Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Status of the Application
Claims 1, 4-5, 7-8, 10, 12, 15-16, and 18 are currently pending in this case and have been examined and addressed below. This communication is a Final Rejection in response to the “Remarks” and “Amendments to the Claims” filed on 03/02/2026.
Claims 1, 10, 12, and 18 are currently amended.
Claims 2-3, 6, 9, 11, 13-14, 17 and 19-20 remain cancelled and not considered at this time.
Notice to Applicant
Examiner brings Applicant’s attention to the possible expiration of the original patent term for this application. The original filing date of the present application is 02/13/2004. As per MPEP 2701, the term of a patent ends on the date that is twenty years from the date on which the application for the patent was filed in the United States. In the case of the present application, more than 20 years has elapsed since the filing date.
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, 4-5, 7-8, 10, 12, 15-16 and 18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims are directed to certain methods of organizing human activity including fundamental economic principles or practices including insurance and managing personal behavior or relationships or interactions between people.
The limitation of facilitate case processing, as drafted, is a step executed by a system that, under its broadest reasonable interpretation, covers managing interactions between people but for the recitation of generic computer components. That is, other than reciting “a rules engine including a set of procedures,” nothing in the claim elements precludes the step from being a function which is a fundamental economic principle because facilitating case processing is a fundamental principle of insurance. Similarly, the limitations of asynchronously processing each data element as an individual unit independently of other data elements, reviewing the insurance related data and generating one or more tasks necessary to facilitate case processing, as drafted, under its broadest reasonable interpretation, covers a method of organizing human activity which includes fundamental insurance processing principles. The steps of determining whether fields are blank, determining whether data elements are validated as clean data, performing a first determination of whether required information is not present, performing a second determination of whether a required format is not present, determining that the first or second determination is not satisfied and based on the determination generating an exception task including requesting more information, filling in missing information and fixing erroneous information, continuing on to a next data element without waiting for resolution of the exception task, controlling an overall flow of information, monitoring converted data, directing information to a decision point, enabling data verification, determine which data tasks can be automated, receiving responses to data tasks, verifying data for forwarding to the operational database based upon responses, routing verified data to decision points, validation of a data element by resolving the exception task, other than reciting a “rules engine”, covers managing personal behavior or interactions based on following rules or instructions. Resolving the generated exception task is done by requesting the missing or more information from a record supplier which is an interaction between two people and this falls into certain methods of organizing human activity. The limitations including generating workflow tasks to enable case progression, receiving responses to the workflow tasks, and determining case progression based on the responses also cover fundamental economic practices of processing insurance applications which are certain methods of organizing human activity. Similarly, the limitation of reviewing data elements of the document as the document progresses through each stage of pending, approval, issuance and in-force includes fundamental economic practices of processing insurance applications and the lifecycle of the insurance application process. Continuing on to a next data element without waiting for resolution of the exception task describes simultaneous processes which are occurring, which is common in business practices. Multiple functions being carried out simultaneously is still part of insurance claims processes and therefore falls into certain methods of organizing human activity. If a claim limitation, under its broadest reasonable interpretation, covers a fundamental economic practice or managing personal behavior or relationships or interactions between people including teaching and following rules or instructions, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Behavior” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application because the additional elements and combination of additional elements do not impose meaningful limits on the judicial exception. In particular, the claims recite the additional elements – a raw database for storing insurance application documents each including a plurality of fields, in a native electronic format, a rules engine including a set of procedures for facilitating case processing, and a state machine for monitoring the data. The database, rules engine and state machine in these steps is recited at a high-level of generality (i.e., the rules engine and state machine work in combination to carry out the steps of the invention) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims also include the additional element of converting fields of a document into a plurality of data elements in XML format which is mere instructions to apply an exception because it invokes computers or other machinery merely as a tool to perform an existing process, where converting a document to XML data is a routine task in the field of data management. As in MPEP 2106.05(f), the use of computer in its ordinary capacity for routine tasks is found by the courts to be a mere instruction to apply the exception (A commonplace business method or mathematical algorithm being applied on a general purpose computer, Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347, 1357, 110 USPQ2d 1976, 1983 (2014); Gottschalk v. Benson, 409 U.S. 63, 64, 175 USPQ 673, 674 (1972); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015)). The claim also includes the additional element of monitoring clean data in the operational database and rules engine outputs which is also a mere instruction to apply the exception because the monitoring of electronic data has been found to do no more than merely invoke computers or machinery as a tool, as in MPEP 2106.05(f) (A process for monitoring audit log data that is executed on a general-purpose computer where the increased speed in the process comes solely from the capabilities of the general-purpose computer, FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016)). The additional element of reintegrating the validated data element with the clean data in the operational database also amounts to no more than mere instructions to apply an exception because reintegrating the data element in the operational database uses the computer in its ordinary capacity for tasks such as receiving, storing or transmitting data which has been found to not provide significantly more than the abstract idea (see MPEP 2106.05(f)(2)). The additional element of storing insurance application documents each including a plurality of fields, in a native electronic format in a raw data database also amounts to mere instructions to apply an exception because storing documents in a raw database uses the computer in its ordinary capacity for tasks such as receiving, storing or transmitting data which has been found to not provide significantly more than the abstract idea (see MPEP 2106.05(f)(2)). The description of insurance application related documents as including a plurality of fields, in a native electronic format, wherein the native electronic format comprises unformatted versions of the documents and the documents include both electronic and paper documents, the native electronic format comprising eXtensible Markup Language (XML), Microsoft Word (DOC), or Electronic Data Interchange (EDI) is not a functional limitation, but rather a description of the insurance application related documents itself and thus does not integrate the abstract idea into a practical application. The claim element still recites storing data in a database, which as described above, is a routine computer function as per MPEP 2106.05(f)(2) and therefore is applying the abstract idea using a general purpose computer. The documents being in electronic format including electronic and paper documents are both storage capabilities of a general purpose computer. Claims 1 and 12 also include a state machine configured to work in conjunction with the rules engine and to direct information to one or more rules engine decision point, which amounts to mere instructions to apply the exception. As described in the specification, the state machine is a computer component used to make decisions/determinations about flow of information. As per MPEP 2106.05(f)(2), adding a general purpose computer or computer components to an abstract idea does not integrate a practical application or provide significantly more. Directing information to a decision point is an abstract idea which is applied to the state machine. Additionally, the claims include a state machine used to receive responses to said data tasks. Receiving responses is mere data gathering which amounts to insignificant extra-solution activity, as per MPEP 2106.05(g), where receiving responses is necessary data gathering. The data gathering is executed by the state machine, which as described above, is a computer component that is a general purpose computer. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements a raw database, a rules engine including a set of procedures, and a state machine amounts to no more than mere instructions to apply the exception using a generic computer component. Additionally, the elements of converting fields of a document to into a plurality of data elements in XML format amounts to no more than mere instructions to apply an exception. Converting elements from a physical document into electronic data is a well-understood, routine and conventional activity as recognized by the courts, as in MPEP 2106.05(d)(II) (Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition)). Similarly, the additional element of monitoring data in a database is well-understood, routine and conventional as recognized by the courts, as in MPEP 2106.05(d)(II) - Electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log). Reintegrating a data element in a database and storing documents of a first and second type in a first and second database are also well-understood, routine and conventional activity as storing and retrieving information in memory (as per MPEP 2106.05(d)(II) Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93) has been recognized to be well-understood, routine and conventional by the courts. Additionally, receiving responses to said data tasks is a well-understood, routine, and conventional computer function similar to receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added)), which as per MPEP 2106.05(d)(II) has been found by the courts to be a computer function that is well-understood, routine, and conventional when claimed as insignificant extra-solution activity. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims are not patent eligible.
Dependent claims 4-5, 7-8 and 15-16 add additional limitations, for example Claim 4 further limits the monitoring and generating tasks of the independent claims. Claim 5 further specifies the documents. Claims 7-8 and 15-16 further limit the exception tasks of the independent claims. These limitations only serve to further limit or specify the limitations of the independent claims, and hence are nonetheless directed towards fundamentally the same abstract idea as independent claims 1, 10, 12 and 18.
The dependent claims do not include additional elements beyond those previously addressed in the independent claims and thus do not provide an inventive concept by reciting significantly more than the abstract idea. Therefore, when taken individually or as an ordered combination, Claims 1, 4-5, 7-8, 10, 12, 15-16 and 18 are nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's arguments, see Page 15-18, “Claim Rejections Under 35 U.S.C. 101”, filed 03/02/2026, with respect to the rejection of Claims 1, 4-5, 7-8, 10, 12, 15-16 and 18 under 35 U.S.C. 101 have been fully considered but they are not persuasive.
Applicant argues that the rejection fails to properly analyze the claims as a whole including the rules engine, state machine, asynchronous processing of individual data elements, exception task generation, and automatic resolution. Examiner respectfully disagrees. The rejection above includes analysis of each of these elements. The rejection above analyzes the abstract idea as a whole to be certain methods of organizing human activity as routing and processing insurance related data which is applied using mathematical algorithms and general purpose computing components. Therefore, the claims as a whole are analyzed and determined to be directed to an abstract idea.
Applicant argues that the claims recite a specific technological improvement to data processing systems by reciting a particular way to achieve improved data processing which include asynchronously processing each data element as an individual unit independently of other data elements, generating exception tasks associated exclusively to individual data elements, continuing to the next data element without waiting for exception resolution, and reintegrating validated data elements. Applicant further argues that this provides a specific technical architecture. Examiner respectfully disagrees. The claims recite a computer architecture including a raw database, an operational database, a rules engine, and a state machine which are general purpose computing components that are well-known in the data processing arts, as described in the rejection above. The use of general purpose computing components to execute the steps of the abstract idea amounts to mere instructions to apply the exception and does not integrate the abstract idea into a practical application. The steps recited for processing the data elements including the order in which they are processed, generating exception tasks, etc. are parts of the abstract idea itself. Any improvement to processing data as individual elements is an improvement to the abstract idea itself of processing insurance claims and not to the technology. The steps of the claims are executed by a general purpose computer which is not an improvement in technology, but rather an application of the abstract idea to a computer. As per MPEP 2106.05(a), the courts have found that mere automation of a manual process, such as using a generic computer to process an application for financing a purchase (Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017)) is not sufficient to show an improvement in computer-functionality. In the present claims, the increase in efficiency that comes from the use of the computer components to replace the paper documents and manual processing of prior systems does not provide an improvement in computer-functionality or in technology. Additionally, the claims do not include any improved technical architecture. The raw database, rules engine which carries out a plurality of processing steps, and state machine which carries out a series of data processing steps do not interact in any manner which shows a technical improvement, nor do the claims show an improvement to the functioning of these computer components. Therefore, the claims do not integrate the abstract idea into a practical application.
Applicant argues that the claims provide a specific improvement over conventional systems as described in the specification including processing data as individual data elements using exception in which the process does not stop while processing waits on required information, but rather moves to the next task and continues the previous task when the information is received. Examiner respectfully disagrees that this is an improvement to computer data processing technology. This is a result of the computer following the instructions of the abstract idea. A general purpose computer is capable of processing a plurality of things at one time, unlike the previous manual system in which a person can only process one thing at a time mentally. The use of a computer in its ordinary capacity for processing multiple operations simultaneously is merely using the computer in its ordinary fashion to execute the abstract idea. As per MPEP 2106.05(f)(2), claiming the improved speed or efficiency inherent with applying the abstract idea on a computer does not integrate a judicial exception into a practical application or provide significantly more than the abstract idea. Any improvement which results from the instructions telling the computer to continue processing another element while waiting for the exception is an improvement to the abstract idea itself and not a technical improvement. As per the specification [0029], the system will wait for the information and simply resolve the exception when that information is received. Therefore, the system is still processing the same information and carrying out the same amount and type of processing steps just in a different order. This does not result in a technical improvement to a technical problem and therefore, does not integrate the abstract idea into a practical application.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Evangeline Barr whose telephone number is (571)272-0369. The examiner can normally be reached Monday to Friday 8:00 am to 4:00 pm.
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/EVANGELINE BARR/Primary Examiner, Art Unit 3682