DETAILED ACTION
Notice to Applicant
This action is in reply to the filed on 9/4/2025.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-2, 9 and 17 have been amended.
Claims 3 have been cancelled.
Claim 1-2 and 4-21 currently pending and have been examined.
Response to Amendments
The Applicant’s amendments, and cancellation, of the claims as currently submitted have been noted by the Examiner. Said amendments, and cancellation(s), are not sufficient to overcome the rejection previously set forth under 35 U.S.C. §101. As such, said rejection is herein maintained for reasons set forth 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.
Human Interactions Organized
Applicant discloses (Applicant’s Specification, [0001]-[0002]) that through innovation many problems associated with the obtaining and use of HEDIS performance data can been solved by. So a need exists to organize these human interactions through resource allocation optimization using the steps of “displaying results, receiving identifiers, receiving member data, receiving measurement data, determining data structure subsets and thresholds, generating benchmark points and scores, performing analysis, generating annotations, displaying annotations,” etc. Applicant’s method/computer readable medium/apparatus is therefore a certain method of organizing the human activities as described and disclosed by Applicant.
Rejection
Claim(s) 1-2 and 4-21 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim(s) 1, 9 and 17 is/are directed to the abstract idea of “resource allocation optimization,” etc. (Applicant’s Specification, Abstract, paragraph(s) [0003]), etc., as explained in detail below, and thus grouped as a certain method of organizing human interactions. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional computer elements, which are recited at a high level of generality, provide conventional computer functions that do not add meaningful limits to practicing the abstract idea. Accordingly, claims 1-2 and 4-21 recite an abstract idea.
Step 2A Prong 1 – The Judicial Exception
The claim(s) recite(s) in part, method/computer readable medium/apparatus for performing the steps of “displaying results, receiving identifiers, receiving member data, receiving measurement data, determining data structure subsets and thresholds, generating benchmark points and scores, performing analysis, generating annotations, displaying annotations,” etc., that is “resource allocation optimization,” etc. which is a method of managing personal behavior or relationships or interactions between people (social activities, teaching, following rules, instructions). Accordingly, claims 1-2 and 4-21 recite an abstract idea.
Step 2A Prong 2 – Integration of the Judicial Exception into a Practical Application
This judicial exception is not integrated into a practical application because the generically recited additional computer elements (i.e. computing entities, processing elements, memories, network interfaces, transmitters, displays, keypads, receivers (Applicant’s Specification [0058]-[0080]), etc.) to perform steps of “displaying results, receiving identifiers, receiving member data, receiving measurement data, determining data structure subsets and thresholds, generating benchmark points and scores, performing analysis, generating annotations, displaying annotations,” etc. do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer and this is nothing more than an attempt to generally link the product of nature to a particular technological environment. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limit on practicing the abstract idea. Accordingly, the claims are directed to an abstract idea.
Insignificant extra-solution activity
Claim(s) 1-2 and 4-21 recites storing data steps, retrieving data steps, providing data steps, output steps (Bilski v. Kappos, 561 U.S. 593, 610-12 (2010), Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can., 771 F.Supp.2d 1054, 1066 (E.D. Mo. 2011), aff’d, 687 F.3d at 1266), and/or transmitting data step (buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014), Apple, Inc. v. Ameranth, Inc., 842 F.3d 1299, 1241-42 (Fed. Cir. 2016)) that is/are insignificant extra-solution activity. Extra-solution activity limitations are insufficient to transform judicially excepted subject matter into a patent-eligible application (MPEP §2106.05(g)).
Step 2B – Search for an Inventive Concept/Significantly More
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations (i.e. computing entities, processing elements, memories, network interfaces, transmitters, displays, keypads, receivers, etc.) only store and retrieve information and perform repetitive calculations, and these are well-understood, routine, conventional computer functions as recognized by the Symantec, TLI, and OIP Techs. court decisions listed in MPEP § 2106.05(d)(II) (Berkheimer- Court Decisions). These court decisions indicate that mere collection or receipt of data over a network is a well-understood, routine and conventional function when it is claimed in a merely generic manner as it is here. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. Accordingly, the claims are not patent eligible.
Individually and in Combination
The additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The additional elements amount to no more than generic computer components that serve to merely link the abstract idea to a particular technological environment (i.e. computing entities, processing elements, memories, network interfaces, transmitters, displays, keypads, receivers, etc.). At paragraph(s) [0058]-[0080], Applicant’s specification describes conventional computer hardware for implementing the above described functions including “computing entities, processing elements, memories, network interfaces, transmitters, displays, keypads, receivers,” etc. to perform the functions of “displaying results, receiving identifiers, receiving member data, receiving measurement data, determining data structure subsets and thresholds, generating benchmark points and scores, performing analysis, generating annotations, displaying annotations,” etc. The recited “computing entities, processing elements, memories, network interfaces, transmitters, displays, keypads, receivers,” etc. does/do not add meaningful limitations to the idea of beyond generally linking the system to a particular technological environment, that is, implementation via computers. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. Therefore, claims 1-2 and 4-21 do not amount to significantly more than the underlying abstract idea of “an idea of itself” (Alice).
Dependent Claims
Dependent claim(s) 2, 4-8, 10-16 and 18-21 include(s) all the limitations of the parent claims and are directed to the same abstract idea as discussed above and incorporated herein.
Although dependent claims 2, 4-8, 10-16 and 18-21 add additional limitations, they only serve to further limit the abstract idea by reciting limitations on what the information is and how it is received and used. Dependent claims 2, 4-8, 10-16 and 18-21 merely describe physical structures to implement the abstract idea. These information and physical characteristics do not change the fundamental analogy to the abstract idea grouping of certain method of organizing human interactions, and when viewed individually or as a whole, they do not add anything substantial beyond the abstract idea. Furthermore, the combination of elements does not indicate a significant improvement to the functioning of a computer or any other technology. Therefore, the claims when taken as a whole are ineligible for the same reasons as independent claim(s) 1, 9 and 17.
Response to Arguments
Applicant’s arguments filed 9/4/2025 with respect to claims 1-2 and 4-21 have been fully considered but they are not persuasive. Applicant’s arguments will be addressed herein below in the order in which they appear in the response filed 9/4/2025.
Applicant’s arguments filed on 9/4/2025 with respect to claims 1-2 and 4-21 have been fully considered but are moot in view of the new ground(s) of rejection.
Applicant argues that (A) the Applicant’s claimed invention is directed to statutory matter.
101 Responses
As per Applicant’s argument (A), Applicant’s remarks with regard to the statutory nature of Applicant’s claimed invention are addressed above in the Office Action.
Rehash
Applicant's remarks and arguments merely rehash issues addressed in the Office Action mailed 6/4/2026 and incorporated herein.
Applicant’s Amendments
Applicant amended claims recite “determining a compliant member data structure subset containing only those member data structures…,” “determining whether the compliant member data structure subset associated with the measure data structure contains at least a threshold number of compliant member data structures,” “generating, based at least in part on the member data structures of the compliant member data structure subset, (1) a number of benchmark points….” These are information processing steps that are part of Applicant’s abstract idea and does not move Applicant’s invention into eligible subject matter. Applicant’s argument is not persuasive.
2019 PEG Neither Limiting nor Exhaustive
Further, the enumerated examples in the 2019 PEG are neither limiting nor exhaustive. They are exemplary. Applicant’s argument is not persuasive.
Improvements – Advantageous over previous methods
The test for patent-eligible subject matter is not whether the claims are advantageous over previous methods. Even if Applicant’s claims provide advantages over manual collection of data, Applicant’s claims no technological improvement beyond improvement beyond the use of generic computer components/a generic computer network. Applicant’s argument is not persuasive.
Improvements
Despite recitation of computing entities, processing elements, memories, network interfaces, transmitters, displays, keypads, receivers, Applicant’s claims are, at bottom, directed to the collection, organization, grouping and storage of data using techniques such as information processing. The computing entities, processing elements, memories, network interfaces, transmitters, displays, keypads, receivers recited in Applicant’s claims are merely tools used for organizing human activity, and are not an improvement to computer technology. This, the claims do not present any specific improvement in computer capabilities. Applicant’s arguments are nothing more than conclusory statements unmoored from specific claim language. Applicant’s argument is not persuasive.
Applicant claims the improvement of “improved process for identifying compliant member data structures and ensuring an adequate number of compliant member data structures are available for a plan or measure to reach a next benchmark level,” “improvement to the identification of optimal allocation of resources that maximize ratings while implementing or focusing a minimal number of measures,” “improved optimal allocation of resources,” etc. It has been held that it is not enough to merely improve a fundamental practices or abstract process by invoking a computer merely as a tool (Affinity Labs. of Texas, LLC v. DIRECTV, LLC, In re TLI Communications LLC Patent Litigation). In Intellectual Ventures I LLC v. Capital One Bank (USA), it was held that “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” was insufficient to render the claims patent eligible. In SAP America, Inc. v InvestPic, LLC it was held that patent directed to “selecting certain information, analyzing it using mathematical techniques, and reporting or displaying results,” are ineligible, and claims focused on an improvement in wholly abstract ideas are ineligible. Further, invocation of “already-available computers that are not themselves plausibly asserted to be in advance…amounts to a recitation of what is well-understood, routine, and conventional” (SAP America, Inc. v InvestPic, LLC). Accordingly, Applicant’s argument is not persuasive.
Integration into a Practical Application
Integration into a practical application requires additional elements or a combination of additional elements in the claims to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that it is more than a drafting effort designed to monopolize the exception (e.g. Enfish, McRO and Vanda) (2019 PEG).
Applicant’s “computing entities, processing elements, memories, network interfaces, transmitters, displays, keypads, receivers” is/are not an additional element(s) that reflects in the an improvement in the functioning of a computer, is/are not an additional element(s) that applies or uses the judicial exception to effect a particular treatment or prophylaxis, is/are not an additional element(s) that effects a transformation or reduction of a particular article to a different state or things, and is/are not an additional element(s) that applies or uses the judicial exception beyond generally linking the use of the judicial exception to a particular technological environment for the reasons explained in the 101 rejection above. Applicant’s “computing entities, processing elements, memories, network interfaces, transmitters, displays, keypads, receivers” is/are merely tools used by Applicant to implement data processing. Data processing is an abstract idea. Applicant’s argument is not persuasive.
Conclusion
Applicant’s amendment necessitated the new ground(s) for rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set for 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 free 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.
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/C. P. C./
Examiner, Art Unit 3683
/ROBERT W MORGAN/Supervisory Patent Examiner, Art Unit 3683