International Business Machines Corporation

Patent Trials and Appeals Board

Dec 16, 2020

2019002566 (P.T.A.B. Dec. 16, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/336,908 10/28/2016 Romelia H. Flores END920160491US1 4312
11445 7590 12/16/2020
IBM Corporation - Endicott Drafting Center
1701 North Street
Building 256-3
Endicott, NY 13760
EXAMINER
WEISENFELD, ARYAN E
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/16/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROMELIA H. FLORES, CHRISTIAN E. LOZA, and OLIVIA G.
LOZA
Appeal 2019-002566
Application 15/336,908
Technology Center 3600
Before MIRIAM L. QUINN, DAVID J. CUTITTA II, and
RUSSELL E. CASS, Administrative Patent Judges.
CASS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11 and 13–21 under 35 U.S.C.
§§ 101 and 103. Appeal Br. 9.2 We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
International Business Machines Corporation. Appeal Brief filed August 21,
2018 (“Appeal Br.”) 2.
2 Throughout this Opinion, we refer to the above-noted Appeal Brief, as well
as the following documents for their respective details: the Final Action
mailed March 22, 2018 (“Final Act.”); the Examiner’s Answer mailed
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We affirm.
BACKGROUND
The present invention relates to a method for analyzing contracts
using textual analysis. Spec. ¶ 1. According to Appellant’s method, a user
is presented with a contract. Id., Abstr. One or more summary points for the
contract may be determined based on the user’s preferences. Id. ¶ 22. The
user’s preferences may include a list of identified terms, and the summary
points may include key items or clauses that are present in or absent from
the contract. Id. ¶¶ 22–23. The contract may also be sent to an advisory
user, who may provide feedback on the contract. Id., Abstr. After receiving
feedback from the advisory user, the method determines a recommendation
for whether the user should accept the contract based on the feedback
received from the advisory user and the one or more summary points from
the contract. Id. The contract is then displayed, along with the summary
points, the feedback received from the advisory user, and the
recommendation whether to accept the contract. Id.
Claim 1 is illustrative of the claims at issue:
1. A method comprising:
responsive to determining a user is presented with a
contract, identifying, by one or more processors, user
preferences for processing contracts;
determining, by one or more processors, one or more
summary points for the contract based on the user preferences;
wherein the one or more summary points include
one or more identified terms and phrases from the

December 13, 2018 (“Ans.”); and the Reply Brief filed February 11, 2019
(“Reply Br.”).
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contract, and wherein the user preferences include a list
of identified terms and phrases to include in the one or
more summary points;
determining, by one or more processors, a
recommendation indicating whether the user should accept the
contract, based in part on feedback provided by one or more
advisory users and one or more summary points; and
initiating, by one or more processors, display of the
contract, along with the feedback provided by one or more
advisory users, the determined recommendation indicating
whether the user should accept the contract, and the one or
more summary points.
Appeal Br. 29 (Claims App.).
PRINCIPLES OF LAW RELATING TO
PATENT ELIGIBILITY UNDER 35 U.S.C. § 101
I. SECTION 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101 (2012).
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). In accordance with that framework, we first determine what concept
the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the
claims before us are drawn to the concept of intermediated settlement, i.e.,
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the use of a third party to mitigate settlement risk.”); see also Bilski v.
Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’
application explain the basic concept of hedging, or protecting against
risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, . . . and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citing Benson and
Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a
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law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
II. USPTO SECTION 101 GUIDANCE
In January of 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of § 101, which
was updated in October 2019. USPTO, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”);
October 2019 Update on Patent Subject Matter Eligibility, 84 Fed. Reg.
55942 (available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf) (“October 2019 PEG Update”). Under the 2019
Guidance, we first look to whether the claim recites the following:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic
practice, or mental processes); and
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
2019 Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
2019 Guidance, 84 Fed. Reg. at 56.
ANALYSIS
I. THE 101 REJECTION
A. The Examiner’s Rejection and Appellant’s Contentions
In the Final Office Action, the Examiner rejects claims 1–11 and 13–
21 under 35 U.S.C. § 101 as directed to non-statutory subject matter. Final
Act. 2. Applying Step 2A, the Examiner determines that the claims are
directed to the abstract idea of “analyzing contracts utilizing textual
analytics” as defined by the abstract claim functions of “identifying user
preferences for processing contracts; determining one or more summary
points for the contract based on the user preferences; determining a
recommendation indicating whether the user should accept the contract; and
initiating display of the contract.” Id. at 4. The Examiner determines, inter
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alia, that these claim elements recite “a mental process (thinking) that ‘can
be performed in the human mind, or by a human using a pen and paper.’”
Id.; see also id. at 7 (“All of the steps of the dependent claims can still be
performed mentally.”).
Applying Step 2B, the Examiner determines that “the structural
elements of the claims, which include a processor and storage media,” when
taken in combination with the functional elements,
do not offer ‘significantly more’ than the abstract idea because
the claims do not recite an improvement to another technology
or technical field, an improvement to the functioning of any
computer itself, or provide meaningful limitations beyond
generally linking an abstract idea (analyzing contracts utilizing
textual analytics) to a particular technological environment (a
general purpose computer).
Final Act. 6.
In support, the Examiner notes that “[Appellants’] Specification
discloses mere general purpose computing equipment for performing the
steps of the invention (See, e.g., Page 14, paragraph [0036] which defines
the computer system as including processors, cache, memory, persistent
storage, input/output interfaces, etc. These are generic computer
components).” Id.
Appellant argues that the claims do not recite an abstract idea because
the steps of: “responsive to determining a user is presented with a contract,
identifying . . . user preferences for processing contracts; determining ... one
or more summary points for the contract based on the user preferences” and
“determining . . . a recommendation indicating whether the user should
accept the contract . . . and initiating . . . display of the contract, along with
the feedback provided by one or more advisory users, the determined
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recommendation indicating whether the user should accept the contract, and
the one or more summary points” recite subject matter that is not directed to
mathematical concepts, certain methods of organizing human activity, or
mental processes under the 2019 Guidance. Reply Br. 4. Appellant further
argues that the claims do not recite an abstract idea that is similar to those
found in previous Federal Circuit cases. Appeal Br. 12–15.
As to Step 2A, Prong 2, Appellant asserts that the above-recited steps
use the judicial exception in a meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment by providing an intelligent system
with the capability to utilize user preferences to determine
summary points relevant to the user. And to further determine
a recommendation as to whether the user should accept the
contract. Additionally, the above quoted additional element(s)
reflect an improvement in the functioning of a computer or
text/contract analysis technology by providing real-time
analysis of a contract being presented to a user in order to
provide the user a personalized and relevant recommendation
indicating whether the user should accept the contract,
enhancing user experiences with said system and improving
understanding of the information that the user is viewing (e.g.,
via the summary points based on the user preferences).
Reply Br. 4–5. “As such,” Appellant argues, “the claims recite at least one
element that, as a whole, integrates the recited judicial exception into a
practical application of the exception that r[i]ses above a mere ‘drafting
effort designed to monopolize the judicial exception.’” Id. at 5 (citation
omitted).
B. Analysis under Step 2A, Prong 1, of the 2019 Guidance
Under Step 2A, Prong 1, of the 2019 Guidance, we must first
determine whether any judicial exception to patent eligibility is recited in the
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claim. The 2019 Guidance identifies three judicially excepted groupings:
(1) mathematical concepts, (2) certain methods of organizing human
activity, and (3) mental processes. 2019 Guidance, 84 Fed. Reg. at 52–53.
Based on existing Supreme Court and Federal Circuit precedent, the
2019 Guidance identifies “[m]ental processes” that may constitute an
abstract idea as including “concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).” Id. at 53
(footnote omitted). The “mental processes” judicial exception includes
concepts that can be performed by a human with a pen and paper as well as
those that can be performed entirely in the mind. See October 2019 PEG
Update at 9 (“a claim that encompasses a human performing the step(s)
mentally with the aid of a pen and paper recites a mental process”).
Appellant’s claims recite a method for analyzing and processing
contracts that includes a series of steps that can be performed by humans in
the mind or using pen and paper. We discuss these steps in more detail
below in the context of claim 1.
First, claim 1 recites the step of “responsive to determining a user is
presented with a contract, identifying . . . user preferences for processing
contracts.” This step can be performed by a human in the mind or with pen
and paper, by having the human receive an indication (such as verbally or in
paper form) that a contract has been received, and identifying from paper
files, information on user preferences for processing contracts.
Next, claim 1 recites the step of “determining . . . one or more
summary points for the contract based on the user preferences; wherein the
one or more summary points include one or more identified terms and
phrases from the contract, and wherein the user preferences include a list of
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identified terms and phrases to include in the one or more summary points.”
This step can be carried out by a human in the mind or using pen and paper,
for example by having the human review the contract in paper form and a
list of terms and phrases (the user preferences), and identify (in the mind or
on paper) summary points in the contract that include those identified terms
and phrases. For example, a human could review a contract in paper form,
highlight the identified terms and phrases in the contract (or note the absence
of them), and then make a list on paper of the terms and phrases that are
present or missing from the contract. To take a specific application from the
Specification, a human could review a movie ticket sales contract in paper
form, and identify the following summary points in a list on paper: (1) the
ticket is valid for 2 weeks from purchase; (2) the credit card utilized for
purchase must be presented at the box office; and (3) the ticket is not valid
during inclement weather. See Spec. ¶¶ 34–35; Fig. 3.
Claim 1 next recites “determining . . . a recommendation indicating
whether the user should accept the contract, based in part on feedback
provided by one or more advisory users and one or more summary points.”
This step can be carried at by a human making a mental judgment, based on
the summary points and feedback from one or more other humans (advisory
users), as to whether or not to make a recommendation indicating whether
the user should accept the contract.
Finally, claim 1 recites “initiating . . . display of the contract, along
with the feedback provided by one or more advisory users, the determined
recommendation indicating whether the user should accept the contract, and
the one or more summary points.” This step could be carried out by a
human by showing in paper form the contract, the feedback from other
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humans (advisory users), and the determined recommendation.3 For
example, a human could display this information to other humans at a
meeting by using paper handouts, posterboards, or a conventional projector
to display an enlarged version of a piece of paper including the information.
For these reasons we determine that claim 1 recites a recognized
judicial exception to patent eligibility. See 2019 Guidance at 52–53. We
reach the same conclusion for independent claim 8 and 15, which recite
similar mental process steps and are not separately argued.
C. Analysis under Step 2A, Prong 2, of the 2019 Guidance
Having determined that the claims recite a judicial exception, we next
consider whether they recite “additional elements that integrate the [judicial]
exception into a practical application.” See 2019 Guidance, 84 Fed. Reg. at
54; MPEP §§ 2106.05(a)–(c), (e)–(h). In making this determination, we
consider whether “the additional limitations reflect an improvement in the
functioning of a computer, or an improvement to another technology or
technical field.” October 2019 PEG Update at 11; see 2019 Guidance at 53.
As the Guidance explains, “not all claims that recite computer
components . . . integrate a judicial exception into a practical application,”
and limitations that merely recite “generic computer components that
amount[] to mere instructions to implement the abstract idea on a computer
. . . . [w]ould not be sufficient.” Id. at 11–12; see Alice, 573 U.S. at 223 (one

3 Alternatively, this display step can be considered to be an additional
element that adds only insignificant post-solution activity to the judicial
exception. See 2019 Guidance at 55 (listing as examples in which a judicial
exception has not been integrated into a practical application as including
situations where “an additional element adds insignificant extra-solution
activity to the judicial exception”).
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“cannot transform a patent-ineligible abstract idea into a patent-eligible
invention” by “the mere recitation of a generic computer” or by “limiting the
use of [the] abstract idea to a particular technological environment”).
Returning our attention to claim 1, in addition to the steps discussed
above that can be performed by a human in the mind or with pen and paper,
claim 1 also recites using “one or more processors” to carry out the steps
that comprise the judicial exception discussed above with respect to Step
2A, Prong 1. This language4 describes generic computer components that
amount to mere instructions to implement the abstract idea using a generic
computer processor. Indeed, the Specification merely describes the
“processors” generically using a box 401 in Figure 4 labeled “Processor(s).”
Further, the Specification does not provide additional details about the
processors that would distinguish the recited components from generic
implementation. Thus, these generic components simply automate the
process of having a person carry out the claimed contract analysis and
processing method.
Independent claims 8 and 15 include similar generic computer
elements for carrying out the judicial exception. Specifically, independent
claim 8 discloses a “computer program product comprising . . . one or more
computer readable storage media and program instructions stored on at least
one of the storage media” which carry out the steps that comprise the
judicial exception, and independent claim 15 recites a “computer system
comprising . . . one or more computer processors; . . . one or more computer

4 Although this language is in the preamble, we will treat it as limiting for
purposes of this decision. We express no opinion on whether the preamble
should be treated as a claim limitation.
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readable storage media; and program instructions stored on the computer
readable storage media for execution by at least one or more computer
processors” that carry out the steps that comprise the judicial exception. As
with the limitations in claim 1, the Specification describes these elements in
generic form using a block diagram. Spec. Fig. 4, boxes 401, 402, 405; ¶¶
11–12, 38, 44–50.
The use of these generic components is insufficient to transform the
claims into patent-eligible subject matter under Step 2A, Prong 2. See
October 2019 PEG Update at 11–12 (recitation of “generic computer
components that amounted to mere instructions to implement the abstract
idea on a computer . . . [w]ould not be sufficient to demonstrate integration
of a judicial exception into a practical application”); Alice, 573 U.S. at 226
(determining that the claim limitations “data processing system,”
“communications controller,” and “data storage unit” were generic computer
components that amounted to mere instructions to implement the abstract
idea on a computer). Consequently, the additional language in claims 1, 8,
and 15 beyond the judicial exception does not serve to integrate the judicial
exception into a practical application within the meaning of Step 2A, Prong
2, of the 2019 Guidance. 2019 Guidance, 84 Fed. Reg. at 52–55.
D. Analysis under Step 2B
Under Step 2B, we determine whether the claims include additional
elements individually or in combination that provide an inventive concept
and, therefore, amount to significantly more than the exception itself. See
2019 Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 221. We agree with
the Examiner that claim 1 does not include additional elements, considered
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either individually or as an ordered combination, that provide any such
“inventive concept,” and that the additional elements in the claims are
generic and are well-understood, routine, or conventional in the field. See
Final Act. 6; Ans. 5–7.
As discussed above with respect to Step 2A, Prong 2, the additional
elements in claim 1 beyond the judicial exception are “one or more
processors” that carry out the steps that comprise the judicial exception
discussed above with respect to Step 2A, Prong 1. As we explained above,
these are simple generic computer elements. Therefore, we agree with the
Examiner that the computer elements of claim 1 are well-understood, routine
and conventional activities previously known in the industry, and are thus
insufficient to provide an “inventive concept that amounts to significantly
more than the abstract idea itself.” See Final Act. 6. We reach the same
conclusion for independent claim 8 and 15 which, as discussed above, also
recite only generic computer components as additional elements, and are not
separately argued.
E. Dependent Claims
For the dependent claims (claims 2–7, 9–11, 13–14, and 16–21),
Appellant further argues that the Examiner has not established that the
additional elements recited in the dependent claims beyond the abstract idea
do not add “significantly more” to the alleged exception under Step 2B.
Appeal Br. 15–16.
The Examiner states that:
Dependent claims 2–7, 9–11, 13–14, and 16–21 merely add
further details of the abstract steps/elements recited the
independent claims without including an improvement to
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another technology or technical field, an improvement to the
functioning of the computer itself, or meaningful limitations
beyond generally linking the use of an abstract idea to a
particular technological environment. All of the steps of the
dependent claims can still be performed mentally and are done,
in the claims, by a generic computer.
Final Act. 7; Ans. 5.
We agree with the Examiner that the “additional” elements recited in
the dependent claims are merely generic computer components. For
example, the additional elements recited in dependent claims 2–7 and 21 are
merely “one or more processors.” The additional components in dependent
claims 9–11, 13–14, and 16–20 are merely “program instructions, stored on
the one or more computer readable storage media, which when executed by
a processor, cause the processor to” carry out the abstract idea. Therefore,
Appellant has not demonstrated that the Examiner erred in finding that the
additional elements in the dependent claims do not add “significantly more”
to the judicial exception under Step 2B.
F. Conclusion as to Section 101
Consequently, we agree with the Examiner that the claims are directed
to patent-ineligible subject matter without reciting significantly more. We,
therefore, sustain the rejection of claims 1–11 and 13–21 under § 101.
II. THE 103 REJECTION
In the Final Office Action, the Examiner rejects the claims under
35 U.S.C. § 103 based on the following references:
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Name Reference Date
Rempe Rempe et al., US 7,958,017 B1 Jun. 7, 2011
Senzee Senzee, US 2016/0171635 A1 Jun. 16, 2016
Anthony-Hoppe Anthony-Hoppe et al., US
7,962,347 B2
Jun. 14, 2011
Akhbari Akhbari, Contract Drafting and
Review Attorneys, LegalMatch
Law Library, Published Mar. 8,
2016
Mar. 8, 2016
Final Act. 7–19.
In the Final Office Action, the Examiner rejects claims 1–6, 8–11, 13,
and 15–20 under § 103 as being unpatentable over Rempe in view of
Senzee. Id. at 8. The Examiner further rejects claims 7 and 14 under § 103
as being unpatentable over Rempe, Senzee, and Anthony-Hoppe. Id. at 15.
The Examiner additionally rejects claim 21 under § 103 as being
unpatentable over Rempe, Senzee, and Akhbari. Id. at 16.
With respect to claim 1, the Examiner finds that Rempe teaches all of
the claimed steps except for the step of “determining . . . a recommendation
indicating whether the user should accept the contract” (the “determining a
recommendation” step), and the step of “initiating . . . display of the
contract, along with . . . the determined recommendation”) (the “initiating
display” step). Final Act. 10–11. For these steps, the Examiner relies on
Senzee. Id. at 11 (citing Senzee ¶¶ 13–15, 20, 21).
More specifically, the Examiner finds that in Senzee, a computer
program reviews a contract (Senzee ¶¶ 13–15), and a terms negotiator
program analyzes the terms for problems (id. ¶ 20). Final Act. 11. After
such analysis, according to the Examiner, any problem terms may be
displayed to the user, for example, in the form of highlighted versions of the
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original text containing the terms. Final Act. 11 (citing Senzee ¶ 21). This,
the Examiner states, is “feedback provided by one or more advisory users”
because the terms negotiator program is equivalent to one or more advisory
users. Final Act. 11. Senzee then, according to the Examiner, teaches
displaying to the user alternatives to problematic terms that would be
acceptable to the contract proponent, which the user may accept. Id. (citing
Senzee ¶ 21). The Examiner finds that this portion of Senzee “clearly
discloses providing a recommendation (i.e. the fact that the terms are
acceptable is a recommendation for the user to accept) of whether to accept
the contract (including the ability to actually accept the contract), based on
feedback and summary points.” Ans. 7.
Appellant argues that Senzee does not teach the “determining a
recommendation” step because Senzee merely displays problematic terms in
a contract to the user, but does not determine a recommendation indicating
whether the user should accept the contract. Appeal Br. 18–19. According
to Appellant, Senzee’s teaching that the system may indicate which of the
terms are negotiable with the contract proponent does not suggest
determining a recommendation indicating whether the user should accept the
contract. Id. at 18–19. Appellant further argues that, because Senzee does
not disclose determining a recommendation for whether the user should
accept the contract, Senzee necessarily does not disclose displaying such a
recommendation, as required by the “initiating display” step. Id. at 24–25.
We are not persuaded that the Examiner’s rejection is in error. We
agree with the Examiner that Senzee’s determination that there are no
problem terms is a “recommendation indicating whether the user should
accept the contract,” because it represents a suggestion by the system that
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the contract is acceptable. On the flip side, we agree that Senzee’s
determination that there are problem terms and its suggestion of alternative
terms is a recommendation not to accept the contract as written, because it
represents the system’s suggestion that the original terms are problematic.
In this regard, we note that the claim language states that the
recommendation need only “indicat[e]” whether the user should accept the
contract. Under the broadest reasonable interpretation, we find that this
claim language is met by a suggestion from the system that the contract as
originally written is acceptable (because no problems were found) or
unacceptable (due to the existence of problem terms or the absence of
important clauses), and does not require an express statement by the system
that the user should or should not accept the contract. We further agree with
the Examiner’s determination that Senzee’s display of problematic terms and
alternatives is a display of a recommendation not to accept the contract as
originally written, and Senzee’s failure to display problematic terms is a
display of a recommendation to accept the contract as originally written.
We therefore agree with the Examiner that the combination of Rempe
and Senzee would have suggested the “determining a recommendation” and
“initiating display” steps of claim 1 to a person of ordinary skill in the art.
Consequently, we sustain the Examiner’s rejection of claim 1 under § 103.
We also sustain the Examiner’s § 103 rejection of claims 2–11 and 13–21,
which are not separately argued. See Appeal Br. 26–27 (relying on
arguments for claim 1 to establish allowability of the remaining claims).
DECISION
We affirm the Examiner’s rejection of claims 1–11 and 13–21.
Appeal 2019-002566
Application 15/336,908

19
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11, 13–21 101 Eligibility 1–11, 13–21
1–6, 8–11,
13, 15–20
103 Rempe, Senzee 1–6, 8–11,
13, 15–20

7, 14 103 Rempe, Senzee,
Anthony-Hoppe
7, 14
21 103 Rempe, Senzee,
Akhbari
21
Overall
Outcome
1–11, 13-21

AFFIRMED