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 July 23, 2025, examining claims as preliminarily amended on September 12, 2025.
Claims 1-20 were canceled in the preliminary amendments, and Claims 21-40 were added in those preliminary amendments.
Claims 21-40 are currently pending and have been examined.
Information Disclosure Statement
The Information Disclosure Statements filed on August 22, 2025 and December 12, 2025 have been considered. Initialed copies of the Form 1449s are enclosed herewith.
Claim Objections
Claims 31-40 are objected to because of the following informality: both independent Claims 31 and 40 recite “receiving, at a invoice generation server, unstructured data…” rather than –receiving, at an invoice generation server, unstructured data—. Because Claims 32-39 depend upon Claim 31, they are also objected to. Appropriate correction is required.
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 21-40 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 21-30 are directed toward a method, i.e., process, and Claims 31-40 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 21 recites as follows:
Claim 21. A computing device implemented method comprising:
receiving, at an invoice generation server, unstructured data comprising a messaging schedule indicative of a timing of a sequence of automated messages to be transmitted from a computational device of a provider to a computational device of a recipient, each automated message comprising a corresponding invoice document;
generating, by a large language model configured to generate output data in a standardized format, a first invoice document, wherein the large language model processes the unstructured data and additional context data, the first invoice document comprising data associated with a first message of the messaging schedule;
receiving, at the invoice generation server, data representative of a review of the first invoice document, the data representative of the review comprising a modified first invoice document;
in response to receiving the data representative of the review and the modified first invoice document, updating the additional context data; and
initiating a first message comprising the modified first invoice document from the computational device of the provider to the computational device of the recipient.
The bold language above corresponds to the abstract ideas recited in Claim 21 (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 generating and sending invoices. This is a method of organizing human activity, specifically commercial and legal interactions. See MPEP § 2106.04(a)(2)(II)(B). Because the instant invention is aiding parties to a contract in the collection of payments due, the invention is reciting commercial and legal interactions, which are a certain method of organizing human activities that are abstract.
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., “an invoice generation server;” “a computational device of a provider;” “a computational device of a recipient;” “by a large language model”), 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. The limitation of a large language model is merely a field of use of the invention. See MPEP § 2106.05(h).
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 and in the field or use or technological environment of a large language model. 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 contract generation and negotiation that has been performed without computers and before the ubiquity of computers; and 3) the claims are generic in nature and not recited in much particularity because they can apply to any way of modifying and forming the contracts.
The dependent claims 22-30 and 32-39 are merely reciting further embellishments of the abstract idea and do not amount to anything that is significantly more than the abstract idea itself. Specifically, the claims merely recite further limitations to the data used to generate or store invoice data. 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 21, 31, and 40. Therefore, Claims 21-40 are directed to non-statutory subject matter and are rejected as ineligible subject matter under 35 U.S.C. § 101.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. §§ 102 and 103 (or as subject to pre-AIA 35 U.S.C. §§ 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 21-26, 30-36, and 40 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Horadan et al. (US 2025/0307781 A1, hereinafter “Horadan”).
Claim 21. Horadan teaches: A computing device implemented method comprising:
receiving, at an invoice generation server, unstructured data comprising a messaging schedule indicative of a timing of a sequence of automated messages to be transmitted from a computational device of a provider to a computational device of a recipient, each automated message comprising a corresponding invoice document (see, e.g., ¶s 41, 53, 64, 80, 89-94, and 108-109 teaching that the invention pertains to automation of emails pertaining to, among other things, invoices; see further, e.g., ¶s 85, 90, and 92 teaching that at least some of the received and analyzed data include plain text data from the email, which are unstructured data);
generating, by a large language model configured to generate output data in a standardized format, a first invoice document, wherein the large language model processes the unstructured data and additional context data, the first invoice document comprising data associated with a first message of the messaging schedule (see, e.g., ¶s 65 and 86 teaching large language models to perform the processes of the invention including performing entity mapping of works in the emails);
receiving, at the invoice generation server, data representative of a review of the first invoice document, the data representative of the review comprising a modified first invoice document (see, e.g., at least ¶ 93 teaching receiving a draft proposed email invoice query);
in response to receiving the data representative of the review and the modified first invoice document, updating the additional context data (see, e.g., ¶ 106 teaching updating the transaction record with the new information); and
initiating a first message comprising the modified first invoice document from the computational device of the provider to the computational device of the recipient (see, e.g., at least ¶ 93 teaching sending the invoice query to the customer organizational entity).
Regarding Claims 31 and 40, these claims recite a system with a processor and a memory storing instructions executed by the processor and a non-transitory computer readable medium that when executed by the processor perform the method recited in Claim 21. Because Horadan teaches a computer with processor and memory (see at least ¶s 69-70) and a non-transitory computer readable medium (see at least ¶s 69-70), these additional teachings, along with the rejection of Claim 1 above, serve to anticipate Claims 31 and 40 as well as Claim 21. Additional coextensive dependent claims will be grouped together below for the sake of brevity.
Claims 22 and 32. Horadan teaches the limitations of Claims 21 and 31. Horadan further teaches: The computing device implemented method of claim 21, further comprising, in response to receiving data representative of the review and the modified first invoice document, updating one or more parameters of the large language model (see, e.g., ¶ 106 teaching updating the transaction record with the new information).
Claims 23 and 33. Horadan teaches the limitations of Claims 21 and 31. Horadan further teaches: The computing device implemented method of claim 21, further comprising storing a record of interactions between the provider and the recipient in a database accessible to the invoice generation server (see, e.g., ¶s 89-90 teaching storing the interactions in a database that is used to generate the invoices; see further ¶s 6-7 teaching storing all of the interactions in the enterprise resource planning system).
Claims 24 and 34. Horadan teaches the limitations of Claims 23 and 33. Horadan further teaches: The computing device implemented method of claim 23, further comprising, upon storing a record of messages between the provider and the recipient, further updating the additional context data to include context present in the record of messages (see, e.g., ¶s 9-11, 61, 63-67, 70, 86, 90, and 92 teaching processing and updating context data from the electronic messaging).
Claims 25 and 35. Horadan teaches the limitations of Claims 21 and 31. Horadan further teaches: The computing device implemented method of claim 21, further comprising:
initiating a first message between the invoice generation server and the computational device of the provider and/or recipient to determine updated values of data identified to be different from corresponding data present in the additional context data (see, e.g., ¶ 106 teaching initiating the augmentation/updating of the contextual data);
further updating the additional context data based on the updated values of the identified data (see, e.g., ¶ 106 teaching initiating the augmentation/updating of the contextual data).
Claims 26 and 36. Horadan teaches the limitations of Claims 21 and 31. Horadan further teaches: The computing device implemented method of claim 21, further comprising initiating a message to the recipient, by the invoice generation server, on behalf of the provider in relation to an execution of a transaction corresponding to the first invoice document (see, e.g., at least ¶ 93 teaching sending the invoice query to the customer organizational entity).
Claim 30. Horadan teaches the limitations of Claim 21. Horadan further teaches: The computing device implemented method of claim 21, wherein the standardized format comprises one or more standardized data fields, the one or more standardized data fields comprising a due date (see, e.g., ¶s 53 and 108-109 teaching that a date of the invoice transaction is one of the standardized data fields).
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 nonobviousness.
Claims 27-29 and 37-39 are rejected under 35 U.S.C. § 103 as being unpatentable over Horadan in view of Gomez (US 2025/0165648 A1).
Claims 27 and 37. Horadan teaches the limitations of Claims 26 and 36. Horadan fails to teach, however, analogous reference Gomez teaches: The computing device implemented method of claim 26, further comprising initiating a sequence of dunning messages from the invoice generation server to the computational device of the recipient on behalf of the provider in response to an absence of the execution (see, e.g., Figures 18-22 and ¶s 146-150 teaching using a large language model to perform the drafting of a dunning letter using a mix of anonymized templates/prompts combined with specific data for a specific invoice to draft the dunning message). Gomez is similar to Horadan and the instant application because it relates to using large language models to generate and monitor whether invoices have been paid and, if not, generate further invoices or dunning messages (see, e.g., Gomez ¶ 146).
Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique of using the LLM to generate a dunning message (as disclosed by Gomez) to the known method and system of generating a sequence of emailed invoices (as disclosed by Horadan). One of ordinary skill in the art would have been motivated to apply the known technique of using the LLM to generate a dunning message because it would automatically generate the necessary follow up to the unpaid invoice.
Furthermore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique of using the LLM to generate a dunning message (as disclosed by Gomez) to the known method and system of generating a sequence of emailed invoices (as disclosed by Horadan), 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 using the LLM to generate a dunning message to the known method and system of generating a sequence of emailed invoices, because predictably a specific “dunning message,” as in Gomez, operates precisely like an email message with an invoice as in Horadan). See also MPEP § 2143(I)(D).
Claims 28 and 38. The combination of Horadan and Gomez teaches the limitations of Claims 27 and 37. Gomez further teaches: The computing device implemented method of claim 27, wherein each message of the sequence of dunning messages is characterized by one or more modified attributes, the attributes including tone, text, and timing (see, e.g., Figures 18-22 and ¶s 146-150 teaching using a large language model to perform the drafting of a dunning letter using a mix of anonymized templates/prompts combined with specific data for a specific invoice to draft the dunning message, where the dunning message attributes include text, e.g., the penalty and the amount of the late payment, as well as timing, e.g., the difference in timing between the payment deadline and the current date). The rationale for modifying Horadan in view of Gomez was provided in the rejection of Claims 27 and 37, above.
Claims 29 and 39. The combination of Horadan and Gomez teaches the limitations of Claims 28 and 38. Gomez further teaches: The computing device implemented method of claim 28, wherein each subsequent dunning message of the sequence of dunning messages is characterized by a different attribute, the attributes including tone, text, and timing (see, e.g., Figures 18-22 and ¶s 146-150 teaching using a large language model to perform the drafting of a dunning letter using a mix of anonymized templates/prompts combined with specific data for a specific invoice to draft the dunning message, where the dunning message attributes include text, e.g., the penalty and the amount of the late payment, as well as timing, e.g., the difference in timing between the payment deadline and the current date, noting that each different invoice would have different timing and text).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure: Buxton et al., US 10,979,315 B1.
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 on Monday through Friday, 8:00 AM to 4:30 PM Eastern Time.
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, Nathan C. Uber can be reached at (571)270-3923. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JAN P MINCARELLI/Primary Examiner, Art Unit 3627
Prosecution Insights