Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
This communication is in response to Applicant’s amendment filed 22 May 2026. Claims 38, 50, and 53 have been amended. Claims 1-37, 39-42, 45-49, 51 and 54 were previously cancelled. Claims 38, 43-44, 50, 52 and 53 are currently pending. The rejections under 35 USC § 101 directed to double patenting is maintained. The rejections are as stated below.
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 38, 43, 44, 50, 52 and 53 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. In particular, claims are directed to a judicial exception (abstract idea) without significantly more as discussed in the previous office action mailed on 22 October 2025 and incorporated herein by reference. Further:
The proposed amendments do not overcome the 35 U.S.C. 101 rejection.
Applicant amended claims 38, 50 and 53 to include “… wherein the Monte Carlo simulation comprises iteratively executing a statistically significant number of random trials, ...”. The concept is still directed to the abstract idea of assessing the risk associated with participating in the insurance pool.
The same analysis applies to the newly added claim limitations with respect to the additional elements (an assessment module) and the integration of the abstract idea into a practical application and amounting to significantly more in light of the new 2019 Patent Eligibility Guidance (2019 PEG) as discussed in the previous office action.
Response to Arguments
Applicant's arguments with respect to 35 USC § 101 directed to non-statutory subject matter been fully considered but they are not persuasive.
Examiner respectfully disagrees. Claims 38, 43, 44, 50, 52 and 53 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Examiner incorporates herein the response to arguments from the previous office actions.
Examiner respectfully disagrees. As mentioned previously, upon reviewing the Specification and the claim as whole, independent claim 38 is at least directed to one of the ineligible “certain methods of organizing human activity” that include “fundamental economic principles or practices” and “commercial . . . interactions”. Independent claim 38 stores data…, determines... an investment index based on a portion of the stored data …, determines...a return index based on a portion of the stored data …, calculates. . . a computed index, which is simply the difference between the investment and return indices, and then transmits... the investment index, the return index and the computed index . . . to an interactive user interface and makes a participation decision based on a predetermined value of the computed index, where the higher the computed index, the greater the benefit and thus, a greater incentive to participate. Together these steps simply provide a user with data that enables a user to assess “the risks, benefits and/or costs associated with participating in an insurance pool”. Thus, like the concept of intermediated settlement in Alice, and the concept of hedging in Bilski, the concept of “risk assessment in connection with insurance pool participation” recited in exemplary independent claim 38 “is a fundamental economic practice long prevalent in our system of commerce.” Accordingly, it is clear that exemplary independent claim 38 recites fundamental economic practices and/or commercial transactions that, under the Revised Guidance, fall under the category of abstract ideas related to “certain methods of organizing human activity.” 2019 Revised Guidance, 84 Fed. Reg. at 52. Accordingly, independent claim 38 recites an abstract idea.
Applicant argues that “The amended claims now recite, inter alia, that "the Monte Carlo simulation comprises iteratively executing a statistically significant number of random trials, each trial involving random selection of values for the number of casualties, the insurance pool's percentage share to market, the insurance company's percentage share to pool, the insurance company's percentage share to market, and the average policy amount, to generate a statistically reliable mean and distribution for the investment index, the return index, and the computed index." This element cannot practically be performed in the human mind”.
Examiner respectfully disagrees, Monte Carlo simulation is a mathematical calculation for statistical outcomes, which falls under “mathematical concepts” category (step 2A, prong one). Even though the claims are now reciting the Monte Carlo simulation by executing a plurality of random trials, it is used to perform financial risk analysis. The determination that a claim limitation is not a mental process does not preclude the limitation from constituting another category of abstract idea, such as a mathematical concept. See MPEP § 2106.04(a)(2).
The claims apply the abstract idea on the computer system at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The claims here are not directed to a specific improvement to computer functionality. Rather, they are directed to the use of generic technology in a well-known environment, without any claim that the invention reflects an inventive solution to any computer specific problem. Also, limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology and so cannot be “significantly more.” The claims are directed to an abstract idea.
Applicant cites the December 5, 2025 USPTO memorandum regarding Ex Parte Desjardins,.
In Ex parte Desjardins, the claims are related to a specific improvement to machine learning models and to computer security architecture (improved authentication techniques), to ‘effectively learn new tasks in succession whilst protecting knowledge about previous tasks.’ In contrast, the instant claims do not improve the functioning of the computer. The claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem. Also, limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology.
In the instant case, the amended limitations of the claims do not result in computer functionality improvement or technical/technology improvement when the underlying abstract idea is implemented using technology. The amendments to the claims only further define the data being used however, a specific abstract idea is still an abstract idea. All the features in the Applicant’s claims can at best be considered an improvement in the abstract idea. The advantages over conventional systems are directed towards improving the abstract idea. Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. The additional elements are recited at a high level of generality and under their broadest reasonable interpretation comprises a generic computer arrangement. The presence of a generic computer arrangement is nothing more than mere instructions to implement the abstract idea on a computer (MPEP 2106.05(f)). Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Hence, the claims as a whole are not integrated into a practical application.
Examiner respectfully disagrees that the claims are directed to an improvement computer technology. As found by the courts “In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly . . ..” SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010); see also Content Extraction, 2013 WL 3964909, at *12 (“the mere use of a computer to more quickly and efficiently . . . accomplish a given task does not create meaningful limitation on an otherwise abstract and wide-ranging concept”).
A claim may be found to be eligible if it integrates a judicial exception into a practical application as cited by Applicant. However, examiner notes that "claiming the improved efficiency inherent with applying the abstract idea on a computer" does not provide an inventive concept (see MPEP §2106.05(f)(2).) Claiming improved data processing efficiency inherent with applying any improvement to the judicial exception itself on a computer does not provide an inventive concept. The claims do not integrate the judicial exception into a practical application.
The claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem.
The claims as a whole do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are generic computer components claimed to perform their basic functions. The processor is a general-purpose processor that performs general-purpose functions. The recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the processor as a tool to implement the abstract idea). Taking the additional elements individually and in combination, each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claim does not amount to significantly more than the abstract idea itself. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply a generic recitation of a computer processor performing its generic computer functions. Accordingly, claims are ineligible.
Lastly, dependent claims 43, 44 and 52 do not resolve the issues raised in the independent claims. The dependent claims do not add limitations that meaningfully limit the abstract idea. The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as significantly more than the abstract idea.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Conclusion
Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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Respectfully Submitted
/HANI M KAZIMI/
Primary Examiner, Art Unit 3691
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