DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
This action is in reply to the response filed on January 7, 2026. Claims 39, 44, 47-49, 51-54 and 57 are currently pending and have been examined. Claims 1-38, 40-43, 45-46, 50 and 55-56 have been cancelled. Claim 39 has been amended.
Response to Arguments
Applicant's arguments filed January 7, 2026 have been fully considered but they are not persuasive. Applicant argues on pages 8-11 that amended claim 39 recites a “specific technical architecture” involving a generalized image adapter layer, image system plug-in adapters, format translation, and a persistent data translation map. Applicant further contends that these features solve “concrete technical problems” by enabling interoperability and migration across image systems.
Applicant’s arguments are not persuasive. The claims remain directed to abstract workflow and business-process activity, including underwriting, issue processing, settlement processing, task assignment, document review, validation, and forwarding to external systems. These are classic methods of organizing human activity and, to the extent the claims involve determining sufficiency, discrepancies, or required tasks, also recite mental processes.
The newly added generalized image adapter layer does not change the eligibility analysis. The claim recites this component only in functional, result-oriented terms—e.g., providing format-independent access, using plug-ins, translating image formats, maintaining a logical view, and enabling transparent migration. The claim does not recite a specific technical implementation, a particular data structure, an unconventional computer architecture, or a demonstrated improvement to computer functionality itself.
At most, the claim uses generic software components to automate and abstract business workflow and image-system interoperability. This is not enough to integrate the abstract idea into a practical application under Step 2A, Prong Two, and no additional element supplies an inventive concept under Step 2B.
Accordingly, claims 39, 44, 47–49, 51–54, and 57 remain rejected under 35 U.S.C. § 101.
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 39, 44, 47-49, 51-54 and 57 are rejected under 35 U.S.C. 101 because the claimed invention is directed an abstract idea without significantly more.
Step 1
Is the claim(s) directed to a process, machine, manufacture or composition of matter? Claims 39, 44, 47-49, 51-54 and 57 are all directed to a statutory category (e.g., a process, machine, manufacture, or composition of matter). The answer is YES.
Step 2A-Prong 1
Claims 39, 44, 47-49, 51-54 and 57 are directed to a workflow system for processing an insurance application in the financial services industry. Specifically, the workflow system has an interface portion that is tangibly disposed in a processing machine for inputting application information into the workflow system for processing by the workflow system. A workflow looping portion is tangibly disposed in the processing machine for performing underwriting processing to effect underwriting of the insurance application based on the information. A rules logic portion controls the implementation of rules applied to the processing of the insurance application as the insurance application passes through the automated processing.
From this we see that the claims do not recite the judicial exceptions of either natural phenomena or laws of nature. The next issue is whether it recites the judicial exception of an abstract idea. To answer this, we next determine whether it recites one of the concepts the Courts have held to be lacking practical application, viz. mathematical concepts1, certain methods of organizing human interactions2, including fundamental economic practices and business activities, or mental processes3.
“It follows from prior Supreme Court cases, and Bilski (Bilski v Kappos, 561 U.S. 593 (2010)) in particular, that the claims at issue here are directed to an abstract idea. Like the risk hedging in Bilski, the concept of insurance is a fundamental economic practice. Thus, insurance, like hedging, is an "abstract idea" beyond the scope of§ 101. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2356.” Ex parte Perry at 7, appeal number 2017-009459, which happens to be this case.
Thus, the invention is an example of a conceptual idea subject to the Supreme Court's "concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity." See Alice, 573 U.S. at 216 (citations omitted). As determined earlier, none of these steps recite specific technological implementation details. Thus, the claims are directed to a certain method of organizing human activity.
Alternately, this is an example of concepts performed in the human mind as mental processes because the invention as drafted is a process that under its broadest reasonable interpretation covers a mental process. That is, other than generic computer components, nothing in the claim element precludes the step from practically being performed as mental process. The steps mimic human thought processes, perhaps with paper and pencil, where the data interpretation is perceptible only in the human mind. “. “The district court correctly concluded that managing the game of bingo “consists solely of mental steps which can be carried out by a human using pen and paper.” Planet Bingo, 961 F. Supp. 2d at 851. Other than the recitation of generic computer components, the examiner finds that the instant case clearly falls within the “mental processes” grouping of abstract ideas. The examiner further finds that this type of activity represents longstanding conduct that existed well before the advent of computers and the Internet. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson").
Step 2A-Prong 1: YES. The claims are abstract.
Step 2A-Prong 2
The next issue is whether the claims not only recite, but are more precisely directed to this concept itself or whether they are instead directed to some technological implementation or application of, or improvement to, this concept i.e., integrated into a practical application.4
At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, "all inventions ... embody, use, reflect, rest upon, or apply
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laws of nature, natural phenomena, or abstract ideas." Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. "[A]pplication[s]" of such concepts " 'to a new and useful end, ' " we have said, remain eligible for patent protection. Accordingly, in applying the § 101 exception, we must distinguish See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) between patents that claim the " 'buildin[g] block[s]' " of human ingenuity and those that integrate the building blocks into something more. Alice, 573 U.S. at 217 (citations omitted).
The introduction of a computer into the claims does not alter the analysis at Mayo step two.
“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea "while adding the words 'apply it"' is not enough for patent eligibility. Nor is limiting the use of an abstract idea "'to a particular technological environment. "' Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result. Thus, if a patent's recitation of a computer amounts to a mere instruction to "implement[t]" an abstract idea "on . . . a computer," that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of "additional feature[e]" that provides any "practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself." Alice, 573 U.S. at 223-24 (citations omitted).
"[T]he relevant question is whether the claims here do more than simply
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instruct the practitioner to implement the abstract idea [ ] on a generic computer." Alice, 573 U.S. at 225. They do not.
Viewed as a whole, Applicants' claims simply recite an automated means for underwriting insurance applications as performed by generic hardware. The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. They do not describe any particular improvement in the manner of how a computer functions. Instead, the claims at issue amount to nothing significantly more than instructions to apply the abstract idea. Under precedent, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26.
None of the limitations reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, effects a transformation or reduction of a particular article to a different state or thing, or 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.
The examiner therefore concludes that the claims are directed to a certain method of organizing human activity as distinguished from a technological improvement for achieving or applying that result. The claim does not integrate the judicial exception into a practical application.
Step 2A-Prong 2: NO. The judicial exception is not integrated into a practical application.
Step 2B
The next issue is whether the claims provide an inventive concept because the additional elements recited in the claims provide significantly more than the recited judicial exception. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses.5
None of these activities are used in some unconventional manner nor do any produce some unexpected result. In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, "even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161
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1 168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of Applicants' claims add nothing that is not already present when the steps are considered separately. That paragraph 181 of the published Specification6 indicates that standard off-the-shelf computer technology is usable to implement the claimed invention only bolsters the notion that the claimed invention does not focus on an improvement in computers as tools, but rather certain independently abstract ideas that use computers as tools. (Elec. Power, 830 F.3d at 1354).
Dependent claim 44 adds the additional limitation of why the wait state is imposed. This is a statement of intended use and is accorded no patentable weight. This could also be seen as a mental process e.g., identifying that there is a required task to be performed. That is, other than generic computer components, nothing in the claim element precludes the step from practically being performed as mental process. The steps mimic human thought processes, perhaps with paper and pencil, where the data interpretation is perceptible only in the human mind. See Planet Bingo, 961 F. Supp. 2d at 851 Guidance, 84 Fed. Reg. at 52.
Dependent claim 47 adds the additional limitation of what the task is associated with. This additional step is nonfunctional descriptive material.
Dependent claim 48 adds the additional limitation of the task being discrepancy. This is also nonfunctional descriptive material.
Dependent claim 49 adds the additional limitation of what the task logic portion identifies. This additional step is also a mental process.
Dependent claim 51 adds the additional limitations of imposing a wait state, identifying a change, wiping tasks, scrubbing information and checking for deficiencies. This could be thought of as a mental process.
Dependent claim 52, 53 and 54 add the additional limitation of the task logic portion making an association. This additional step is a mental process as well.
Dependent claim 57 adds the additional limitation of forwarding the insurance application and allowing a user to enter instructions. These additional steps are mental processes.
Step 2B: NO. The claims do not provide significantly more.
Legal Conclusion
The examiner concludes that the claims do not provide an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception. From these determinations the examiner further notes that the claims do not recite an improvement to the functioning of the computer itself or to any
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other technology or technical field, a particular machine, a particular transformation, or other meaningful limitations. From this the examiner finds the claims are directed to a certain method of organizing human activity without significantly more.
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 SHAHID R MERCHANT whose telephone number is (571)270-1360. The examiner can normally be reached M-F 7:30-5.
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, Namrata Boveja can be reached at 571-272-8105. 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.
/Shahid Merchant/Supervisory Patent Examiner, Art Unit 3684
1 See e.g., Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).
2 See e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Systems Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1383 (Fed. Cir. 2017); In re Marco Guldenaar Holding B. V., 2018 WL 6816331 (Fed. Cir. 2018).
3 See e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-1372 (Fed. Cir. 2011); Intellectual Ventures I LLCv. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
4 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S. 175 (1981).
5 MPEP 2106.05(d)(II) The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity.
i. 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));
iv. 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.
6 [181] “The system of the invention or portions of the system of the invention as described above may be in the form of a "processing machine," such as a general-purpose computer, for example.”
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