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 .
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.
Claim 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claims 1-16 claim Graphic User Interface (GUI) without any underlying hardware (processor/device), memory. The claims are non-transitory software per se.
Claims 1-13 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.
Step 1, This part of the eligibility analysis evaluates whether the claim falls within any statutory category. See MPEP 2106.03. The independent claims 1 and 16 recite a graphical user interface without any underlying hardware (processor/device), memory. Thus, the claim is not one of the statutory categories of invention. (Step 1: No).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “the sections analysis interface”, “the reference chart builder interface”, “the document creator interface”, “the data room interface” in claim 1 and 16
The “selection analysis interface” is disclosed in [0078], [0079], [0080], [0081], and [0082].
The “the data room interface” is disclosed in [0078], [0098], and [0099]
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The specification does not include the specific interface “the reference chart builder interface.” The specification has different interfaces such as “reference chart builder” and “cross-reference chart builder”
The specification does not include the specific interface “the document creator interface” The specification has a different interface such as “term sheet creator”
Claims 13-15 is rejected under 35 U.S.C. 112(b) because the wording is confusing. The exact scope of the invention is not clear. Independent claim 1 introduces five elements, which are a "document creator option," a "document creator interface," a "document builder window," a "document window," and a "document." Dependent Claim 13, however, tries to swap and replace those five terms with five new terms, which are a "term sheet creator option," a "term sheet creator interface," a "term sheet builder window," a "term sheet window," and a "term sheet," respectively. This creates a problem because a dependent claim cannot swap or replace elements from an independent claim. Because the words change, the examiner cannot tell what the patent covers. It is not clear which set of words defines the real invention. Therefore, the public cannot know the real boundary of the patent. Claims 14 and 15 depend on Claim 13, so they also use this same confusing wording. For this reason, the boundaries of Claims 14 and 15 are also unclear.
Claim 1 and 16 recite the limitation "the list of agreement selections". There is insufficient antecedent basis for this limitation in the claim.
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Claim 1 and 16 include the phrase “… a user option to compare sections…” It is unclear the term “sections” refers to “the list of sections” or a completely new group of sections.
Dependent claims fail to cure deficiencies. Dependent claims are rejected for the same reasons.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure
U.S. Pub 2009/0281853 – Misvaer discloses a legal instrument management system facilitates the storage and management of documents including contracts or other legal instruments. The system facilitates the review of stored documents as well as the creation of new documents. The system also provides searching capabilities to quickly identify documents that match a search query. Contract models can be structured to define how data is organized and to normalize the description of contract terms in the system
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U.S. Pub 2010/0241947 – Dahn discloses systems and techniques are disclosed that allow a user to enter a query in a query input region of a graphical user interface and respond to the query by automatically directing it to an appropriate database, saving a user from having to choose among the myriad databases within the system. The system provides shareable folders for not only selected documents or excerpts from documents, but also for annotations and markups associated with documents. The system also enables a user to set permissions as to whether to allow documents, as well annotations and markups, private or publicly available to other users. Further, the system allows a user to specify an action that is to occur once a particular event occurs affecting a document, annotation or markup.
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U.S. Pub 2019/0266196 – Boyce discloses a system has a computing processor for determining first document selection score for first candidate document based on first set of document section ranking scores and second document selection score for second candidate document based on second set of document section ranking scores. The computing processor selects a set of candidate documents based on the first document selection score and the second document selection score. The computing processor generates information to present the set of the candidate documents.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAU HAI HOANG whose telephone number is (571)270-5894. The examiner can normally be reached 1st biwk: Mon-Thurs 7:00 AM-5:00 PM; 2nd biwk: Mon-Thurs: 7:00 am-5:00pm, Fri: 7:00 am - 4:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boris Gorney can be reached at 571-270-5626. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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HAU HAI. HOANG
Primary Examiner
Art Unit 2154
/HAU H HOANG/Primary Examiner, Art Unit 2154
Prosecution Insights