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 .
Status of the Application
Claims 5-6, 8-11, 13, 15, and 19-21 have been examined in this application.
The filling date of this application number recited above is 03-May-2022. Domestic Benefit/National Stage priority has been claimed for Provisional Application 63/254,246 in the Application Data Sheet, thus the examination will be undertaken in consideration of 11-October-2021, as the priority date, for applicable claims.
No additional information disclosure statement (IDS) has been filed to date.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 20 (and claims 5-6, 8-11, 13, 15, 19, and 21 due to dependency) is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claim recites “a) imposing mandatory non-pharmaceutical interventions”, however the original disclosure does not include definitive support that the invention includes a process to impose mandatory NPIs, rather the mandatory isolation was already imposed by the government, as disclosed by Specification:
[0004] “In face of this challenge governments imposed mandatory isolations (e.g. work/meeting/circulation restrictions) also known as Non-Pharmaceutical Interventions (NPIs)”;
[00010] “Of course, local government bodies that are imposing mandatory isolations would have to make it legal to avoid them with insurance”;
[00029] “NPIs could be subtle, for example bars and concert halls being mandated by the NYC government not to accept unvaccinated individuals (13)”; and
[00032] “One consequence of IEIP being available to avoid mandatory isolations is that damage claims to governments due to imposing them might be capped to the IEIP premium cost”.
The present invention is gathering data from the outcome of the mandatory isolation, and the original disclosure does not explicitly disclose or suggest how the invention could impose mandatory non-pharmaceutical interventions when it teaches that the government imposes the mandatory isolation. Therefore, the claim fails to comply with the written description requirement, and clarification is required.
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.
Claim 20 (and claims 5-6, 8-11, 13, 15, 19, and 21 due to dependency) is 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.
The claim recites “a) imposing mandatory non-pharmaceutical interventions”, however it is unclear how the claimed method can perform the step of imposing mandatory NPI when the original disclosure teaches that the government mandates the isolation (see 112a rejection above), and the invention is processing data taken from the mandatory isolation. Therefore, the claim is indefinite for failing to particularly point out and distinctly claim the subject matter, and clarification is required.
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 5-6, 8-11, 13, 15, and 19-21 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. The Claims recite an abstract idea, Mental Process, Certain Methods of Organizing Human Activity and/or Mathematical Concepts. 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.
As per Claim 20, the claim recites “An improved method of reducing the spreading of a particular contagious-infectious pathogen, the method comprising:
imposing mandatory non-pharmaceutical interventions;
b) providing an isolation exemption insurance system for insurance policy holders comprising insured individuals, wherein the insured individuals comprise one or more contagious-infectious disease spreaders and one or more injured individuals and the system is configured for balancing rights of the one or more contagious-infectious disease spreaders that are free of unequivocal symptoms and/or unaware of their infectiousness, to selectively avoid the imposed mandatory non-pharmaceutical Interventions, with rights of the one or more injured individuals to be compensated for damages;
c) providing at least one insurer offering an insurance service consisting of an Isolation Exemption Insurance Policy (IEIP) for purchase by the insurance policy holders;
d) providing a spreaders fund associated with the at least one insurer and comprising at least one [entity] for receiving, storing and processing data;
e) defining risk groups comprising at least two insured individuals sharing one or more similar risks according to one or more risks characteristics;
f) gathering disease damage claims of identified injured individuals of each and every risk group of the defined risk groups, wherein the identified injured individuals are infected on a given period of time;
g) storing the gathered disease damage claims related to said contagious-infectious pathogen in the at least one [entity] of the spreaders fund;
h) gathering epidemiological data related to the spreading of said contagious-infectious pathogen;
i) storing the gathered epidemiological data in the at least one [entity] of the spreaders fund;
j) indirectly assessing, on the basis of the stored, gathered disease damage claims in step g) and the stored, gathered epidemiological data in step i), a proportion of disease damages suffered by the identified injured individuals of each and every risk group of the defined risk groups, due to an infection with said contagious-infectious pathogen on the given period of time, that were fault of not identifiable individual spreaders of each and every risk group of the defined risk groups;
k) assessing a disease damage payment that the at least one insurer must make to, or receive from, the spreaders fund associated with the at least one insurer, wherein the assessed disease damage payment is based on the assessed proportion of disease damages in step j); and
i) flowing of the disease damage payment assessed in step k) from the at least one insurer to said at least one spreader fund or from said at least one spreaders fund to the at least one insurer, wherein
said at least one insurer determining IEIP issue premium prices based in the future amount of said disease payments, estimated with their own epidemiological and actuarial methods, and
said IEIP premium prices determining the NPIs individuals don’t want to selectively avoid, hence increasing at least: future vaccination acceptance; recovered status testing; and isolation levels (interactions with other individuals), and, thus, reducing said contagious-infectious pathogen spreading.”
The limitation of the claims recited above, without considering the additional elements (e.g. computer), under its broadest reasonable interpretation (BRI), recites Mental Processes. The method recited above is a process of receiving data, gathering data, storing data, assessing data, and transmitting data. All these steps recited by the claims can be practically performed in the human mind, or by a human using a pen and paper. See MPEP 2106.04(III)(A):
“In contrast, claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include:
• a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016);
• claims to "comparing BRCA sequences and determining the existence of alterations," where the claims cover any way of comparing BRCA sequences such that the comparison steps can practically be performed in the human mind, University of Utah Research Foundation v. Ambry Genetics, 774 F.3d 755, 763, 113 USPQ2d 1241, 1246 (Fed. Cir. 2014);
• a claim to collecting and comparing known information (claim 1), which are steps that can be practically performed in the human mind, Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067, 100 USPQ2d 1492, 1500 (Fed. Cir. 2011); and
• a claim to identifying head shape and applying hair designs, which is a process that can be practically performed in the human mind, In re Brown, 645 Fed. App'x 1014, 1016-17 (Fed. Cir. 2016) (non-precedential).”
Although the claim may recite using a computer to receive and store data, performing a mental process on a generic computer still recite a mental process. See MPEP 2106.04(III)(C):
“Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without a computer").”
Therefore, the claim recites an abstract idea under mental process.
Additionally, the limitation of the claim recited above, under BRI, recites Certain Methods of Organizing Human Activity, specifically under fundamental economic principles or practices and/or commercial or legal interactions. The method recited above is a process of gathering, storing, and assessing information with respect to the insurance policy and fault liability regarding disease damage payments, which is fundamental economic principles or practices. The method may involve interactions to gather and store information from different individuals (e.g. spreader, insurer, risk group, etc.), wherein the information or data is associated with calculating insurance payments, which is commercial or legal interactions, which includes agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. Here, the determination of determining the proportion of disease damages and disease damage payments that each insurer must make are legal obligations, contractual obligations based on the insurance policy and business relations. Therefore, the claim recites an abstract idea under certain methods of organizing human activity.
Additionally, the claim also recites Mathematical Concepts, wherein the method involves calculations. The claim limitations of “indirectly assessing, on the basis of the stored, gathered disease damage claims …” and “assessing a disease damage payment that the at least one insurer must make to, or receive from, the spreaders fund associated with the at least one insurer, wherein the assessed disease damage payment is based on the assessed proportion of disease damages” are mathematical calculations, when the claim is given its broadest reasonable interpretation in light of the specification. The Specification discloses of several mathematical equations or formulas involved in the assessment process (e.g. exemplary payment calculation method in [00078] to [00091]), which may be utilized by the claim’s “assessing” steps. Therefore, the claim recites an abstract idea under mathematical concepts.
This judicial exception is not integrated into practical application. In particular, the claims recite an additional element of “computer” to perform the method recited above by instructing the abstract idea to be performed “by” this generic computer component. As disclosed in Specification [00041]
“Like a skilled person will understand, the computer suitable for carrying out the computer-implemented method of the present invention includes the necessary physical devices for at least receiving, storing and processing data. Like a skilled person will understand, the physical devices may comprise, user interface devices, information gathering devices, information processor or central processing unit (CPU), storage devices, computer-readable [storage] medium, display devices, and the like”,
the computer used for the method is generic computer system available to the public merely applied to perform its basic functionalities (e.g. receive and store data), and does not require any specialized hardware or component to carry out the method. This generic computer system is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer system. Mere instructions to implement the abstract idea on a computer, or merely using the generic computer system as a tool to perform the abstract idea (e.g. mere “apply it”) is not indicative of integration into a practical application; see MPEP 2106.05(f). Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Thus, the claim is directed to an abstract idea.
Additionally, the claim recites the steps of “gathering data”, “storing data”, “assessing data”, and “flowing data”. These steps are merely gathering data, storing data, manipulating data, and providing data using the generic computer system as disclosed above, wherein adding insignificant extra-solution activity to the judicial exception (e.g. mere data gathering and/or data manipulation) is not indicative of integration into a practical application; see MPEP 2106.05(g). The term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Here, the steps of gathering and storing data to be used in the claimed process are incidental to the primary process of calculating disease damage payments. Therefore, the claim is directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, when analyzed as a whole, considering the additional elements individually and/or as an ordered combination, the additional element of using a computer based system is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer system. The claims lack sufficient technical details to provide how these limitations may provide technological steps or technical details on how it is particularly implemented on a computer to improve its system or any of its underlying hardware or components (e.g. how it is performed on the computer, how it could improve the computer itself, how it could manipulate the computer to function in a specific way other than its generic functionality, and/or how it could improve any of the underlying technology), but merely applies the generic computer system to perform its generic functionalities, such as gathering, storing, and calculating data. Merely using the generic computer system as a tool to perform the abstract idea (e.g. mere “apply it”) and/or adding insignificant extra-solution activity to the judicial exception (e.g. mere data gathering and/or data manipulation) is not indicative of an inventive concept (aka “significantly more”). In view of the Specification [0041] cited above, the judicial exception is not applied with or used by a particular machine. As held in Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 199 (1978) and Bancorp Services v. Sun Life, 687 F.3d 1266, 1276, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012), “the routine use of a computer to perform calculations cannot turn an otherwise ineligible mathematical formula or law of nature into patentable subject matter.” The claim is not patent eligible.
Regarding dependent claims, they are still directed to an abstract idea without significantly more.
Claim 5 recites “wherein the at least one insurer uses an agreed assessment method and at least one of an epidemiological model and an actuarial model to estimate absolute value of future disease damage payments and determine the IEIP premiums.” The claim provides further details regarding the calculation method and models to determine the premiums, which is still part of the abstract idea.
Claim 6 recites “wherein the disease damage payment is made to one or more other IEIP holders.” The claim provides further details regarding providing payments, which is still part of the abstract idea.
Claim 8 recites “wherein the disease damages are reported by an entity other than the insurer of the injured individual.” The claim provides further details regarding reports, which is still part of the abstract idea.
Claim 9 recites “wherein entering hospitals or nursing homes, or not entering hospitals or nursing homes with proper safety measures like hazmat suits, is not covered by the IEIP.” The claim provides further details regarding the coverage, which is still part of the abstract idea.
Claim 10 recites “wherein one or more individuals that have been infected, vaccinated, have antibodies, or other immune response, another immunizing event are removed from their original risk group.” The claim provides further details regarding the risk group, which is still part of the abstract idea.
Claim 11 recites “wherein a moment of disease damage claims have a limit in time after infection/diagnosis and/or in the amount claimed.” The claim provides further details regarding the claims having time limit, which is still part of the abstract idea.
Claim 13 recites “wherein only one single insurer offers the IEIP.” The claim provides further details regarding the insurer, which is still part of the abstract idea.
Claim 15 recites “wherein at least one intermediate entity is allowed to buy at least one IEIP on behalf of at least one customer of the at least one intermediate.” The claim provides further details regarding the entities buying IEIP, which is still part of the abstract idea.
Claim 19 recites “wherein the epidemiological model comprises one or more competing variants and is used to assess the disease damage payment.” The claim provides further details regarding the variants in the model for calculation, which is still part of the abstract idea.
Claim 21 recites “wherein the epidemiological data is selected from the group consisting of: one or more isolation levels; an amount of infectious and susceptible individuals; a relative infectiousness and susceptibility, of each and every risk group of the defined risk groups, on the given period of time; a local population; a number of cases; disease and hospitalization records; deaths certificates; isolation levels within the same RG or with other RG for infecting or getting infected; and an amount of cases on a given week.” The claim provides further details regarding the group of data, which is still part of the abstract idea.
These additional steps of each claims fail to remedy the deficiencies of their parent claim above because they are merely further limiting the rules used to conduct the previously recited abstract idea, and are therefore rejected for at least the same rationale as applied to their parent claim above.
Claims 5-6, 8-11, 13, 15, 19, and 21, when analyzed as a whole, considering the additional elements individually and/or as an ordered combination, are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are sufficient to integrate into a practical application and do not amount to significantly more than the judicial exception. Similarly to the independent claim, each claim recites using a generic computer component to perform the abstract idea as mentioned above. Merely using the generic computer system as a tool to perform the abstract idea (e.g. “apply it”) is not indicative of an inventive concept (aka “significantly more”). Therefore, prong 2 and step 2B analysis are similar to above and these claims are not eligible.
Therefore, Claims 5-6, 8-11, 13, 15, and 19-21 are not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
Response to Arguments
Applicant's arguments, see page 6, filed 24-September-2025, with respect to 35 U.S.C. 112(a) and (b) rejections have been fully considered but they are not persuasive. The original disclosure does not include definitive support that the invention includes a process to impose mandatory NPIs, rather the mandatory isolation was already imposed by the government, and the present invention is gathering data from the outcome of the mandatory isolation. Therefore, the 35 U.S.C. 112(a) and (b) rejections are maintained.
Applicant's arguments, see pages 6 to 10, with respect to 35 U.S.C. 101 rejection have been fully considered but they are not persuasive. As discussed above, the step of “imposing mandatory non-pharmaceutical interventions” is not fully supported by the original disclosure, and the present invention is gathering data from the outcome of the mandatory isolation. It is unclear how the invention provides the necessary technical steps to impose the mandatory isolation, other than reciting a mere “apply it”. As disclosed above under 35 U.S.C. 101 rejection, considering the claim without the additional elements, under BRI, the claim recites an abstract idea: mental process (steps of gathering and assessing data), certain methods of organizing human activities (steps of providing insurance premium calculations), and mathematical concepts (steps involved with calculations (i.e. assessing data)). The claim is directed to an abstract idea, under mere “apply it” and mere data gathering or data manipulation, which is not indicative of integration into a practical application. The claims, when analyzed as a whole, is not significantly more. The claim lacks sufficient technical details to provide how these limitations may provide technological steps or technical details on how it is particularly implemented on a computer to improve its system or any of its underlying hardware or components (e.g. how it is performed on the computer, how it could improve the computer itself, how it could manipulate the computer to function in a specific way other than its generic functionality, and/or how it could improve any of the underlying technology), but merely applies the generic computer system to perform its generic functionalities, such as gathering, storing, and assessing data. In view of the Specification [0041] cited above, the judicial exception is not applied with or used by a particular machine. As held in Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 199 (1978) and Bancorp Services v. Sun Life, 687 F.3d 1266, 1276, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012), “the routine use of a computer to perform calculations cannot turn an otherwise ineligible mathematical formula or law of nature into patentable subject matter.” See also Myriad, 569 U.S. at 591, 106 USPQ2d at 1979 ("Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry."). The Federal Circuit has also applied this principle, for example, when holding a concept of using advertising as an exchange or currency to be an abstract idea, despite the patentee’s arguments that the concept was "new". Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15, 112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014). Cf. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a new abstract idea is still an abstract idea") (emphasis in original). Therefore, the 35 U.S.C. 101 rejection is maintained.
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.
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/HENRY H JUNG/Examiner, Art Unit 3695
/CHRISTINE M Tran/Supervisory Patent Examiner, Art Unit 3695