DETAILED ACTION
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
This Office action is in response to the Amendment filed on 07/15/2026.
Claim 3 is canceled.
Claims 14-21 are new.
Claims 1-2, 5, 7-8, and 10-13 are currently amended.
Claims 1-2 and 4-21 are currently pending and examined below.
Contingent Limitation
Claim 14 recites the limitation “further comprising: amending, in response to a user operation, the target item in the second contract document based on the correction proposal information.” However, under the broadest reasonable interpretation, this limitation is a contingent limitation that is not required to be performed if the user operation is not received.
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 1-2 and 4-21 is/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 nature phenomenon, or an abstract idea) without significantly more.
Step 1:
Claims 1-2 and 4-21 is/are directed towards a statutory category (i.e., a process, machine, manufacture, or composition of matter) (Step 1, Yes).
Step 2A Prong One:
Claim 1 recites (additional elements underlined):
A correction proposal method, comprising:
storing, in a memory, in association with each other, pre-correction information, which is content before correction of an item in a first contract document, and post-correction information that is an item after correction amended from the item before correction: and
providing, based on the post-correction information, correction proposal information regarding a proposed correction to a target item in a second contract document that is different from the first contract document; and
displaying, for a user, the second contract document and the correction proposal information, wherein the correction proposal information includes position information indicating a position of a party in the first contract document.
Under the broadest reasonable interpretation, the limitations outlined above that describe or set forth the abstract idea, cover performance of the limitations in the mind but for the recitation of generic computer(s) and/or generic computer component(s). That is, other than reciting the additional elements identified below, nothing in the claim precludes the limitations from practically being performed in the mind. These limitations are considered a mental process because the limitations include an observation, evaluation, judgment, and/or opinion. These limitations are also similar to “collecting information, analyzing it, and displaying certain results of the collection and analysis” and/or “collecting and comparing known information” which were determined to be mental processes in MPEP 2106.04(a)(2)(III)(A). The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer” (see MPEP 2106.04(a)(2)(III)(C)). The mere nominal recitation of the additional elements identified above do not take the claims out of the mental process grouping. Therefore, the claim recite a mental process (Step 2A Prong One, Yes).
The limitations outlined above also describe or set forth a commercial or legal interaction (e.g., agreements in the form of contacts, legal obligations, business relations, etc.). Commercial or legal interactions fall within the certain method of organizing human activity enumerated grouping of abstract ideas. The limitations outlined above also describe or set forth the managing of personal behavior or relationships or interactions between people (e.g., social activities, teaching, and following rules or instructions). Therefore, the claim recites a certain method of organizing human activity (Step 2A Prong One, Yes).
Step 2A Prong Two:
In Step 2A Prong Two, the additional element(s) outlined above are recited at a high level of generality, and under the broadest reasonable interpretation, are generic computer(s) and/or generic computer component(s) that perform generic computer functions. The additional element(s) are merely used as tools, in their ordinary capacity, to perform the abstract idea. The additional element(s) amount adding the words “apply it” with the judicial exception. Merely implementing an abstract idea on generic computer(s) and/or generic computer component(s) does not integrate the judicial exception similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. The Examiner notes that “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent eligible subject matter" (see pp 10-11 of FairWarning IP, LLC. v. Iatric Systems, Inc. (Fed. Cir. 2016)). The additional elements also amount to generally linking the use of the abstract idea to a particular technological environment or field of use (e.g., in a computer environment). The courts have found that simply limiting the use of the abstract idea to a particular environment does not integrate the judicial exception into a practical application. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. There is no indication that the combination of elements improves the functioning of a computer, improves any other technology or technical field, applies or uses the judicial exception to effect a particular treatment or prophylaxis for disease or medical condition, applies the judicial exception with, or by use of a particular machine, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses 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 claims as a whole is more than a drafting effort designed to monopolize the exception. Their collective functions merely provide generic computer implementation (Step 2A Prong Two, No).
Step 2B:
In Step 2B, the additional elements of also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong Two. The Examiner notes that revised Step 2A Prong Two overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Their collective functions merely provide generic computer implementation (Step 2B, No).
Claims 2, 4-11, and 14 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 1 (i.e., certain methods of organizing human activities and/or mental processes).
Claims 2, 4-7, 9-10, and 14 do not recite any other additional elements. Therefore, for the same reasons explained above with respect to claim 1, claims 2, 4-7, 9-10, and 14 also do not integrate the judicial exception into a practical application or amount to significantly more.
Claim 8 recites the additional element “on a user terminal.” Claim 11 recites the additional element “in the memory.” However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claim 12 recites (additional elements underlined):
A correction proposal system comprising at least one processor, wherein
the at least one processor is configured to perform a process comprising:
storing, in a memory in association with each other, pre-correction information, which is content before correction of an item in a first contract document, and post-correction information that is an item after correction amended from the item before correction; and
providing, based on the post-correction information, correction proposal information regarding a proposed correction to a target item in a second contract document different from the first contract document; and
displaying, for a user, the second contract document and the correction proposal information, wherein the correction proposal information includes position information indicating a position of a party in the first contract document.
For the same reasons explained above with respect to claim 1, claim 12 also recite an abstract idea in Step 2A Prong One (i.e., mental process and certain method of organizing human activity). For the same reasons explained above with respect to claim 1, claim 12 also does not integrate the judicial exception into a practical application or amount to significantly more.
Claims 15-18 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 12 (i.e., certain methods of organizing human activities and/or mental processes).
Claim 15 recites the additional elements “wherein the at least one processor is further configured to” and “on a user terminal.” Claim 17 recites the additional element “wherein the at least one processor is further configured to.” However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claims 16 and 18 do not recite any other additional elements. Therefore, for the same reasons explained above with respect to claim 12, claims 16 and 18 also do not integrate the judicial exception into a practical application or amount to significantly more.
Claim 13 recites (additional elements underlined):
A computer-readable non-transitory storage medium storing a program for implementing a process for a processor to execute the steps of:
storing, in a memory in association with each other, pre-correction information, which is content before correction of an item in a first contract document, and post-correction information that is an item after correction amended from the item before correction; and
providing, based on the post-correction information, correction proposal information regarding a proposed correction to a target item in a second contract document that is different from the first contract document; and
displaying, for a user, the second contract document and the correction proposal information, wherein the correction proposal information includes position information indicating a position of a party in the first contract document.
For the same reasons explained above with respect to claim 1, claim 13 also recite an abstract idea in Step 2A Prong One (i.e., mental process and certain method of organizing human activity). For the same reasons explained above with respect to claim 1, claim 13 also does not integrate the judicial exception into a practical application or amount to significantly more.
Claims 19-21 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 13 (i.e., certain methods of organizing human activities and/or mental processes).
Claim 19 recites the additional elements “wherein the program further causes the processor to execute the steps of” and “on a user terminal.” Claim 21 recites the additional element “wherein the program further causes the processor to executes a step of.” However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claim 20 does not recite any other additional elements. Therefore, for the same reasons explained above with respect to claim 13, claim 20 also does not integrate the judicial exception into a practical application or amount to significantly more.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2, 4, 11-14, 17-18, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Broderick et al. (US 2017/0039176 A1, hereinafter “Broderick”) in view of Maiden (US 2017/0364374 A1, hereinafter “Maiden”).
As per Claim 1, Broderick teaches A correction proposal method, wherein a processor (¶ 3 “The embodiments of the invention relate to a method and system for revising electronic documents, and more particularly, to a method and system for suggesting edits to an electronic document.” ¶ 128 “Embodiments of the invention can be implemented as software application executing on a computer terminal or distributed as a series of instructions recorded on a computer-readable medium such as a CD-ROM. The computer can have memory such as a disk for storage, a processor for performing calculations, a network interface for communications, a keyboard and mouse for input and selection, and a display for viewing. Portions of the invention, such as the seed database, can be implemented on a database server or stored locally on a user’s computer.”):
storing, in a memory, in association with each other, pre-correction information, which is content before correction of an item in a first contract document, and post-correction information that is an item after correction amended from the item before correction (¶ 34 “Embodiments of the invention can further include a “seed database.” A seed database can be derived from one or more “seed documents” which are generally original documents and final documents. In some instances, a seed document can be both an original document and a final document such as documents that include “track changes” that are common with documents created in Microsoft Word. The original text of each seed document can be can be tokenized into one or more tokens. The final text of each seed document can be tokenized into one or more tokens. Each token of original text [i.e., pre-correction information] can be correlated with its respective final text [i.e., post-correction information]. The each original text token and its corresponding final text can be stored in the seed database [i.e., storing pre-correction information and post-correction information in a memory in association with each other]. In some instances, an original text and a final text can be identical, for example when no edits or changes were made. In such instances, the original text and corresponding identical final text can be saved in the seed database.” ¶ 37 “ FIG. 1 is a process flowchart for creating a seed database according to an exemplary embodiment of the invention. As shown in FIG. 1, a creating a seed database includes receiving 110 a seed document, creating 120 an original document and a final document, tokenizing 130 the original document, tokenizing 140 the final document, correlating 150 each original texts with a corresponding and final text, and storing 160 each original text, its corresponding final text, and the correlation in the seed database [i.e., storing pre-correction information and post-correction information in a memory in association with each other].” ¶ 45 “ In step 160, each original text, its corresponding final text, and the correlation can be saved in the seed database. The correlation can be explicit or implied. In an explicit correlation, each original text can be stored with additional information identifying its corresponding final text and vice versa. In an exemplary embodiment, each original text and each final text can be given a unique identifier. An explicit correlation can specify the unique identifier of the corresponding original text or final text. A correlation can also be implied. For example, an original text can be stored in the same data structure or database object as a final text. In this instance, although there is not explicit correlation, the correlation can be implied by the proximity or grouping. The seed database can then be used to suggest revisions to future documents as explained in greater detail in conjunction with FIG. 2.” Also see at least ¶¶ 82, 106, 119, and 127); and
providing, based on the post-correction information, correction proposal information regarding a proposed correction to a target item in a second contract document that is different from the first contract document (¶ 45 “In step 160, each original text, its corresponding final text, and the correlation can be saved in the seed database. The correlation can be explicit or implied. In an explicit correlation, each original text can be stored with additional information identifying its corresponding final text and vice versa. In an exemplary embodiment, each original text and each final text can be given a unique identifier. An explicit correlation can specify the unique identifier of the corresponding original text or final text. A correlation can also be implied. For example, an original text can be stored in the same data structure or database object as a final text. In this instance, although there is not explicit correlation, the correlation can be implied by the proximity or grouping. The seed database can then be used to suggest revisions to future documents as explained in greater detail in conjunction with FIG. 2.” ¶ 81 “In step 250, an ESUA (edited statement under analysis) can be created. The ESUA can be created by applying the same edits from a final text associated with the candidate original text to the SUA [i.e., providing correction proposal information regarding proposal of a correction to a target item in a second contract document different from the first contract document based on the post-correction information]. The process of applying the edits is described in more particularity in conjunction with discussion of alignment in FIG. 3-FIG. 5. After step 250, the process can transition back to step 220 where another SUA is selected. If there are no more SUAs, the process can transition to step 260 wherein the seed database is updated.” Claim 1 “A method for suggesting revisions to a document-under-analysis (“DUA”) from a seed database, the seed database including a plurality of original texts each respectively associated with one of a plurality of final texts, the method for suggesting revisions comprising: tokenizing the DUA into a plurality of statements-under-analysis (“SUAs”); selecting a first SUA of the plurality of SUAs; generating a first similarity score for each of the plurality of the original texts, the similarity score representing a degree of similarity between the first SUA and each of the original texts; selecting a first candidate original text of the plurality of the original texts; and creating an edited SUA (“ESUA”) by modifying a copy of the first SUA consistent with a first candidate final text associated with the first candidate original text.” Also see at least ¶¶ 52-75);
displaying, for a user, the second contract document that the correction proposal information, wherein the correction proposal information includes … in the first contract document (The Examiner notes that the above italicized and underlined limitation is not given patentable weight because it is nonfunctional descriptive material that merely describes what the correction proposal information consists of. However, for the sake of advancing prosecution, see at least ¶¶ 82 and 119. Also see at least ¶¶ 34, 37, 45, 52-75, 81, and Claim 1.).
While Broderick displays the second contract document and the correction proposal information, Broderick does not appear to explicitly display position information indicating a position of a party.
However, Maiden teaches position information indicating a position of a party (The Examiner notes that the above italicized and underlined limitation is not given patentable weight because it is nonfunctional descriptive material that merely describes what the correction proposal information consists of. However, for the sake of advancing prosecution, see at least Figures 5 and 7 which shows a user interface display with correction proposal information that includes position information indicating a position of a party in the first contact document (i.e., Second Party). ¶ 38 “In some embodiments, a system for use by a first party in contract negotiation with a second party comprises: a control circuit; and a contract term playbook database accessible by the control circuit; wherein the control circuit is configured to: receive, from a user of the first party via a user interface, feedback from the second party regarding a contract term of a draft contract, wherein the contract term comprises a position of the first party stated in the draft contract; wherein the feedback indicates less than acceptance of the contract term by the second party, the feedback comprising one or more of a rejection of the contract term, a proposed alteration of the contract term, a proposed alternative to the contract term; access the contract term playbook database using the feedback, wherein the contract term playbook database stores data corresponding to one or more of: a plurality of contracts, a plurality of contract terms, a plurality of possible objections by opposing contracting parties to contract terms, a plurality of response options preapproved by the first party, a plurality of responsive contract term language alterations preapproved by the first party, a plurality of complete contracts including responsive contract term language alterations preapproved by the first party, and a plurality of draft responsive communications to opposing parties preapproved by the first party; output, to the user via the user interface, guidance for response to the second party regarding the contract term and preapproved by the first party, wherein the guidance comprises one or more of: a response option preapproved by the first party, a set of response options preapproved by the first party, a responsive contract term language alteration preapproved by the first party, a complete contract including the responsive contract term language alteration preapproved by the first party, and a draft responsive communication to the second party preapproved by the first party, wherein the response option comprises one or more of: a rejection of the feedback, an acceptance of the feedback, a contract term alteration preapproved by the first party, and a proposed alternative to the contract term preapproved by the first party; and cause one or more of the feedback and the guidance to be stored for logging.” Claim 1 “A system for use by a first party in contract negotiation with a second party, the system comprising: a control circuit; and a contract term playbook database accessible by the control circuit; wherein the control circuit is configured to: receive, from a user of the first party via a user interface, feedback from the second party regarding a contract term of a draft contract; access the contract term playbook database using the feedback; and output, to the user via the user interface, guidance for response to the second party regarding the contract term and preapproved by the first party.” Claim 2 “wherein the contract term comprises a position of the first party stated in the draft contract.”
It would have been obvious to one having ordinary skill in the art before the effective filing date to combine the position information indicating a position of a party as taught by Maiden, into Broderick. One of ordinary skill in the art would have been motivated to do so to identify the parties involved in the creation/modification of a contact, so that a user can quickly identify where the proposed modifications are combining from (e.g., from the user’s own legal team or from the legal team of the second party) (Maiden, Figures 4-7). The claimed invention is also merely a combination of old elements, and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable (KSR Rationale A).
As per Claim 2, Broderick teaches wherein the correction proposal information is based on the post-correction information associated with pre-correction information of an item in the first contract document that has a high degree of relevance to a target item in the second contract document (¶ 17 “To achieve these and other advantages and in accordance with the purpose of embodiments of the invention, as embodied and broadly described, a method and system for suggesting revisions to an electronic document tokenizing a document-under-analysis (“DUA”) into a plurality of statements-under-analysis (“SUAs”), selecting a first SUA of the plurality of SUAs, generating a first similarity score for each of a plurality of the original texts, the similarity score representing a degree of similarity between the first SUA and each of the original texts, selecting a first candidate original text of the plurality of the original texts, and creating an edited SUA (“ESUA”) by modifying a copy of the first SUA consistent with a first candidate final text associated with the first candidate original text.” ¶ 35 “The term “similarity score” means a value (or relative value) that is generated from the comparison of an SUA and an original text. The similarity score can be, for example, an absolute number (e.g. 0.625 or 2044) or a percentage (e.g. 95%). Multiple methods for generating a similarity score are described herein or are otherwise known in the art and any such method or formula can be used to generate a similarity score.” ¶ 50 “In step 230, a similarity score can be generated. The similarity score can represent a degree of similarity between the currently selected SUA and each of the original texts in the seed database.” ¶ 75 “In the above example, all the sentences contained the same nominal subject, verb, and direct object. The invention can classify these sentences based upon the similarity of the nominal subject, verb, and direct object as having a high similarity. The invention then compare the other parts of the SUA to the original text from Original Text 1 and 2 and made corresponding edits to the similar portions of the DUA sentence.” ¶ 80 “In step 240, a candidate original text can be selected. The candidate original text can be the original text having the best similarity score calculated in step 230. As used herein, the term “best” can mean the similarity score indicating the highest degree of similarity. In the alternative, a threshold cut-off can be implemented and a second criteria can be used to perform the selection of step 240. For example, a threshold cut-off can be all similarity scores that exceed a predetermined level such as “similarity scores greater than 0.65”. In another example, a threshold cut-off can be a predetermined number of original texts having the best similarity score such as the “top 3” or the “top 5.” In an exemplary threshold cut-off only scores that exceed the threshold cut-off are considered for selection in step 240. The selection can include selecting the original text having the best similarity score. The section can include choosing the original text having the largest number of similar words to the SUA. The selection can include choosing the original text having the largest identical substring with the SUA. Subsequent selections under step 240 can omit previously selected original texts.” ¶ 81 “In step 250, an ESUA (edited statement under analysis) can be created. The ESUA can be created by applying the same edits from a final text associated with the candidate original text to the SUA. The process of applying the edits is described in more particularity in conjunction with discussion of alignment in FIG. 3-FIG. 5. After step 250, the process can transition back to step 220 where another SUA is selected. If there are no more SUAs, the process can transition to step 260 wherein the seed database is updated.” Claim 1 “A method for suggesting revisions to a document-under-analysis (“DUA”) from a seed database, the seed database including a plurality of original texts each respectively associated with one of a plurality of final texts, the method for suggesting revisions comprising: tokenizing the DUA into a plurality of statements-under-analysis (“SUAs”); selecting a first SUA of the plurality of SUAs; generating a first similarity score for each of the plurality of the original texts, the similarity score representing a degree of similarity between the first SUA and each of the original texts; selecting a first candidate original text of the plurality of the original texts; and creating an edited SUA (“ESUA”) by modifying a copy of the first SUA consistent with a first candidate final text associated with the first candidate original text.” Also see at least ¶¶ 52-75).
As per Claim 4, Broderick teaches wherein the correction proposal information includes the post-correction information (The Examiner notes that the above italicized and underlined limitation is not given patentable weight because it is nonfunctional descriptive material that merely describes what correction proposal information consists of. However, for the sake of advancing prosecution, see at least Abstract, ¶¶ 53-75, and Claim 1. Also see citations above.).
As per Claim 11, Broderick teaches wherein the storing comprises storing, in the memory, correction proposal information in which the pre-correction information is associated with the post-correction information (¶ 34 “Embodiments of the invention can further include a “seed database.” A seed database can be derived from one or more “seed documents” which are generally original documents and final documents. In some instances, a seed document can be both an original document and a final document such as documents that include “track changes” that are common with documents created in Microsoft Word. The original text of each seed document can be can be tokenized into one or more tokens. The final text of each seed document can be tokenized into one or more tokens. Each token of original text can be correlated with its respective final text. The each original text token and its corresponding final text can be stored in the seed database. In some instances, an original text and a final text can be identical, for example when no edits or changes were made. In such instances, the original text and corresponding identical final text can be saved in the seed database.” ¶ 37 “ FIG. 1 is a process flowchart for creating a seed database according to an exemplary embodiment of the invention. As shown in FIG. 1, a creating a seed database includes receiving 110 a seed document, creating 120 an original document and a final document, tokenizing 130 the original document, tokenizing 140 the final document, correlating 150 each original texts with a corresponding and final text, and storing 160 each original text, its corresponding final text, and the correlation in the seed database.” ¶ 45 “ In step 160, each original text, its corresponding final text, and the correlation can be saved in the seed database. The correlation can be explicit or implied. In an explicit correlation, each original text can be stored with additional information identifying its corresponding final text and vice versa. In an exemplary embodiment, each original text and each final text can be given a unique identifier. An explicit correlation can specify the unique identifier of the corresponding original text or final text. A correlation can also be implied. For example, an original text can be stored in the same data structure or database object as a final text. In this instance, although there is not explicit correlation, the correlation can be implied by the proximity or grouping. The seed database can then be used to suggest revisions to future documents as explained in greater detail in conjunction with FIG. 2.” Also see at least ¶¶ 23, 47, 81-83, 106, 118-120, 123, and 127, and claims 13-15).
As per Claims 12-13, they recite substantially similar limitations as claim 1. Therefore, claims 12-13 are rejected using the same rationale.
As per Claim 14, Broderick teaches further comprising:
amending, in response to a user operation, the target item in the second contract document based on the correction proposal information (The Examiner notes that the above italicized and underlined limitations is not given patentable weight because it is nonfunctional descriptive material that is not required to be performed. However, see at least ¶ 82. Also see at least ¶¶ 39, 45, 52-75, 81, 120, and claims 1 and 21).
As per Claims 17 and 21, they recite substantially similar as claim 14. Therefore, claims 17 and 21 are rejected using the same rationale.
As per Claim 18, it recites substantially similar as claim 2. Therefore, claim 18 is rejected using the same rationale.
Claim(s) 6-9, 15-16, and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Broderick in view of Maiden, in further view of Kawato et al. (US 2022/0076363 A1, hereinafter “Kawato”).
As per Claim 6, while Broderick teaches correction proposal information being displayed to a user for approval and confirmation (¶ 82), the combination of Broderick/Maiden do not appear to explicitly teach wherein the correction proposal information further includes comment information given by a user when amending the item before correction.
However, Kawato teaches wherein the correction proposal information further includes comment information given by a user when amending the item before correction (The Examiner notes that the above italicized and underlined limitation is not given patentable weight because it is nonfunctional descriptive material that merely describes what the correction proposal information consists of. However, for the sake of advancing prosecution, see at least ¶¶ 14, 27, 57, 70-71, and Figure 5.).
It would have been obvious to one having ordinary skill in the art before the effective filing date to combine Kawato with the combination of Broderick/Maiden. One of ordinary skill in the art would have been motivated to do so in order to provide a justification for the suggested changes. One of ordinary skill in the art would have been motivated to do so in order to reduce the amount of time required for writing and/or reviewing a contract by answering questions a person may have regarding the proposed changes. The claimed invention is also merely a combination of old elements, and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable (KSR Rationale A).
As per Claim 8, Broderick teaches wherein the correction proposal method further comprises: generating display data for displaying, on a user interface, information indicating the target item and the correction proposal information (The Examiner notes that the above italicized and underlined limitation is not given patentable weight because it is nonfunctional descriptive material that merely describes the display data. However, for the sake of advancing prosecution, see at least ¶ 82 “Although not shown in FIG. 2, an optional step (not shown) can occur before the update the seed database step 260. In the optional step (not shown) the ESUAs can be displayed to a user for approval and confirmation. A user can further edit the ESUAs according to preference or business and legal objectives. The SUA and the ESUA (including any user-entered revisions thereto) can be stored in the seed database in step 260.” ¶ 119 “Although not shown in FIG. 8, it should be appreciated that throughout the process of suggesting edits, various edits and suggestions can be presented to the user for confirmation and further editing prior to finalizing a document. For example, a user interface for a software application implementing the invention can provide a visual indication of all of the edits suggested to a DUA and its SUAs. A user can use such a user interface to further revise the ESUAs or edit unedited SUAs. A user can further select an unedited SUA and manual enter revisions. Revisions entered by a user can be stored in the seed database in step 880.”).
The Examiner notes that Kawato also teaches wherein the correction proposal method further comprises the processor generating display data for displaying information indicating the target item and the correction proposal information on a user terminal (The Examiner notes that the above italicized and underlined limitation is not given patentable weight because it is nonfunctional descriptive material that merely describes what the display data is. However, for the sake of advancing prosecution, see at least in at least Figure 5 and ¶¶ 70-71. Also see ¶¶ 23-28 and Claim 1).
It would have been obvious to one having ordinary skill in the art before the effective filing date to combine Kawato with the combination of Broderick/Maiden. One of ordinary skill in the art would have been motivated to do so in order to track all changes made to documents (Broderick, ¶ 38). One of ordinary skill in the art would have also been motivated to do so in order to ensure that all changes are easily identified. The claimed invention is also merely a combination of old elements, and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable (KSR Rationale A).
As per Claim 9, while Broderick displays the correction proposal information, the combination of Broderick/Maiden do not appear to explicitly teach wherein the display data includes display data for displaying a difference between the information indicating the target item and the correction proposal information in an emphasized manner.
However, Kawato teaches wherein the display data includes display data for displaying a difference between the information indicating the target item and the correction proposal information in an emphasized manner (The Examiner notes that the above italicized and underlined limitation is not given patentable weight because it is nonfunctional descriptive material that merely describes what the display data is. However, for the sake of advancing prosecution, see at least Figure 5. Also see at least ¶¶ 23-28, 70-71, and Claim 1).
It would have been obvious to one having ordinary skill in the art before the effective filing date to combine Kawato with combination of Broderick/Maiden. One of ordinary skill in the art would have been motivated to do so in order to track all changes made to documents (Broderick, ¶ 38). One of ordinary skill in the art would have also been motivated to do so in order to ensure that all changes are easily identified. The claimed invention is also merely a combination of old elements, and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable (KSR Rationale A).
As per Claims 15 and 19, they recite substantially similar as claim 8. Therefore, claims 15 and 19 are rejected using the same rationale.
As per Claims 16 and 20, they recite substantially similar as claim 9. Therefore, claims 16 and 20 are rejected using the same rationale.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Broderick in view of Maiden, in further view of Hegardh (US 2023/0385966 A1, hereinafter “Hegardh”).
As per Claim 7, while Broderick teaches the correction proposal information, the combination of Broderick/Maiden do not appear to explicitly teach wherein the correction proposal information further includes a contract type in the first contract document.
However, Hegardh teaches wherein the correction proposal information further includes a contract type in the first contract document (The Examiner notes that the above italicized and underlined limitation is not given patentable weight because it is nonfunctional descriptive material that merely describes what the correction proposal information consists of. However, for the sake of advancing prosecution, see at least ¶ 18 “The document management system 110 is a computer system (or group of computer systems) for storing and managing documents for the users 130A-B. Using the document management system 110, users 130A-B can collaborate to create, edit, review, store, analyze, manage, and negotiate documents, including the target contract document 120 and historical contract documents 125. The target contract document 120 is a new document that a user (e.g., one of the users 130A-B) seeks to generate. The user and/or document management system 110 designates characteristics of the target contract document 120. For example, the target contract document 120 may be a specific type of contract, such as an employment agreement, purchase agreement, service agreement, financial agreement, master services agreement, intellectual property licensing agreement, and so on. In other embodiments, the target contract document 120 is another type of document, such as a press release or a technical specification. The historical contract documents 125 are past contract documents stored in the document management system 110. These historical contract documents 125 may be specific to the users 130A-B or an entity associated with the document management system 110.” ¶ 31 “FIG. 3 illustrates training and applying a machine learned model 300 configured to rank predictive text suggestions for contract generation, in accordance with an example embodiment. As described with respect to FIG. 2, the document management system 110 receives initial text from a user, input into the target contract document 120. The document management system 110 (e.g., via the text suggestion module 240) identifies a candidate set of text suggestions 305 from the historical contract documents 125. Each of the text suggestions in the candidate set of text suggestions 305 is relevant to the initial text from the user. The machine learned model 300 (e.g., trained by the model generator 220 and stored in the model store 230) takes, as input, the set of candidate text suggestions 305 as well as characteristics 360 of the target contract document 120. The machine learned model 300 ranks the candidate set of text suggestions 305 based on the characteristics 360 of the target contract document 120 and a likelihood that each text portion suggestion will be selected to complete the initial text.” ¶ 37 “FIGS. 4A-B illustrate an interface 400 of the document management system 110 with ranked predictive text suggestions for contract generation, in accordance with an example embodiment. A first portion of the interface 400 shows a target contract document 405, a Master Services Agreement, with initial text from a user. The initial text portion 410 is an incomplete paragraph corresponding to an intellectual property provision of the agreement. The initial text portion 420 is an incomplete sentence corresponding to a choice of law provision of the agreement. A second portion of the interface 400 shows ranked text suggestions 430 and 440. The ranked text suggestions 430 are suggested to complete the paragraph in the initial text portion 410; the ranked text suggestions 440 are suggested to complete the clause in the initial text portion 420. As shown in FIG. 4B, the document management system 110 will modify the interface 400 to include the user's selections of the ranked text suggestions 430 and 440, completing the initial text portions 410 and 420, respectively. In some embodiments, the document management system 110 designates one or more provisions in the target contract document 405 as the initial text portion 450. Accordingly, the document management system 110 presents clause suggestions 460 on the interface 400 based on their relevance to the target contract document 405. The example herein shows that the document management system 110 suggests adding an indemnity clause, force majeure clause, or a severability clause following the initial text portion 450, the choice of law clause, based on the likelihood that the user would select each clause suggestion to follow the initial text portion 450. In some embodiments, the document management system 110 may suggest clauses within a particular clause category (e.g., types of indemnity clauses).” Also see at least Figures 4A-4B which shows a contract type (405) being presented with the correction proposal information.).
It would have been obvious to one having ordinary skill in the art before the effective filing date to combine Hegardh with the combination of Broderick/Maiden. One of ordinary skill in the art would have been motivated to do so for the advantage of providing clause suggestions based on their relevance to the target contract document (Hegardh, ¶ 37). One of ordinary skill in the art would have been motivated to do so in order to save time by automatically suggesting relevant clauses to put into the target contract. The claimed invention is also merely a combination of old elements, and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable (KSR Rationale A).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Broderick in view of Maiden, in view of Hegardh (US 2023/0385966 A1, hereinafter “Hegardh”), in further view of Vagell et al. (US Patent No. 9,372,858 B1, hereinafter “Vagell”).
As per Claim 5, Broderick teaches proposed corrections in the first contract document (¶¶ 45, 81, and Claim 1. Also see at least ¶¶ 52-75).
While Broderick teaches a plurality of correction proposals in the first contract document, the combination of Broderick/Maiden do not appear to explicitly teach wherein the correction proposal information includes a plurality of pieces of correction proposal information, each of the plurality of pieces of correction proposal information is associated with information indicating a predetermined order, and the predetermined order is based at least on ….
However, Hegardh teaches wherein the correction proposal information includes a plurality of pieces of correction proposal information, and each of the plurality of pieces of correction proposal information is associated with information indicating a predetermined order (Figures 4A-4B show a plurality of pieces of correction proposal information being suggested (see 430 and 460) that are associated with a ranking (i.e., information indicating a predetermined order). Also see at least Abstract, ¶¶ 4, 24-25, 28-29, 35, and 37.); and
the predetermined order is based at least on … (Figures 4A-4B. Also see at least Abstract, ¶¶ 4, 24-25, 28-29, 35, and 37.)
It would have been obvious to one having ordinary skill in the art before the effective filing date to combine Hegardh with the combination of Broderick/Maiden. One of ordinary skill in the art would have been motivated to do so for the advantage of identifying the top-ranked text suggestions (Hegardh, ¶ 4) which would enable a person to quickly and efficiently draft contracts (Hegardh, ¶¶ 4 and 17). The claimed invention is also merely a combination of old elements, and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable (KSR Rationale A).
While Hegardh teaches a plurality of pieces of correction proposal information being associated with information indicating a predetermined order, and the use of feedback data from users to improve the predetermined order, the combination of Broderick/Maiden/Hegardh do not appear to explicitly teach the use of status information indicating whether or not the proposed correction has been adopted [when presenting correction proposals].
However, Vagell teaches the use of status information indicating whether or not the proposed correction has been adopted [when presenting correction proposals] (Col. 6 line 55 – Col. 7 line 5. Also see at least Col. 1 lines 44-65 and Figures. 3-5).
It would have been obvious to one having ordinary skill in the art before the effective filing date to combine the above features as taught by Vagell, into the combination of Broderick/Maiden/Hegardh. One of ordinary skill in the art would have been motivated to do so to determine previous user acceptance/rejection patterns, so that a suggestion robot would not present suggestions to a user that the user keeps rejecting (Vagell, Col. 6 line 55 – Col. 7 line 5). One of ordinary skill in the art would have been motivated to do so to determine previous user acceptance/rejection patterns, so that a suggestion robot can use the user acceptance/rejection patterns to improve suggested edits for the user (Vagell, Col. 6 line 55 – Col. 7 line 5). One of ordinary skill in the art would have been motivated to do so to determine previous user acceptance/rejection patterns, so that a suggestion robot can use the user acceptance/rejection patterns to provide consistent suggestions (Vagell, Col. 1 lines 35-40 and Col. 6 lines 20-55). The claimed invention is also merely a combination of old elements, and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable (KSR Rationale A).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Broderick in view of Maiden, in further view of Leung et al. (US 2007/0292031 A1, hereinafter “Leung”).
As per Claim 10, while Broderick provides correction proposal information and enables a user to make further edits to the correction proposal (see at least ¶ 18), the combination of Broderick/Maiden do not appear to explicitly teach wherein the correction proposal method further comprises: swapping pre-correction information and post-correction information stored in association with each other and storing the swapped pre-correction information and post-correction information in association with each other, based on an operation initiated by the user, and the providing the correction proposal information comprises providing correction proposal information based on the swapped post-correction information.
However, Leung teaches wherein the correction proposal method further comprises: swapping pre-correction information and post-correction information stored in association with each other and storing the swapped pre-correction information and post-correction information in association with each other, based on an operation initiated by the user (¶¶ 22-25 and 30-33. Also see Figures 8-12 and Claims 1-2), and
the providing the correction proposal information comprises providing correction proposal information based on the swapped post-correction information (¶¶ 22-25 and 30-33. Also see Figures 8-12 and Claims 1-2).
Leung suggests that it is advantageous to track a user’s corrections to correction proposals (¶ 17).
It would have been obvious to one having ordinary skill in the art before the effective filing date to combine Leung with the combination of Broderick/Maiden. One of ordinary skill in the art would have been motivated to do so in order to reduce the amount of unnecessary correction proposals suggested to the user, which would enable the user to focus on making corrections to text that actually need it. One of ordinary skill in the art would have been motivated to do so in order to increase the speed and accuracy of drafting documents. The claimed invention is also merely a combination of old elements, and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable (KSR Rationale A).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 12, and 13 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed 07/15/2026 have been fully considered but they are not persuasive. In the Remarks, Applicant argues:
Argument: “In particular, the steps recited by independent claims 1, 12, and 13 integrate any such judicially excepted subject matter into a practical application aimed at improving document correction methods, systems, and programs. See Applicant's as-filed specification at [0010]- [0011]. By performing the recited steps, a method, system, or program is able to propose "a suitable correction to a contract document" that otherwise cannot be obtained. Thus, claims 1, 12, and 13 constitute an improvement to the technical field of contract document correction, and therefore are patent eligible under 35 U.S.C. § 101. Prong Two of Step 2A.”
In response, the Examiner respectfully disagrees. Providing corrections to a document is not a technical solution to a technical problem, but a business solution to a business problem. Similar to the claimed invention in SAP America Inc. v. InvestPic. (Fed. Cir. 2018), the claimed invention here is ineligible because the innovation is in ineligible subject matter. The advance here is entirely in the realm of the abstract idea, with no plausibly alleged innovation in the non-abstract application realm.
Additionally, the limitations that describe the abstract idea in Step 2A Prong One can be practically performed in the human mind or by a human using pen and paper. "[O]ur precedent is clear that merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea." (See p 12 of Intellectual Ventures I LLC v. Capital One Financial (Fed. Cir. 2015)).
Argument: “Moreover, independent claims 1, 12, and 13 are amended above to additionally recite "displaying, for a user, the second contract document and the correction proposal information." See, e.g., [0100] of the Applicant's Specification. This feature recites (1) a process that cannot be performed, practically or otherwise, in the human mind and (2) a transformation of the stored information in a manner that is usable by the user. Thus, these features further support the patentability of claims 1, 12, and 13 (as well as dependent claims 2 and 4-11) under 35 U.S.C. § 101. Even further, independent claims 1, 12, and 13 are amended above to recite "the correction proposal information includes position information indicating a position of a party in the first contract document." Support for this feature may be found, for example, at least in paragraph [0031] of the Applicant's original specification. A POSA would understand that such position information helps the user determine if the correction information is relevant. For example, such "position information" may be used to determine a "degree of relevance" of the correction information, which "enables the user to grasp the position or the contract type in the first contract document corresponding to the correction proposal information and then amend the target item." Applicant's original specification, paragraphs [0072] and [0081].”
In response, the Examiner respectfully disagrees. As explained above, the limitations that describe or set for the abstract idea in Step 2A Prong One can be practically performed in the human mind or by a human using pen and paper. A human can view a document and make correction proposals, mentally and/or with the use of pen and paper, based on previous corrections made to other documents. Additionally, the limitations outlined above also describe or set forth commercial or legal interaction (e.g., agreements in the form of contacts, legal obligations, business relations, etc.) with falls within the certain method of organizing human activity enumerated grouping of abstract ideas. Therefore, the claims recite an abstract idea in Step 2 Prong One.
Argument: “Moreover, Applicant respectfully submits that the Office Action's understanding of
nonfunctional descriptive material is incorrect, particularly as it relates to computer systems and machine-readable mediums. Traditionally, this guideline is used to avoid ascribing patentable weight to, for example, "products with printed matter thereon," where such "printed matter" provides no new and nonobvious functional or structural relationship to the underlying substrate or apparatus. See MPEP § 2111.05. For example, it would be improper to grant a patent for printing labels or instructions on an otherwise known device or apparatus. Id. However, in the case of computer systems and computer readable media, because the patentable subject matter very often relates to the information contained on the computer system, the inquiry instead focuses on whether the computer system or medium "merely serves as a support for information or data." MPEP § 2111.05(III). Where this is the case (e.g., "a memory stick containing tables of batting averages, or tracks of recorded music"), the computer system or medium is regarded as being only a "support for the information," and thus the support (e.g., the memory stick) cannot render the claim patentable. Id. That is not the case here, where it is the information (e.g., position information included in the correction proposal information, for exemplary support, see at least paragraph [0031] of Applicant's specification) that is recited.”
In response, the Examiner respectfully disagrees. First, nonfunctional descriptive material can be found in method, system, and computer readable medium claims. “The rationale behind the printed matter cases, in which, for example, written instructions are added to a known product, has been extended to method claims in which an instructional limitation is added to a method known in the art. Similar to the inquiry for products with printed matter thereon, in such method cases the relevant inquiry is whether a new and nonobvious functional relationship with the known method exists” (MPEP 2111.05).
Second, the position information serves no purpose other than to label information. “To be given patentable weight, the printed matter and associated product must be in a functional relationship. A functional relationship can be found where the printed matter performs some function with respect to the product to which it is associated” (MPEP 2111.05(I)(A)). Here, the position information performs no function and is merely displayed to a user. Therefore, the limitation “wherein the correction proposal information includes position information indicating a position of a party in the first contract document” is not given patentable weight.
Argument: “regarding claim 10, Leung relates to recognition of handwriting and the use of past corrections (see, e.g., Leung, [0022]-[0025]). However, Leung does not disclose, suggest, or otherwise render obvious "swapping pre-correction information and post-correction information" "based on an operation initiated by the user," as recited in claim 10.”
In response, the Examiner respectfully disagrees. At least Figure 11 of Leung teaches the swapping of pre-correction information and post-correction information based on an operation initiated by the user.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Martin et al. (US 2011/0055206 A1) discloses a system for processing a corpus of documents, such as legal contracts or agreements, in order to suggests alternative phrases and clauses.
THIS ACTION IS MADE FINAL. 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.
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/SAM REFAI/Primary Examiner, Art Unit 3621
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