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 .
Response to Amendment
Applicant's arguments filed 11/11/25 have been fully considered but they are not persuasive.
In re pgs. 10-24 applicant argues the USC 101 rejection.
In response, see amended USC 101 rejection below.
Response to Arguments
It is well-settled that collecting and analyzing information by steps people go through in their minds or by mathematical algorithms, without more, are mental processes in the abstract-idea category. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016); see SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) ("[S]electing certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis" is abstract); Intellectual Ventures I LLC v. Cap. One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) ("Organizing, displaying, and manipulating data of particular documents" is abstract.); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096-97 (Fed. Cir. 2016) (compiling and combining disparate data sources to generate a full picture of a user's activity, identity, frequency of activity, and the like in a computer environment to detect potential fraud does not differentiate a process from ordinary mental processes); In re Killian, 45 F.4th 1373, 1379 (Fed. Cir. 2022) ("These steps can be performed by a human, using 'observation, evaluation, judgment, [and] opinion,' because they involve making determinations and identifications, which are mental tasks humans routinely do").
The claims amount to data analysis/manipulation and using some form of AI as a tool. The transformation of data, or the mere "manipulation of basic mathematical constructs [i.e.,] the paradigmatic 'abstract idea,"' is not a transformation sufficient to integrate a judicial exception into a practical application. CyberSource v. Retail Decisions, 654 F.3d 1366, 1372 n.2 (Fed. Cir. 2011) (quoting In re Warmerdam, 33 F.3d 1354, 1355, 1360 (Fed. Cir. 1994)).
Applicant argues claims do not recite an abstract idea.
In response, the claims amount to data analysis/manipulation and using some form of AI as a tool.
There are no substantial details of AI being claimed and using generic computer components such as memory, device, processor does not make a claimed invention statutory.
Normalizing, aggregating, analyzing, computing and generating/updating/updating models are an abstract idea under Prong One and are mental processes.
Adding labels such as demographic labels to data records does not make a claimed invention statutory.
Claiming AI on a high level can amount to using a black box without specifying any real details of how the AI operates or what’s in the black box. The claims need to specify the technical details of the AI.
Although the claims may specify an improvement they are only improving the abstract idea not a computer.
Training a model based on data amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f).
Using a trained machine learning model to e.g., predict… amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f).
Using AI to predict amounts to a mental process in the same way that a human can predict the weather with or without a computer and prediction does not have to be correct or accurate.
"The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea." MPEP § 2106.04(a)(2).III. "Accordingly, the "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions." Id. For the purposes of this abstract idea, "[t]he courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation."
If the application claims the inventive concept (from the disclosure) and the claims are drawn to the specifics of e.g., learning or training, such as the how and for what purpose the training occurs, the claims may be eligible/statutory. If the generic computer or processor is merely "used for", "applied to" or "using" an AI learning/training algorithm, process or equivalent without claimed details, it will most often fall into the "Mere Instructions to Apply an Exception" as set forth in MPEP 2106.05(f). When a claim merely recites only the idea of a solution or outcome, i.e. the claim fails to recite details of how a solution to a problem is accomplished, as described in 2106.05(f)(1), it is rejected as ineligible. Also, use of an existing AI or learning technique or method, set forth to be WURC (in accordance with MPEP 2106.05(d)), may also prove to be ineligible.
If the claims are merely "using" existing modeling techniques then AI/modeling is not the inventive concept but is merely a tool used to manipulate data. This can be a process that was previously performed by "human agents" and may now be automated. Modeling, learning, training, "updating" and/or "dynamically modifying" are insignificant computer activities, shown to be WURC in accordance with MPEP 2106.05(d)(II)(iii), for instance.
The applicant argues mathematical concepts cannot be a mental process.
In response see e.g., 101 Example 47 claim 2 specifies: a method of using an artificial neural network (ANN) comprising:
(a) receiving, at a computer, continuous training data;
(b) discretizing, by the computer, the continuous training data to generate input data;
(c) training, by the computer, the ANN based on the input data and a selected training algorithm to generate a trained ANN, wherein the selected training algorithm includes a backpropagation algorithm and a gradient descent algorithm;
(d) detecting one or more anomalies in a data set using the trained ANN;
(e) analyzing the one or more detected anomalies using the trained ANN to generate anomaly data; and
(f) outputting the anomaly data from the trained ANN and was found to be ineligible.
step (b) recites discretizing continuous training data to generate input data by processes including rounding, binning, or clustering continuous data, which may be practically performed in the human mind using observation, evaluation, judgment, and opinion. For example, the claimed discretizing of continuous data encompasses observing continuous data and performing an evaluation, such as rounding the continuous data;
steps (b), (d), and (e) fall within the mental process grouping of abstract ideas, and steps (b) and (c) fall within the mathematical concepts grouping of abstract ideas. Limitations (b)-(e) are considered together as a single abstract idea for further analysis
The applicant argues present claims are similar to example 39.
In response, ex 39 specifies only additional elements and applying one or more transformations to each digital facial image including mirroring, rotating, smoothing or contrast reduction to create a modified set of digital facial images.
The applicant argues using a model is statutory.
In response, using a trained machine learning model to predict… (Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f) – Examiner’s note: high level application of a previously trained model to make a prediction).
The applicant argues the claims are not a mental process.
In response, the courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea." MPEP § 2106.04(a)(2).III. "Accordingly, the "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions." Id. For the purposes of this abstract idea, "[t]he courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation.
Applicant argues the claims are integrated into a practical application.
In response, in order for an abstract idea to be integrated into a practical application, the improvement in a given technical field must be a byproduct of the additional elements. An inventive concept "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself”, as stated in MPEP 2106.5 (1). Applicant should state where within the claim limitations such an improvement is made.
Practical applications must be additional elements, not abstract ideas. Prong Two: evaluate whether the claim recites additional elements that integrate the exception into a practical application of the exception. "It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception." paragraph is on 2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field [R-07.2022].
Limitations that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using 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 - see MPEP 2106.05(e) and Vanda Memo.
In re pgs. 19-23 the applicant argues the claims are significantly more.
In response, collecting data and using models does not amount to significantly more. For example machine learning model (Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)); training a machine learning model using the data (Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f));
using one or more trained models to predict… (Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f) – Examiner’s note: high level application of a previously trained model to make a prediction).
All arguments have been addressed above or below in the body of the edited rejections.
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 19-38 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: claims 19-38 are directed to either a process, machine, manufacture or composition of matter.
With respect to claims 19, 26, 32:
2A Prong 1:
normalizing the one or more data records (mental process – user can manually perform raw thinking in their head as a first stage and then using paper and pen to perform mathematical operation);
aggregating, [using an aggregation engine], the one or more normalized data records, based on related attributes of the one or more data records (mental process – user can manually perform raw thinking in their head as a first stage and then using paper and pen to perform mathematical operation);
analyzing, the one or more aggregated data records and one or more data records stored in the one or more data sets (Abstract idea of analyzing data. Mental process. A human- mind with pen and paper can analyze, generate and/or determine data)
computing additional data (mental process – user can manually perform raw thinking in their head as a first stage and then using paper and pen to perform mathematical operation);
generating one or more intermediate models based on the computed additional data (mental process use can model data and/or generate models with assistance of pen and paper);
Generate predictions (using AI to predict amounts to a mental process in the same way that a human can predict the weather with or without a computer);
generating one or more models based on the one or more aggregated data records (mental process use can model data and/or generate models with assistance of pen and paper);
building at least one negative training set based on codes associated with treatment data (Abstract idea of generating data. Mental process. A human- mind with pen and paper can generate and/or determine data)
evaluating the one or more trained models based on a comparison between the training sets and known values (encompasses mental observations or evaluations, e.g., a computer programmer’s mental identification of data).
2A Prong 2: This judicial exception is not integrated into a practical application.
Additional elements:
Processor, memory devices, modeling system, (computer component is recited at a high level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component);
obtaining one or more data records (mere data gathering and output recited at a high level of generality - insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g));
using an aggregation engine (provides nothing more than mere instructions to implement an abstract idea on a generic computer; engine is used to generally apply the abstract idea without limiting how the engine functions);
using a pre-computation engine (provides nothing more than mere instructions to implement an abstract idea on a generic computer; the engine is used to generally apply the abstract idea without limiting how the engine functions);
Claim 32 readable storage medium for storing (Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g));
updating one or more intermediate models (insignificant extra solution activity; Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f));
training the one or more models using training sets based on at least one of treatment data, publication data, or claims data (Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f) – Examiner’s note: high level recitation of training a machine learning model with previously determined data);
iterative updating the one or more models based on updated training sets, known data associated with the data records and the at least one negative training set(insignificant extra solution activity; the court finds that this training is generic and summarily states the process of the training a model is required for any e.g., machine learning model. Using a machine learning technique necessarily includes an iterative step training step; iterative training using selected training material and/or dynamic adjustments based on changes are incident to the very nature of machine learning);
providing the one or more models for searching to determine a specialty associated with the professional (reads on transmitting/receiving, adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g));
displaying results of the searching on a graphical user interface (insignificant extra solution activity; computer component is recited at a high level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component).
2B: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Additional elements:
Processor, memory, modeling system, (computer component is recited at a high level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component);
obtaining one or more data records (mere data gathering and output recited at a high level of generality - insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g));
using an aggregation engine (provides nothing more than mere instructions to implement an abstract idea on a generic computer; engine is used to generally apply the abstract idea without limiting how the engine functions);
using a pre-computation engine (provides nothing more than mere instructions to implement an abstract idea on a generic computer; the engine is used to generally apply the abstract idea without limiting how the engine functions);
Claim 32 readable storage medium for storing (Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g));
updating one or more intermediate models (insignificant extra solution activity; Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f));
training the one or more models using training sets based on at least one of treatment data, publication data, or claims data (Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f) – Examiner’s note: high level recitation of training a machine learning model with previously determined data);
iterative updating the one or more models (insignificant extra solution activity; the court finds that this training is generic and summarily states the process of the training a model is required for any e.g., machine learning model. Using a machine learning technique necessarily includes an iterative step training step; iterative training using selected training material and/or dynamic adjustments based on changes are incident to the very nature of machine learning);
providing the one or more models for searching to determine a specialty associated with the professional (reads on transmitting/receiving, adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g));
for displaying results of the searching on a graphical user interface (insignificant extra solution activity; computer component is recited at a high level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component).
Further, the obtaining step was considered to be extra-solution activity in Step 2A Prong 2, and thus it is re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field. The court decisions cited in MPEP 2106.05(d)(II) indicate that merely 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). Thereby, a conclusion that the claimed obtaining step is well-understood, routine, conventional activity is supported under Berkheimer. The claim is not patent eligible.
20, 27, 33. The data-driven dynamic modeling system device of claim 19, wherein: the one or more data records contain domain specific data (non-functional descriptive material); and the related attributes of the one or more data records are associated with the domain (mental process of modeling with assistance of pen and paper).
21, 28, 34. The data-driven dynamic modeling system of claim 20, wherein the domain specific data includes at least one of medical claim data or prescription drug data (non-functional descriptive material; mental process of modeling with assistance of pen and paper).
22, 29, 35. The data-driven dynamic modeling system of claim 20, wherein the domain specific data includes at least one of Current Procedural Terminology (CPT) codes, Healthcare Common Procedure Coding (HCPCS) codes, or International Statistical Classification of Diseases and Related Health Problems (ICD) codes (non-functional descriptive material; mental process of modeling with assistance of pen and paper).
23, 36. The data-driven dynamic modeling system of claim 19, wherein the computed additional data corresponds to the aggregated data records (mental process of modeling with assistance of pen and paper or mathematical concept of computing).
24, 30, 37. The data-driven dynamic modeling system of claim 19, wherein the training sets include at least one of a positive training set identifying “professional activities” associated with a first specialty or a negative training set identifying professional activities not associated with a second specialty (mental process of modeling with assistance of pen and paper).
25, 38. The data-driven dynamic modeling system of claim 19, wherein the training sets include publications categorized by medical subject heading (MeSH) terms(non-functional descriptive material; mental process of modeling with assistance of pen and paper).
31. The method of claim 26, wherein the training sets include domain specific information (non-functional descriptive material; mental process of modeling with assistance of pen and paper).
33. The non-transitory computer readable medium of claim 32, wherein: the one or more data records contain domain specific data; and the related attributes of the one or more data records are associated with the domain (mental process of modeling with assistance of pen and paper).
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 DAVID R VINCENT whose telephone number is (571)272-3080. The examiner can normally be reached ~Mon-Fri 12-8:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexey Shmatov can be reached on 5712703428. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID R VINCENT/Primary Examiner, Art Unit 2123