DETAILED ACTION
Applicant' s response, filed 29 December 2025, has been fully considered. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 29 December 2025 has been entered.
Claim Status
Claims 1-17 are pending and examined herein.
Claims 1-17 are rejected.
Claim 2 is objected to.
Drawings
The objection of the drawings for containing colored figures in Office action mailed 25 June 2025 is withdrawn in view of the replacement drawings received 29 December 2025. The drawings received 29 December 2025 are accepted.
Claim Objections
Claims 2 is objected to because of the following informalities: claim 2 recites “the likelihood of inpatient hospital visits” in line 2 of the claim but should read “a likelihood of inpatient hospital visits”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
112/b
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 8, 9, and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites “the respective risk score” and “the respective health condition” which renders the metes and bounds of the claim indefinite. The indefiniteness arises because it is not clear if just one risk score is being referred to by “the respective risk score” and if one health condition is being referred to by “the respective health condition” to represent the likelihood (if one risk score and one health condition is being referred to it is not clear which risk score or health condition is being referred to) or if the claim means to further limit the risk score for each health condition. Further, claims 8 and 16 recite “the respective risk score” which renders the metes and bounds of the claim indefinite because it is unclear if just one risk score is being referred to or if the claim means to further limit each risk score for each health condition. The specification does not provide a clear and precise definition of the limitation, nor would one skilled in the art recognize the metes and bounds of said limitation. Dependent claim 9 is further rejected by virtue of its dependency on a rejected claim without alleviating the indefiniteness. For the sake of furthering examination, these claims are interpreted to further limit the risk score for each health condition.
112/d
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 17 does not further limit claim 15 because claim 15 already requires a first (and second) set of models applied to a first (and second) group of feature sets to predict the first (and second) score of the first (and second) condition of the patient. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
(Step 1)
Claims 1-11 and 13-17 fall under the statutory category of a process and claim 12 falls under the statutory category of a machine.
(Step 2A Prong 1)
Under the BRI, the instant claims recite judicial exceptions that are an abstract idea of the type that is in the grouping of a “mental process”, such as procedures for evaluating, analyzing or organizing information, and forming judgement or an opinion. The instant claims further recite judicial exceptions that are an abstract idea of the type that is in the grouping of a “mathematical concept”, such as mathematical relationships and mathematical equations.
Independent claims 1 and 12 recite mental processes of “extracting data items…”, “aggregating one or more of the data items…”, and “generating a report that indicates a health care plan for the respective patient based on the total health score in relation to a particular age group…”.
Independent claims 1 and 12 recite mathematical concepts of “applying one or more machine learning models to the one or more feature sets to predict a respective risk score for the respective health condition for a respective patient…” and “computing a total health score based on the predicted respective risk score for each health condition for the respective patient”.
Dependent claim 3 recites a mathematical concept of “applying the respective machine learning model for the respective health condition to the one or more feature sets to predict the respective risk score for the respective health condition for a respective patient”. Dependent claim 6 recites a mental process of “aggregating the one or more of the data items into one or more feature sets further based on selecting…”. Dependent claim 8 recites mathematical concepts of “performing steps of inversion, scaling to 0-100, and normalization by age, on the respective score, for generating the report”. Dependent claim 10 recites a mathematical concept of “calculating correlation between the respective score for each health condition and the total health score, while generating the report”. Dependent claim 13 recites a mathematical concept of “training the one or more machine learning models by performing risk classification analysis on the data items…”. Dependent claim 14 recites mathematical concepts “applying a first set of one or more machine learning models to the one or more feature sets to predict a first risk score…”, “applying a second set of one or more machine learning models, distinct from the first set of one or more machine learning models, to the one or more feature sets to predict a second risk score…”, and “computing the total health score based at least on the first risk score and the second risk score…”. Dependent claim 15 recites mathematical concepts of “applying a first set of one or more machine learning models to a first group of one or more features…”, “applying a second set of one or more machine learning models, distinct from the first set of one or more machine learning models, to a second group of one or more feature sets…”, and “computing the total health score based at least on the first risk score and the second risk score…”.
The claims recite steps of organizing data as “extracting data items…”, “aggregating one or more of the data items…”, and the claims recite a step of analyzing/evaluating data and making judgments as “generating a report that indicates a health care plan for the respective patient based on the total health score in relation to a particular age group…”. The human mind is capable of organizing data, analyzing/evaluating data and making judgments. The claims recite mathematical concepts of mathematical calculations of applying machine learning models to features to predict a respective risk score (such as a gradient boosted classifier as shown in [0014], a gradient boosted tree model that outputs calibrated likelihoods as shown in [0012], or a gradient-boosted tree classifier as shown in [0014]) which intake numerical values for features and output numerical values representing risk scores, computing a total health score based on respective risk scores which encompasses intaking respective risk score numerical values and outputting a total health score, performing mathematical operations of inversion, scaling, and normalization on numerical data, calculating correlations, and training machine learning models by performing risk classification analysis which is a series of mathematical calculations to tune the parameters of the model using training data. Dependent claims 2, 4, 5, 7, 9, 11, 16, and 17 further limit the mental process/mathematical concept recited in the independent claim but do not change their nature as a mental process/mathematical concept. Thus, claims 1-17 recite abstract ideas.
(Step 2A prong 2)
Claims found to recite a judicial exception under Step 2A, Prong 1 are then further analyzed to determine if the claims as a whole integrate the recited judicial exception into a practical application or not (Step 2A, Prong 2). Integration into a practical application is evaluated by identifying whether there are any additional elements recited in the claim and evaluating those additional elements to determine whether they integrate the exception into a practical application.
The additional element in claims 1 and 12 of using a generic computer to perform judicial exceptions does not integrate the judicial exceptions into a practical application because this is simply applying the judicial exception to a generic computer without an improvement to computer technology. This additional element only interacts with the judicial exceptions by utilizing the computer as a tool to perform the judicial exceptions.
The additional element in claims 1 and 12 of outputting data (displaying data) does not integrate the judicial exceptions into a practical application because this is a step of insignificant extra solution activity of outputting data. This additional element only interacts with the judicial exceptions by outputting the solution of the judicial exceptions.
Thus, the additional elements do not integrate the judicial exceptions into a practical application.
(Step 2B)
Claims found to be directed to a judicial exception are then further evaluated to determine if the claims recite an inventive concept that provides significantly more than the judicial exception itself (Step 2B). The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because:
The additional element in claims 1 and 12 of using a generic computer to perform judicial exceptions is conventional see MPEP 2106.05(b) and MPEP 2106.05(d)(II).
The additional element in claims 1 and 12 of outputting data (displaying data) is conventional see MPEP 2106.05(b) and MPEP 2106.05(d)(II).
The combination of additional elements in claims 1 and 12 of using a generic computer and outputting data is conventional see MPEP 2106.05(b) and MPEP 2106.05(d)(II).
Thus, the additional elements are not sufficient to amount to significantly more than the judicial exceptions because they are conventional alone and in combination.
Response to Arguments
Applicant's arguments filed 29 December 2025 have been fully considered but they are not persuasive.
Applicant argues claim 1 does not recite a mental process because the steps are not practically performed in the human mind (Reply p. 9). Applicant argues a rejection based on a reasoning that the fact pattern is different between example 39 and claim 1 of this application is improper because such analysis ignores the logic supporting the patent eligibility as laid out by example 39 (Reply p. 9-10).
This argument has been fully considered but found to be not persuasive. As stated above, claim 1 recites mental processes of “extracting data items…” and “aggregating one or more of the data items…” which fall under a mental process of organizing data items and “generating a report that indicates a health care plan for the respective patient based on the total health score in relation to a particular age group…” which falls under a mental process of analyzing/evaluating data and making a judgment. The human mind is capable of organizing abstract data, analyzing/evaluating abstract data, and making judgments utilizing abstract data. It is further noted the data in example 39 are digital images which is data that is not abstract because they only exist in a computer environment and this differs than the data used in the instant claims which may be numerical data which is abstract. Example 39 is patent eligible because the claim in example 39 does not recite any judicial exceptions. Therefore, example 39 has a different fact pattern than the instant claims because the instant claims recite judicial exceptions (i.e., extracting data items, aggregating one or more data items…, applying one or more machine learning models (in light of the specification the BRI of this model encompasses models that are mathematical calculations as described above)…, computing a total health score based on the predicted respective risk score…, generating a report that indicates a health plan…). The MPEP states at 2106.04(a)(2)(I)(C) “There is no particular word or set of words that indicates a claim recites a mathematical calculation. That is, a claim does not have to recite the word "calculating" in order to be considered a mathematical calculation. For example, a step of "determining" a variable or number using mathematical methods or "performing" a mathematical operation may also be considered mathematical calculations when the broadest reasonable interpretation of the claim in light of the specification encompasses a mathematical calculation”. The BRI of this model encompasses a model which is a mathematical calculation which intakes numeric values to calculate numerical likelihoods. The model is a mathematical calculation (i.e., not just based on a mathematical calculation). It is noted that the rejection of claim 1 did not rely on the features in dependent claims 5, 9, and 11 to reject claim 1. These dependent claims were addressed to show what a “machine learning model” in the independent claim encompasses and further show that the machine learning model encompasses mathematical concepts of mathematical calculations.
Applicant argues claim 1 is integrated into a practical application because the claimed method provides an improvement for generating health care plans (Reply p. 11-12). Applicant argues claim 1 recites elements that improve on conventional computer systems and claim 1 recites a specific combination of claim features in a particular order, contains an inventive concept, which constitutes to significantly more than judicial exceptions (Reply p. 13)
This argument has been fully considered but found to be not persuasive. The MPEP states at 2106.05(a) “It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements… In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception”. The determination of an improvement to technology has two steps, the identification of additional elements (which define the technology) and the evaluation of the additional elements to determine if the improvement is realized in the additional elements either by the additional elements themselves or the additional element in combination with the judicial exception (i.e. the interaction between the judicial exceptions and the additional elements). The claims recite additional elements of a generic computer and outputting data (i.e., displaying data). The additional element of the generic computer interacts with the judicial exceptions by utilizing a computer as a tool to perform the judicial exceptions. The additional element of displaying data interacts with the judicial exceptions by outputting the result of the judicial exceptions. Therefore, an improvement is not provided by the additional elements or by the additional elements in combination with the recited judicial exceptions. The argued improvement in generating a health care plan is provided by the judicial exceptions alone which does not constitute as an improvement to technology because this improvement is not realized in the additional elements of the claim. Therefore, the claims do not provide an improvement which is provided by the additional elements of a computer or displaying data and do integrate the judicial exceptions into a practical application nor amounts to significantly more.
Applicant points to Ex parte Desjardins (Appeal 2024-000567) which determined that a claim reciting “adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task” constitutes an improvement to how the machine learning model itself operates, and not for example, the identified mathematical calculation and argues that similarly claim 1 constitutes an improvement to how machine learning models operate (Reply p. 12-13).
This argument has been fully considered but found to be not persuasive. Ex parte Desjardins (Appeal 2024-000567; precedential) has a different fact pattern than the instant claims because the claims at issue in Ex parte Desjardins recites a specific process of training machine learning models to preserve performance on earlier tasks as it learns new ones, directly addressing the technical problem of catastrophic forgetting in continual learning systems. Further, the claims at issue in Ex parte Desjardins were found to reflect an improvement of using less of their storage capacity and enabling the reduction of system complexity which constituted as an improvement to how the machine learning model itself operates, and not, for example, the identified mathematical calculation. This fact pattern differs from instant claim 1 which utilizes machine learning models to predict a respective risk score for the respective health condition for a respective patient and wherein the machine learning models were previously trained by performing risk classification analysis which do not address technical problems in machine learning models themselves but rather addresses an abstract idea of predicting a respective risk score for a respective health condition for a respective patient. Therefore, instant claim 1 does not provide an improvement in a technical problem of the machine learning model itself (how it operates) and does not integrate the judicial exceptions into a practical application.
Conclusion
No claims are allowed.
Claims 1-17 are free of the prior art for the reasons discussed in the Office action mailed 25 June 2025.
This Office action is a Non-Final action. A shortened statutory period for reply to this action is set to expire THREE MONTHS from the mailing date of this action.
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/J.E.H./Examiner, Art Unit 1685
/KAITLYN L MINCHELLA/Primary Examiner, Art Unit 1685