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 .
DETAILED ACTION
The following Non-Final office action is in response to applicant’s after RCEX with similar remarks [no amendments] filed on 12/18/2025.
Priority Date: CIP of [#16/372,739]>[04/02/2019]
Claim Status:
Pending claims: 1-20
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 1-20 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.
When considering subject matter eligibility under 35 U.S.C. 101, (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. (Step-2A) If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, (Step-2B) it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself.
Examples of abstract ideas grouping include: (a) Mental processes; (b) Certain methods of organizing human activities [ i. Fundamental Economic Practice; ii. Commercial or Legal Interaction; iii. Managing Personal behavior or Relations between People]; and (c) Mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. (2014).
Analysis is based on the Revised 2019 Patent Eligibility Guidance (2019 PEG)-(see MPEP § 2106.04(II) and 2106.04(d).
[Step-1] The claims are directed to a system/method/machine, which are a statutory category of invention.
Claim 1 (exemplary) recites a series of steps for: automatically analyzing information related to a workers' compensation claim and for providing a case analysis report.
[Step-2A]-Prong 1:The claim 1 is then analyzed to determine whether it is directed to a judicial exception:
The claim 1 recites the limitations steps of:
at least one licensed user …, said licensed user … programmed to:
a. upload … documents and data related to a workers' compensation claim,
b. download … said case analysis report comprising analysis and recommended plan of action regarding said workers’ compensation claim.
B. at least one … accessible …, said at least one … to receive said documents and data related to a workers' compensation claim, said at least one … comprising programming for:
a. a … for receiving said uploaded documents and data from said licensed user …,
b. a …for providing a criteria checklist to be compared against said documents and data,
c. an…for comparing said checklist to said uploaded documents and data to generate identified text,
d. a … for receiving said identified text and generating text with maximum probability score,
e. an…for receiving said text with maximum probability score and for generating possible issues,
f. an … for receiving said possible issues and for generating an analyzed decision and said case analysis report, and
g. a … for receiving said analyzed decision and for storing said analyzed decision for future analysis.
The claimed system/method simply describes series of steps for: automatically analyzing information related to a workers' compensation claim and for providing a case analysis report.
These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performance of certain methods of organizing human activities such as a fundamental economic practice of mitigating risk of fraud in a works compensation claim or managing a commercial or legal obligation such as workers compensation, for the recitation of generic computer components. That is, other than reciting computer servers/processors, device and computer network nothing in the claim precludes the limitations from practically being performed by organizing human business activity. For example, without the structure elements language, the claim encompasses the activities that can be performed manually between the users and a third party. These limitations are directed to an abstract idea because they are business interaction/sale activity that falls within the enumerated group of “certain methods of organizing human activity” in the Revised 2019 PEG.
[Step-2A]-Prong 2:
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional limitation of using computer servers/processors, device and computer network to perform the steps. The processor in the steps is recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing data. This generic processor limitation is no more than mere instructions to apply the exception using 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 claim is directed to the abstract idea.
[Step-2B]
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept).
As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a processor (using the processor as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the processor at 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 same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept.
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea, and the claim is not patent eligible. The analysis above applies to all statutory categories of invention including independent claim 11.
Furthermore, the dependent claims 2-10, and 12-20 do not resolve the issues raised in the independent claims. The dependent claims 2-10, and 12-20 are directed towards using licensed computer as laptop, cell phone, iPad and owned by a business carrying workers’ compensation insurance, third party administrator, programming for box detection, headnote detection, checkbox detection, edge detection and document type classification.
These limitations are also part of the abstract idea identified in system claim 1, and are similarly rejected under same rationale.
Accordingly, the dependent claims 2-10 and 12-20 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Claim Rejections - 35 USC § 103
The following is a quotation of AIA 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, 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 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 1-20 are rejected under 35 U.S.C. 103 (a) as being unpatentable over Kinney et al (US 2015/0106129 A1) in view of Drennan (US 2017/0039656 A1)
Ref claim 1, Kinney discloses a system for automatically analyzing information
related to a workers’ compensation claim and for providing a case analysis report, said system (para [0017-18], Fig. 1; via claim/insurance policy, such as workers’ compensation...the system 100 includes a rules driven claim processing engine 150
about insurance claims…[0021], via devices…) comprising the steps of:
A. at least one licensed user computer, said licensed user computer programmed to: a. upload via a computer network documents and data related to a workers' compensation claim, b. download via said computer network said case analysis report comprising analysis and recommended plan of action regarding said workers' compensation claim (para [0022]; via claim processing engine 150, store information into and/or retrieve information from the data storage 110...claim processing engine to generate predictive model... by transmitting an electric file to a claim handler 160, a client device, an insurance agent or analyst platform, an email server, workflow management system, etc... with the insurance claim...),
B. at least one server computer to receive said documents and data related to a workers' compensation claim, said at least one server computer (para [0021-22], comprising programming for:
a. [[ a pdf/image text extractor for receiving said uploaded documents and data from said licensed user computer]],
b. a checklist data provider for providing a criteria checklist to be compared against said documents and data (para [0041]; via the claim identifier 502...particular data elements in Fig. 5...type of information …claim database 500… ),
c. an information identifier for comparing said checklist to said uploaded documents and data to generate identified text (para [0041]; via the claim identifier 502...with an insurance policy...data elements are in fig. 5....identified elements... [0042]; via filters to help identify which claims…claims are handles via the expedited workflow…),
d. a natural language processor for receiving said identified text and generating
text with maximum probability score (para [0054]; via the computer system 800 associated with predictive model to Fig. 8 ...to insurance claim workflows and /or handlers ...[0028]; via the processor 310/a storage device 330...receive text input data...a text mining result database 500 be updated by the processor 310...plurality of insurance applications...[0029]: via the programs 312, 314/peripheral devices…),
e. an issue identifier for receiving said text with maximum probability score and for generating possible issues (para [0041]; via the claim identifier 502 ...with an insurance policy ...[0044]; via the subset of claims compensability issues …),
f. an issue analyzer for receiving said possible issues and for generating an analyzed decision and said case analysis report (para [0044]; via the subset of claims compensability issues ... [0052]; via a computer system incorporate a “predictive model”…trained with historical transaction data…), and
g. a decision data model for receiving said analyzed decision and for storing said analyzed decision for future analysis (para [0070]; via the rules driven claim processing engine 901 uses a predictive model/claim handlers…[0075]; via the predictive model 1110 include neural networks.…), and
C. utilizing said at least one licensed computer to download via said computer network said case analysis report comprising analysis and recommended plan of action regarding said workers' compensation claim (para [0075]; via the predictive model 1110 include neural networks...the specific data and outcomes analyzed [implied analysis report and plan]…).
Kinney does not explicitly disclose a pdf/image text extractor for receiving said uploaded documents and data from said licensed user computer.
However, Drennan being in the same field of invention discloses a pdf/image text extractor for receiving said uploaded documents and data from said licensed user computer (para [0016-19], Fig. 1; via an enterprise to analyze or mine large amount of data, such as text data received from various sources...an insurance company...insurance claim text files...the text mining platform 150 associated with a personal computer [PC], laptop, server, database ... associated with business organization or an insurance provider…).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention was made to modify the features mentioned by Kinney to include the disclosures as taught by Drennan to facilitate for analyzing insurance claim text files with text mining platform 150.
Ref claim 2, Kinney discloses the system as in Claim 1, wherein said at least one licensed computer is a laptop computer (para [0019-20]; via claim processing engine 150 associated with personal computer [PC], laptop computer, an enterprise server, a server farm and/or database ...with an insurance provider...facilitate the assignment of insurance claims to claim handlers 160…).
Ref claim 3, Kinney discloses the system as in Claim 1, wherein said at least one licensed computer is a cell phone (para [0019-20]; via claim processing engine 150 associated with personal computer [PC], laptop computer, an enterprise server, a server farm and/or database ...with an insurance provider...facilitate the assignment of insurance claims to claim handlers 160…).
Ref claim 4, Kinney discloses the system as in Claim 1, wherein said at least on licensed computer is an iPad® (para [0019-20]; via claim processing engine 150 associated with personal computer [PC], laptop computer, an enterprise server, a server farm and/or database ...with an insurance provider...facilitate the assignment of insurance claims to claim handlers 160…).
Ref claim 5, Kinney discloses the system as in claim 1, wherein said at least one licensed computer is owned by a business carrying workers’ compensation insurance (para [0016]; via an enterprise analyze or mine large amount of data/text data from various sources... an insurance company analyze insurance claim text files to look for the patterns of factors…).
Ref claim 6, Kinney discloses the system as in Claim 1, wherein said at least one licensed computer is owned by third party administrator (para [0019]; via the text mining platform 150...the administrator define terms…).
Ref claim 7, Kinney discloses the system as in Claim 1, wherein said at least one server computer further comprises programming for box detection (para [0058]; via the indeterminate data…computer programmed to perform natural language processing… to identify and extract information from narrative text files/to detect key words in text files [implied box detection]…).
Ref claim 8, Kinney discloses the system as in Claim 1, wherein said at least one server computer further comprises programming for headnote detection (para [0058]; via the indeterminate data…computer programmed to perform natural language processing… to identify and extract information from narrative text files//text file notes [implied headnote detection]…).
Ref claim 9, Kinney discloses the system as in Claim 1, wherein said at least one server computer further comprises programming for checkbox detection (para [0058]; via the indeterminate data…computer programmed to perform natural language processing… to identify and extract information from narrative text files…to detect key words in the text files…narrative text file notes…).
Ref claim 10, Kinney discloses the system as in Claim 1, wherein said at least one server computer further comprises programming for edge detection and document type classification (para [0058]; via Ex. of the indeterminate data sources 810/for document images, for text files [e.g., claim handlers’ notes]…computer programmed to perform natural language processing… to identify and extract information from narrative text files…to detect key words [implied document type…] in the text files…).
Claim 11 recites similar limitations to claim 1 and thus rejected using the same art and rationale in the rejection of claim 1 as set forth below.
Claims 12-20 are rejected as per the reasons set forth in claims 2-10 respectively.
Response to Arguments
Applicant's Arguments/Remarks filed on 12/18/2025 have been fully considered and they are deemed to be non-persuasive:
Applicant's arguments filed with respect to the 35 USC 101 rejection of the previous action have been fully considered but they are not persuasive.
Applicant's arguments are similar/same to previous arguments already submitted and addressed on the last office action mailed on May 22, 2025.
Applicant argues with same comments that “In response, Applicant has noted that Examiner did not specifically comment on claim 1 as it relates to the 35 USA 101 rejection…be allowable.”
In addition to 101 rejections Applicant noted same about 103 rejections with applied prior arts.
In response:
Examiner respectfully disagrees. Updated claim analysis as a whole including amended features are provided above/again based on the latest Patent Eligibility Guidance [2019-PEG>Step 2A-Prong 1 & Prong 2-Step-2B].
Applicant-REMARKS:
Claim Rejections - 35 USC 101:
Applicant argued with same/similar comments only that, “Examiner has rejected Claims 1-20 under 35 USC 101 and has stated that. The claimed invention directed to non-statutory subject matter. In particular, claims are directed to a judicial exception (abstract idea) without significantly more.
In response, Applicant has noted that Examiner did not specifically comment on Claim 1 as it relates to the 35 USC 101 rejection. Applicant respectfully submits that Claim 1 should therefore be allowable as well as dependent claims 2 - 10. Similarly Claims 11 - 20 should likewise be allowable.”
IN RESPONSE: Examiner noted the Applicant’s same comments as before.
However, claim analysis is done again as above with independent claim 1(exemplary), and then included independent claim 11 with other dependent claims 2-10, and 12-20.
B. Claim Rejections - 35 USC 103:
Applicant argued same as before, in substance that, “Examiner has rejected Claims 1 - 20 under 35 U.S.C. 103 (a) as being unpatentable over Kinney et al (US 2015/0106129 Al) in view of Drennan (US 2017/0039656 Al).
Applicant respectfully disagrees. Specifically, Applicant asserts that neither Kinney or Drennan, alone or in combination, show at least one server computer accessible via said computer network, said at least one server computer programmed to receive said documents and data related to a workers' compensation claim, said at least one server computer comprising programming for:
a pdf/image text extractor, b…., c. …, d. …, e. …, f…, and g. a decision data… for future analysis.”
IN RESPONSE: Examiner disagrees with Applicant’s assertions:
However, Kinney discloses (obviously) inview of Drennan, the above comments: “show at least one server computer accessible via said computer network,…” by (para [0021]; via devices…the rules driven claim processing engine 150…may exchange information via any communication network which may be one or more of a LAN, MAN,WAN,PSTN, WAP, IP network…[0022]; via the rules driven claim processing engine 150/by transmitting electric file to a claim handler 160, a client device…analyst platform, an email server [implied server computer],etc.,…); and by
Drennan being in the same field of invention discloses a pdf/image text extractor for receiving said uploaded documents and data from said licensed user computer (para [0016-19], fig. 1; via an enterprise to analyze or mine large amount of data, such as text data received from various sources...an insurance company...insurance claim text files...the text mining platform 150 associated with a personal computer [PC], laptop, server, database ... associated with business organization or an insurance provider…).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention was made to modify the features mentioned by Kinney to include the disclosures as taught by Drennan to facilitate for analyzing insurance claim text files with text mining platform 150.
It is to be noted that applicant essentially has not argued the claims, but only with superficial arguments presented that have been addressed.
However, the presented arguments are generally not presented when they fail to present any reasons why the rejection should not stand.
CONCLUSION
The prior arts made of record and not relied upon are considered pertinent to applicant's disclosure:
McDole et al (US 11373400 B1) discloses System for image processing to present data in augmented reality.
Albert et al (US-20200074558-A1) discloses Claims insight factory utilizing a data analytics predictive model.
EPPLER et al (CA-3025915-A1A1) discloses System and Interfaces for Managing Workplace Events.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HATEM M. ALI whose telephone number is (571) 270-3021, E-mail: Hatem.Ali@USPTO.Gov and FAX (571)270-4021. The examiner can normally be reached Monday-Friday from 9:00 AM to 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ABHISHEK VYAS can be reached on (571) 270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HATEM M ALI/
Examiner, Art Unit 3691