DETAILED ACTION
Claims 1-11 are pending and have been examined.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims are directed to an abstract idea without significantly more.
Here, under step 1 of the Alice analysis, method claims 1-9 are directed to a series of steps, device claim 10 is directed to at least one processor, and system claim 11 is directed to at least one processor; and a database. Thus the claims are directed to a process, machine and machine, respectively.
Under step 2A Prong One of the analysis, the claimed invention is directed to an abstract idea without significantly more. The claims recite information processing, including acquiring and generating steps.
The limitations of acquiring and generating, are a process that, under its broadest reasonable interpretation, covers organizing human activity concepts, but for the recitation of generic computer components.
Specifically, the claim elements recite acquiring first document data and second document data, the first document data being data of a first document that reaches an agreement of a contract between a plurality of contracting parties, the second document data being data of a second document considered as a standard on the contract in one of the plurality of contracting parties; and generating risk information based on comparison between the first document data and the second document data.
That is, other than reciting a processor in claims 10 and 11, the claim limitations merely cover legal interactions, thus falling within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
Under Step 2A Prong Two, the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This judicial exception is not integrated into a practical application. The claims include a processor. The processor in the steps is recited at a high-level of generality, such that it amounts 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 a result, the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of a processor amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
None of the dependent claims recite additional limitations that are sufficient to amount to significantly more than the abstract idea. Claims 2-7 further describe the risk information and generating the risk information. Claims 8 and 9 recite additional adding and sending steps. A more detailed abstract idea remains an abstract idea.
Under step 2B of the analysis, the claims include, inter alia, a processor.
As discussed with respect to Step 2A Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception on a generic computer cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
There isn’t any improvement to another technology or technical field, or the functioning of the computer itself. Moreover, individually, there are not any meaningful limitations beyond generally linking the abstract idea to a particular technological environment, i.e., implementation via a computer system. Further, taken as a combination, the limitations add nothing more than what is present when the limitations are considered individually. There is no indication that the combination provides any effect regarding the functioning of the computer or any improvement to another technology.
In addition, as discussed in paragraph 0024 of the specification, “As illustrated in FIG. 2, the information processing device 10 may be a computer and include, as an example, a processor 11, a main storage device (memory) 13, an auxiliary storage device (memory) 15, a network interface 17, a device interface 18, and a bus 19 that connects each component.”
As such, this disclosure supports the finding that no more than a general purpose computer, performing generic computer functions, is required by the claims.
Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank Int’l et al., No. 13-298 (U.S. June 19, 2014).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.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 (i.e., changing from AIA to pre-AIA ) 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wodetzki et al (US 20180268506 A1).
As per claim 1, Wodetzki et al disclose an information processing (i.e., evaluating contract risk the include defining an object model containing a structural representation of the events and artefacts through which contracts are created, ¶ 0027) method comprising:
acquiring first document data and second document data, the first document data being data of a first document that reaches an agreement of a contract between a plurality of contracting parties, the second document data being data of a second document considered as a standard on the contract in one of the plurality of contracting parties (i.e., a multi-tier contract object model, which breaks contracts into at least three object types and connects them via a series of rules. Contract Documents are one object type, which contain things agreed by the parties, as words that are possibly supplemented by other forms of notation or expression. The words in these contracts can then be linked to Contract Transactions (“Contract Txns”), a second object type, which represent a set of terms in at least one Contract Document at a point in time, and reflect a state-change to a contract, ¶ 0058, wherein he Universal Contract Model organizes contractual data into a set of major categories: Contract details 300, parties data 302, term and termination data 304, risk allocation data 306, payment and performance data 308, relationship management data 310 and boilerplate data 312. The contract details 300 outline particulars including actual words used in the contract title, whose paper (including, for example, “ours” standard, “ours” negotiated, counterparty paper, industry form standard and industry form negotiated), ¶ 0085); and
generating risk information based on comparison between the first document data and the second document data (i.e., The risk allocation data 306 describes the terms designed to allocate risk, including exclusions, limitations, representations & warranties, indemnities, guarantees, and insurance, collateral & credit support obligations. The data contains high level risk terms (including, for example, a flag where there are certain terms designed to allocate risk, on “us”, counterparty or mutual, including liability caps, obligations to indemnify, credit support obligations, insurance obligations, and force majeure), ¶ 0088).
As per claim 2, Wodetzki et al disclose the risk information includes comparison information between the first document data and the second document data (i.e., Using normalized contractual risk, a method of comparing contracts against a universal benchmark is implemented. By building on normalized data and risk models, any one organization can benchmark its contractual outcomes against a set of peers, ¶ 0140).
As per claim 3, Wodetzki et al disclose generating the risk information including at least one of description regarding a risk and a level of the risk (i.e., risk allocation data 306 describes the terms designed to allocate risk, including exclusions, limitations, representations & warranties, indemnities, guarantees, and insurance, collateral & credit support obligations. The data contains high level risk terms (including, for example, a flag where there are certain terms designed to allocate risk, on “us”, counterparty or mutual, including liability caps, obligations to indemnify, credit support obligations, insurance obligations, and force majeure), ¶ 0088).
As per claim 4, Wodetzki et al disclose generating the risk information including at least one of comment information included in the second document data and additional information associated with the second document data (i.e., a normalized clause model is implemented. One layer of a contractual data model is the assessment of clause types included or excluded from a contract. To facilitate this analysis, a contract or contract transaction must be broken into clauses, and those clauses can then be compared against known clause types for classification, ¶ 0142).
As per claim 5, Wodetzki et al disclose generating the risk information as a summary version that displays information selected based on the level of the risk in an order determined based on the level of the risk (i.e., referring to FIGS. 20A-20D, an exemplary model for scoring contractual risk is provided. In the example, a data representation of variables and values from the Contract Data Model are provided. At the top of each column is the Contract Data Model variable and a maximum risk score associated with that variable is provided at the top of an adjacent column, ¶ 0141).
As per claim 6, Wodetzki et al disclose generating the risk information as a detailed version including information on all risks regarding the contract included in the first document (i.e., The risk allocation data 306 describes the terms designed to allocate risk, including exclusions, limitations, representations & warranties, indemnities, guarantees, and insurance, collateral & credit support obligations, ¶ 0088).
As per claim 7, Wodetzki et al disclose the risk information includes review information of the first document (i.e., The analysis and scoring of each contract is performed by utilizing software to review each contract and categorize contract terms into the contract object model, ¶ 0060).
As per claim 8, Wodetzki et al disclose adding code information in which management information is coded to the first document data; and sending the first document data to which the code information is added to a database (i.e., A Legal Entity Object 108 abstracts and links to separate legal entity objects and has certain benefits including tracking affiliate relationships, current, former and alternate names, reference numbers and unique IDs, ¶ 0076).
As per claim 9, Wodetzki et al disclose an appearance of the code information varies according to a level of a risk for the contract included in the first document (i.e., The data contains high level risk terms (including, for example, a flag where there are certain terms designed to allocate risk, on “us”, counterparty or mutual, including liability caps, obligations to indemnify, credit support obligations, insurance obligations, and force majeure), ¶ 0088).
Claim 10 is rejected based upon the same rationale as the rejection of claim 1, since it is the device claim corresponding to the method claim.
Claim 11 is rejected based upon the same rationale as the rejection of claim 1, since it is the system claim corresponding to the method claim.
Conclusion
The prior art made of record and not relied upon, listed in the PTO-892, considered pertinent to applicant's disclosure, discloses contract risk analysis and management.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDRE D BOYCE whose telephone number is (571)272-6726. The examiner can normally be reached M-F 10a-6:30p.
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/ANDRE D BOYCE/Primary Examiner, Art Unit 3623 June 22, 2026
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