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 .
Status of Claims
This action is in reply to the application filed on June 24, 2025.
Claims 1, 3, 4, 6, 8, and 9 were preliminarily amended, also on June 24, 2025.
Claims 1-9 are currently pending and have been examined.
Information Disclosure Statement
The Information Disclosure Statement filed on August 1, 2025 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-9 are rejected on the ground of non-statutory double patenting as being unpatentable over at least claims 1-9 of U.S. Patent No. 12,361,433, claims 1 and 6-8 of U.S. Patent No. 11,341,507, and claims 1-4 and 11-15 of U.S. Patent No. 11,798,007. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue in this instant application are broader than those in the issued patent. Looking at independent Claims 1 and 6 in the instant application, these claims recite the same limitations of Claim 1 of each of the issued ‘433, ‘507, and ‘007 patents, but the instant application is broader than all three of these allowed patents because it fails to recite several features of the allowed patents. There are no features (i.e., additional language) in the independent claims in the instant application that could distinguish it from the issued patent. Thus, the issued patent would anticipate the claims in this instant application. See MPEP § 804(II)(B)(2) citing, e.g., In re Goodman. Thus, the claims in the instant application are broader than those that were issued in the ‘433, ‘507, and ‘007 patents. In such situations, it is per se obvious to claim a broader invention. Therefore, the claims are rejected under non-statutory double patenting based on the principle of unjustified timewise extension of patent rights. See id.
Claim Rejections - 35 USC § 112(b)
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.
Claims 2, 4, 7, and 9 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 pre-AIA the applicant regards as the invention. Specifically, each of these claims recites the term “the indicated trusted electronic document,” which is a term that lacks proper antecedent basis each time it is recited. There was an antecedent basis in the original independent Claims 1 and 6, but that antecedent basis has been deleted. Thus, it is not clear or particularly pointed out whether Applicant intended the original antecedent to have been retained in the claims, otherwise added to the amended Claims 1 and 6, or whether each instance of “the indicated trusted electronic document” is meant to refer to some other term not otherwise provided. Because Claims 2, 4, 7, and 9 are not particularly pointed out or distinctly claimed, they must be rejected under § 112(b).
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 1-9 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. When considering subject matter eligibility under 35 U.S.C. § 101, there are multiple steps that may need to be assessed. First, in step 1 it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined in step 2A prong 1 whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). If the claim is directed toward a judicial exception, it must then be determined in step 2A prong 2 whether the judicial exception is integrated into a practical application. Finally, if the judicial exception is not integrated into a practical application, it must additionally be determined in step 2B whether the claim recites “significantly more” than the abstract idea. See “2019 Revised Patent Subject Matter Eligibility Guidance,” 84 Fed. Reg. (4): 50-57 (Jan. 7, 2019).
In the instant case, Claims 1-5 are directed toward a method, i.e., process, and Claims 6-9 are directed toward a system, i.e., apparatus. Thus, each of the claims falls within one of the four statutory categories as required by step 1. Nevertheless, the claims are directed toward the judicial exception of an abstract idea in step 2A prong 1. Independent Claim 1 recites as follows:
Claim 1. A method for providing a document provisioning service, the method comprising:
electronically maintaining, in a member database, data regarding trusted electronic document originators;
electronically maintaining, in a trusted electronic compliance document database, on behalf of the trusted electronic document originators a plurality of trusted electronic documents that include information associated with parties to transactions and potential transactions; and
electronically facilitating creation of at least some of the plurality of trusted electronic documents by at least some trusted electronic document originators, wherein a given trusted electronic document references information regarding one or more parties to a potential transaction and confers at least partial eligibility to participate in the potential transaction for at least one of the one or more parties only after the at least one of the one or more parties provides the information referenced by the trusted electronic document and the trusted electronic document is modified to include the provided information.
The bold language above corresponds to the abstract ideas recited in Claim 1 (whereas the underlined language is language that is addressed in step 2A prong 2 and step 2B). As the bold language above demonstrates, Applicant’s claims are directed toward the process of entering into a contract or transaction and documenting that process. This is a method of organizing human activity, specifically one involving commercial and legal interactions. See MPEP § 2106.04(a)(2)(II)(B). Because the instant invention is facilitating the legal, contractual documentation of a commercial transaction, the claims are directed toward certain methods of organizing human activities.
Finding the claims to be directed toward an abstract idea, however, is not the end of the inquiry. Rather, the next step is to determine whether the judicial exception is integrated into a practical application (step 2A prong 2). The revised guidance provides exemplary considerations that are indicative that an additional element or combination of elements may have integrated the exception into a practical application: 1) an additional element reflecting an improvement in the functioning of a computer or an improvement to another technology or technical field, 2) an additional element that implements the judicial exception with a particular machine or manufacture that is integral to the claim, 3) an additional element that effects a transformation or reduction of a particular article to a different state or thing, or 4) an additional element that 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 claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP § 2106.04(d). Examples where a judicial exception has not been integrated into a practical application include: 1) use of “apply it” or the equivalent, i.e., merely using a computer to implement or perform an abstract idea, 2) an additional element that adds insignificant extra-solution activity to the judicial exception, and 3) an additional element that does no more than generally link the use of the judicial exception to a particular technological environment or field of use. See id.
Applying these considerations to the claims in the instant application, the claims do not integrate the judicial exception into a practical application. The claims fail to recite an improvement of a computer, any improvement to a technology or technical field, any particular machine, any transformation or reduction of a particular article to a different state or thing, or any additional element that uses the judicial exception in a meaningful way. Instead, the claims are merely reciting instructions to implement the abstract idea on a computer (i.e., “electronically … in a … database;” “electronic documents”), which is insufficient to provide a practical application of the claims and provide subject matter eligibility. See id. Therefore, there is no integration of the abstract idea into a practical application.
If the claims are not integrated into a judicial exception, the Examiner must consider whether there is “significantly more” recited in the claim in step 2B. See MPEP § 2106.05. There is nothing unconventional or inventive in Applicant’s claims for the purpose of analysis under step 2B, e.g., any combination of elements that provide an advance over any technological state of the art. Rather, as noted above, an abstract commercial and legal interaction is merely implemented by a general-purpose computer. Other than the limitations that are abstract for the reasons articulated above, Applicant has merely recited a generic computer that facilitates the steps of the invention. Thus, Applicant’s claims merely recite a computer to implement the abstract idea, which fails to provide “significantly more” than the abstract idea.
As the MPEP states, Examiners may consider the following three factors when determining whether the claim recites mere instructions to implement an abstract idea on a computer: 1) whether the claim recites only the idea of a solution or outcome, i.e., the claim fails to recite details of how a solution to a problem is accomplished; 2) whether the claim invokes computers or other machinery merely as a tool to perform an existing process; and 3) the particularity or generality of the application of the judicial exception. See MPEP § 2106.05(f). Applying those factors to the instant application: 1) the claims do not recite how the computer performs any of the steps other than just stating that they do it; 2) the claims invoke the computer to perform a process of documenting transactions that has been performed without computers and before the ubiquity of computers; and 3) the claims are general and not recited in much particularity because it can apply to any way of entering into the contract.
The dependent claims 2-5 and 7-9 are merely reciting further embellishments of the abstract idea and do not amount to anything that is significantly more than the abstract idea itself. Claims 2-5 and 7-9 relate to further embellishments regarding the commercial and legal interactions. Claims 2, 5, 7, and 9 recite what kind of document memorializes the transaction. For example, Claims 2 and 7 note the different potential types of documents and Claims 5 and 9 recite that the document relates to an exemption for one of the parties. Claims 3 and 8 recite how a user request is received, i.e., that a software application executes on a computer to perform the request. Because the claims recite a general-purpose computer running typical input/output of a general-purpose computer, these claims are merely reciting the use of a computer merely as a tool to perform the abstract commercial and legal interactions of the claims. See MPEP § 2106.05(f). Claims 4 and 8 relate determining whether certain parts of the document have been completed and, if so, forwarding the document to entities associated with the transaction. Because the claims recite a general-purpose computer running typical input/output of a general-purpose computer, these claims are merely reciting the use of a computer merely as a tool to perform the abstract commercial and legal interactions of the claims. See MPEP § 2106.05(f).
In other words, none of the dependent claims recite an improvement to a technology or technical field or provide any meaningful limitations that, in an ordered combination provide “significantly more” or providing any integration into a practical application. Rather, the dependent claims are merely further reciting features that are just as abstract as independent Claims 1 and 6. Therefore, Claims 1-9 are directed to non-statutory subject matter and are rejected as ineligible subject matter under 35 U.S.C. § 101.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 non-obviousness.
Claims 1-4 and 6-9 are rejected under 35 U.S.C. § 103 as being unpatentable over Thomas (US 6,873,992 B1) in view of Hahn-Carlson et al. (US 2003/0233286 A1, hereinafter “Hahn-Carlson”).
Claim 1. Thomas teaches: A method for providing a document provisioning service, the method comprising:
electronically maintaining, in a member database, data regarding trusted electronic document originators (see column 9 lines 1-23 teaching that the application program is a database program; see also column 11 lines 41-51 teaching retrieving a template from an electronic storage location; see further Figure 1B feature 156 and Figure 2 feature 204);
electronically maintaining, in a trusted electronic compliance document database, on behalf of the trusted electronic document originators a plurality of trusted electronic documents that include information associated with parties to transactions and potential transactions (see Figure 1B feature 156 teaching “document template storage” as well as column 4 line 44 to column 5 line 4); and
electronically facilitating creation of at least some of the plurality of trusted electronic documents by at least some trusted electronic document originators, wherein a given trusted electronic document references information regarding one or more parties to a potential transaction and confers at least partial eligibility to participate in the potential transaction for at least one of the one or more parties only after the at least one of the one or more parties provides the information referenced by the trusted electronic document and the trusted electronic document is modified to include the provided information (see Figure 2 feature 202 and column 5 lines 11-40 teaching the requester selecting a legal document template over a computer portal, i.e., the “document requestor’s machine 104” as taught in column 5 lines 5-10, noting that column 4 lines 17-43 teach that the machine 104 is a computer (portal) connected to a document server 102 (member database component/trusted electronic compliance document database) via the Internet 106 (communicative coupling) to create the document as explained in Figures 2 and 3; regarding that the electronic document references information regarding one or more parties to a potential transaction, see Figures 7A, 7B, and 8 as well as column 11 line 1 to column 9 line 23 noting the context of negotiation between a first and second party; see further Figures 9-11B and column 9 line 24 to column 15 line 20; regarding partial eligibility to participate in the potential transaction for one or more parties, see column 15 lines 2-4 teaching protecting the communications such as through password requirements or encryption schemes; see also Figure 7A feature 712 and column 11 lines 1-15 teaching that one party can access the system over a private network).
Examiner notes that to the extent that Thomas fails to teach that the document itself confers at least partial eligibility to participate in the potential transaction for one of the parties, which Examiner does not concede, Examiner nevertheless provides Hahn-Carlson for this feature. Specifically, Hahn-Carlson teaches that particular contracts authorize the buyer to view and approve selected contracts (see Figure 3A feature 340; see also ¶s 58-60, noting in particular that ¶ 58 teaches that when the seller defines the type of contract that are available to certain buyers if they meet the seller-defined criteria), which then can create a set of contract modification and negotiation steps between the buyer and seller (see Figure 3A features 350, 360, 362, 366, and 368; see also ¶s 61-63).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the known technique of the contract document providing eligibility to participate in the potential transaction (as disclosed by Hahn-Carlson) to the known method and system of creating contracts from templates (as disclosed by Thomas). One of ordinary skill in the art would have been motivated to apply the known technique of the contract document providing eligibility to participate in the potential transaction because that way the buyer party would view only those contracts for which it had the operational right or authorization level to do so (see Hahn-Carlson ¶ 60).
Furthermore, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the known technique of the contract document providing eligibility to participate in the potential transaction (as disclosed by Hahn-Carlson) to the known method and system of creating contracts from templates (as disclosed by Thomas), because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known technique of the contract document providing eligibility to participate in the potential transaction to the known method and system of creating contracts from templates, because it is predictable that a contract can be limited to who can view it in a method of contract negotiation). See also MPEP § 2143(I)(D).
Regarding Claim 6, this claim recites the same features as Claim 1 though it is written as a system claim with one or more processors and at least one memory with instructions that when executed cause the system to perform the same steps as Claim 1. Thomas teaches such a computer system that performs the steps of its invention (see at least column 1 lines 65-67, column 2 line 63 to column 3 line 8, and column 15 lines 21-31). The rejection of Claim 1 above is incorporated herein relying on the combination of Thomas and Hahn-Carlson to render the claim obvious. With this additional teaching from Thomas, that combination renders Claim 6 obvious as well. Similarly coextensive dependent claims will be treated together as well for the sake of brevity.
Claims 2 and 7. The combination of Thomas and Hahn-Carlson teaches the limitations of Claims 1 and 6. Thomas further teaches: The method of claim 1, wherein the indicated trusted electronic document is one of a group that includes a tax exemption certificate, a tax withholding form, an excise license, a business license, and a certificate of insurance (see, e.g., column 10 lines 9-13).
Claims 3 and 8. The combination of Thomas and Hahn-Carlson teaches the limitations of Claims 1 and 6. Thomas further teaches: The method of claim 1, wherein a user request is received by a trusted electronic document request manager via a software application executing on a client computing device of a user associated with the user request (see column 15 lines 21-31 teaching that the invention can operate as a computer readable medium on a data storage device; see also, e.g., Figure 12 feature 1208 and column 9 lines 1-23 and lines 50-65 teaching a macro file executed by a word processing application operating on a web server or a coupled machine).
Claims 4 and 9. The combination of Thomas and Hahn-Carlson teaches the limitations of Claims 1 and 6. Thomas further teaches: The method of claim 1, further comprising providing access to the indicated trusted electronic document, which includes determining whether a modified copy of the indicated trusted electronic document is completed and, when it is determined that the modified copy of the indicated trusted electronic document is completed, forwarding the modified copy of the indicated trusted electronic document to one or more entities associated with the potential transaction (see column 14 lines 17-33; see also column 6 lines 20-38 and column 9 lines 60-65 as well as Figure 3 feature 312 teaching that once the document is created and completed it is forwarded to the requester’s machine).
Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over Thomas in view of Hahn-Carlson and further in view of Biesemann et al. (US 2010/0082497 A1, hereinafter “Biesemann”).
Claim 5. The combination of Thomas and Hahn-Carlson teaches the limitations of Claim 1. Thomas and Hahn-Carlson fail to teach, however, Biesemann teaches: The method of claim 1, in which the trusted electronic document is a certificate and the eligibility that the trusted electronic document confers is eligibility for the at least one or more parties to be exempt from one or more items regarding the potential transaction (see, e.g., ¶ 51 teaching that a business partner data management process component 101 contains information used to describe the rights and obligations of a business partner, including “a Company Tax Exemption Certificate master data object 141” and a “Customer Tax Exemption Certificate 157;” see further ¶ 52 further elaborating on the certificate exemptions). Biesemann is analogous to the instant application, Thomas, and Hahn-Carlson because it relates to automating contracts for enterprises (see, e.g., Biesemann ¶s 60 and 76).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the known technique of providing specific certificates noting eligibility for a party to be exempt from an item in a transaction, such as taxes (as disclosed by Biesemann) in the known method and system of facilitating document creation (as disclosed by Thomas and Hahn-Carlson). One of ordinary skill in the art would have been motivated to apply the known technique of providing specific certificates noting eligibility for a party to be exempt from an item in a transaction, such as taxes so that the company has the appropriate trust and knowledge that the company or customer is exempt from tax on sales or purchases (see Biesemann ¶ 52).
Furthermore, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the known technique of providing specific certificates noting eligibility for a party to be exempt from an item in a transaction, such as taxes (as disclosed by Biesemann) in the known method and system of facilitating document creation (as disclosed by Thomas and Hahn-Carlson), because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known technique of providing specific certificates noting eligibility for a party to be exempt from an item in a transaction, such as taxes in the known method and system of facilitating document creation, because predictably the tax exemption certificate works as an additional data input into a contract generator). See also MPEP § 2143(I)(D).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure: McCrea US 2011/0125622 A1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAN P MINCARELLI whose telephone number is (571)270-5909. The examiner can normally be reached Monday through Friday, 8:00 AM to 4:30 PM Eastern Time.
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/JAN P MINCARELLI/ Primary Examiner, Art Unit 3626
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