abstract idea remains an abstract idea). Claim 9 further limits the abstract idea by store private ESG data, determine public ESG data and select ESG goal data from entity specific ESG data (a more detailed abstract idea remains an abstract idea). Claim 10 further limits the abstract idea by applying a machine learning model to data stored (a more detailed abstract idea remains an abstract idea). Claim 11 further limits the abstract idea by scan the first electronic document for specific sustainability related keywords (a more detailed abstract idea remains an abstract idea). Claim 21 further limits the abstract idea by limiting the unit of value of ESG goal data to a quantity (a more detailed abstract idea remains an abstract idea).
None of the limitations considered as an ordered combination provide eligibility because taken as a whole the claims simply instruct the practitioner to apply the abstract idea to a generic computer.
Further regarding claims 1-11 and 13-21, Applicant’s specification discloses that the claimed elements directed to a system, computer readable medium, processing circuitry, database at best merely comprise generic computer hardware which is commercially available (Specification: Figure 3). More specifically Applicant’s claimed features directed to a system do not represent custom or specific computer hardware circuits, instead the terms merely refers to commercially available software and/or hardware. Thus, as to the system recited, "the system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea." See Alice Corp. Pry. Ltd., 134 S.Ct. at 2360.
Accordingly, the claims merely recite manipulating data utilizing generic computer hardware (e.g. processing circuitry, etc.). Generic computers performing generic computer functions, alone, do not amount to significantly more than the abstract idea. Further the lack of detail of the claimed embodiment in Applicant’s disclosure is an indication that the claims are directed to an abstract idea and not a specific improvement to a machine.
Accordingly given the broadest reasonable interpretation and in light of the specification the claims are interpreted to include the process steps being performed by a human mind or via pen and paper. The claim limitations which recite a computer implemented method is at best recite generic, well-known hardware. However, the recited generic hardware simply performs generic computer function of displaying or processing data. Generic computers performing generic, well known computer functions, alone, do not amount to significantly more than the abstract idea. Further the recited memories are part of every conventional general-purpose computer.
Applicant has not demonstrated that a special purpose machine/computer is required to carry out the claimed invention. A special purpose machine is now evaluated as part of the significantly more analysis established by the Alice decision and current 35 U.S.C. 101 guidelines. It involves/requires more than a machine only broadly applying the abstract idea and/or performing conventional functions.
Applicant’s specification discloses that the claimed elements directed to a system, computer readable medium, processing circuitry, database including instructions merely comprise generic computer hardware which is commercially available (Specification: Figure 3). More specifically Applicant’s claimed features directed to a system and components do not represent custom or specific computer hardware circuits, instead the term system merely refers to commercially available software and/or hardware. Thus, as to the system recited, "the system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea." See Alice Corp. Pry. Ltd., 134 S.Ct. at 2360.
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
Allowable Subject Matter
The prior art of record does not disclose a a system/method comprising a database configured to store a plurality of electronic documents; and non-transitory computer-readable computer readable media comprising instructions executable to that, when executed, cause the processing circuitry to: determine ESG goal data for an ESG clause type; execute a machine learning model on natural language text of the plurality of electronic documents using the ESG clause type to determine that a first clause of natural language text of a first electronic document of the plurality of electronic documents corresponds to the ESG clause type and that a second clause of natural language text of a second electronic document of the plurality of electronic documents corresponds to the ESG clause type, wherein the machine learning model has been trained to scan natural language text for specific keywords, clauses, and commitments; based on the determination that the first clause corresponds to the ESG clause type, convert, based on a unit of value of the ESG goal data, the natural language text of the first electronic document into determine first ESG commitment data comprising a first numerical value indicating the unit of value of the ESG goal data; based on the determination that the second clause corresponds to the ESG clause type, convert, based on the ESG goal data, the natural language text of the second electronic document into determine second ESG commitment data comprising a second numerical value indicating the unit of value of the ESG goal data; generate ESG metric data comprising an aggregated value indicating the unit of value indicated in the ESG goal data based on the first ESG commitment data and the second ESG commitment data; generate dashboard data based on the ESG metric data; and output the dashboard data as recited in independent claims 1, 13 and 20.
Claims 1-11 and 13-21 are rejected under 35 U.S.C. 101 and 35 U.S.C. 112(a), see discussion above, and are therefore not in condition for allowance.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT L JARRETT whose telephone number is (571)272-7033. The examiner can normally be reached M-TH 6am-4:30PM.
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SCOTT L. JARRETT
Primary Examiner
Art Unit 3625
/SCOTT L JARRETT/Primary Examiner, Art Unit 3625
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