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 AIA .
Status of Claims
This communication is a Non-Final office action in response to RCE filed on 01/23/2026. Claims 1, 10 and 19 have been amended. Claims 2-6, 11-15 and 20-21 have been canceled. Therefore, claims 1, 7-10, 16-19 and 22-24 are currently pending and have been addressed below.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/23/2026 has been entered.
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, 7-10, 16-19 and 22-24 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception without a practical application and significantly more.
Step 1: Identifying Statutory Categories
When considering subject matter eligibility under 35 U.S.C. § 101, it must be determined whether the claims are directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter (i.e., Step 1). In the instant case, claims 1 and 7-9 are directed to a system (i.e. a machine). Claims 10 and 16-18 are directed to a method (i.e. a process). Claims 19 and 22-24 are directed to a non-transitory, computer-readable medium (i.e. an article of manufacture). Thus, each of these claims fall within one of the four statutory categories. Nevertheless, the claims fall within the judicial exception of an abstract idea.
Step 2A: Prong One: Abstract Ideas
Claims 1, 7-10, 16-19 and 22-24 are rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea. Independent claim 1, analogous to independent claims 10 and 19 recites: A workers' compensation insurance claim coordination system associated with an insurer, comprising: a workers' compensation insurance claim records for a set of workers' compensation insurance claims associated with workers' compensation insurance policies between the insurer and an employer, Including at least one workers' compensation insurance claim parameter; storing supplementalretrieve information from the workers' compensation insurance claim based on resource allocation request parameters, update information, apply analytics to the information in the workers' compensation insurance claim to generate a recommendation for an employee, print a postal letter with details about the recommendation, communicate the postal letter to a postal address associated with the employee, receive an employee report request, and responsive to the employee report request, generate an employee report including all of: an employer identifier, an employee identifier, an active plan summary, a Family Medical Leave ("FML") absence summary, a Workers' Compensation ("WC") absence summary, and a Short-Term Disability ("STD") absence summary.
The limitations as drafted, is a process that, under its broadest reasonable interpretation, falls under the abstract grouping of:
Certain methods of organizing human activity (commercial or legal interactions (including advertising, marketing or sales activities or behaviors; business relations; (managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)). As the claims discuss a workers' compensation insurance claim coordination system associated with an insurer and an employer, and supplemental
Mental Processes (concepts performed in the human mind (including an observation, evaluation, judgement, opinion (claim 1, analogous to claims 10 and 19 recite for example: “a workers' compensation insurance claim records for a set of workers' compensation insurance claims associated with workers' compensation insurance policies between the insurer and an employer”; “storing supplementalretrieve information from the workers' compensation insurance claim based on resource allocation request parameters”; “update information, apply analytics to the information in the workers' compensation insurance claim to generate a recommendation for an employee”; “print a postal letter with details about the recommendation”; “communicate the postal letter to a postal address associated with the employee”; “receive an employee report request, and responsive to the employee report request, generate an employee report including all of: an employer identifier, an employee identifier, an active plan summary, a Family Medical Leave ("FML") absence summary, a Workers' Compensation ("WC") absence summary, and a Short-Term Disability ("STD") absence summary”.) Concepts performed in the human mind as mental processes because the steps of retrieving, updating, generating, communicating, printing and analyzing data mimic human thought processes of observation, evaluation, judgement and opinion, perhaps with paper and pencil, where data interpretation is perceptible in the human mind. See In re TLI Commc’ns LLCPatentLitig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016)).
Dependent claims add additional limitations, for example: (claims 7, 16 and 22) wherein the supplemental request includes information about an Employee Assistance Program ("EAP"); (claims 8, 17 and 23) includes an absence summary employer dashboard; (claims 9, 18 and 24) associated with all of: (i) leave management, (ii) resource planning, (iii) accommodation management, (iv) a health and wellness program, (v) a Return To Work ("RTW") program, (vi) employee safety, and (vii) clinical solutions; but these only serve to further limit the abstract idea. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitations of certain methods of organizing human activity and mental processes but for the recitation of generic computer components, the claims recite an abstract idea.
Step 2A: Prong Two
This judicial exception is not integrated into a practical application because the claims merely describe how to generally “apply” the abstract idea. In particular, the claims only recite the additional elements – (claim 1) back-end application computer server, resource allocation request data store, data store containing encrypted electronic records, machine learning and artificial intelligence algorithms, electronic record identifier, supplemental resource allocation request data repository, a computer processor, a computer memory, server, communication port, remote administrator device, an interactive graphical dashboard, security features and distributed communication network (claim 19) a non-transitory, computer-readable medium. These additional elements are recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components. Simply implementing the abstract idea on generic computer components is not a practical application of the abstract idea, as it adds 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, as discussed in MPEP 2106.05(f). The limitations generally link the abstract idea to a particular technological environment or field of use (such as computing, see MPEP 2106.05(h)). 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 generic computer implementation and do not impose a meaningful limit to integrate the abstract idea into a practical application.
Step 2B:
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 discussion of integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply an exception and generally link the abstract idea to a particular technological environment or field of use. Furthermore, claims 1, 7-10, 16-19 and 22-24 have been fully analyzed to determine whether there are additional elements recited that amount to significantly more than the abstract idea. The limitations fail to include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. Thus, nothing in the claim adds significantly more to 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. The claims are ineligible. Therefore, since there are no limitations in the claim that transform the exception into a patent eligible application such that the claim amounts to significantly more than the exception itself, the claims are rejected under 35 USC 101 as being directed to non-statutory subject matter.
Additional Prior Art Consulted
The prior art made of record and not relied upon which is considered pertinent to applicant’s disclosure includes the following:
Amaral US 2017/0255999 - According to some embodiments, an automated resource allocation interface may receive, for a plurality of resource allocation categories, a selected sub-category from a set of potential sub-categories. Based on the selected sub-categories, a resource allocation score may be calculated, and the enterprise system may be assigned to a resource allocation level. A back-end application computer server may access electronic records representing a plurality of potential associations and, for each potential association, a set of attribute variables.
Applicant is advised to review additional references supplied on the PTO-892 as to the state of the art of the invention.
Response to Arguments
Applicants arguments filed on 01/23/2026 have been fully considered but they are not persuasive.
Regarding 35 U.5.C. § 101 rejections: Examiner has updated the 101 rejection in light of the most recent claim amendments and maintains the 101 rejection. Applicant’s arguments have been fully considered but are found unpersuasive.
With respect to Applicant’s remarks (pages 7-9) “The back-end application computer server retrieves information from the workers' compensation insurance claim data store, and (based on resource allocation request parameters) automatically updates information in the supplemental request data repository. The sever applies Machine Learning ("ML") and Artificial Intelligence ("AI") algorithms to the information in the workers' compensation insurance claim data store and the supplemental request data repository to generate a recommendation for an employee. The server can then automatically print a postal letter with details about the recommendation and communicate the postal letter to a postal address associated with the employee. Applicant notes that per Director Squires in the Decision on Request for Rehearing in Ex parte Desjardins, Appeal 2024-000567, "Categorically excluding AI innovations from patent protection in the United States jeopardizes America's leadership in this critical emerging technology." (Emphasis added). Additionally, Director Squires noted that "Examiners and panels should not evaluate claims at such a high level of generality" that they have "essentially equated any machine learning with an unpatentable "algorithm" and the remaining additional elements as "generic computer components." As amended, claim 1 describes the use of ML and AI algorithms to: ... Applicant further notes that per the August 4, 2025 "Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101" Memorandum ("August 2025 Memo"), ... In view of the foregoing, Applicant respectfully submits that claim 1 clearly integrates any abstract idea into a practical application.”
Examiner respectfully disagrees. As an initial matter, with respect to “Machine Learning ("ML") and Artificial Intelligence ("AI") algorithms” this is only mentioned once in Applicant’s specification, para 0041, at a high level with no specifics or details. The specification does not illustrate any details or even describe what machine learning is used. While the newly amended claims recite machine learning, this merely establishes an environment of use which as outlined by MPEP 2106.05(h) the Field of Use and Technological Environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. Further, Applicant’s specification, para 0059, recites: “an analyst may review the leave details to process the request 850. A communication may then be sent to the employer and/or employee 860 (e.g., an email or postal letter 870).” Examiner notes there is no specifics or details in the specification on postal letters, and printing a postal letter is not a technical improvement. Further, merely automating the printing of a postal letter is using a computer as a tool. Therefore, Applicants remarks are found unpersuasive. With respect to integration of the abstract idea into a practical application, the additional elements – (claim 1) back-end application computer server, resource allocation request data store, machine learning ("ML") and Artificial Intelligence ("AI") algorithms, data store containing encrypted electronic records, electronic record identifier, a supplemental resource allocation request data repository, a computer processor, a computer memory, server, a communication port, remote administrator device, an interactive graphical dashboard, security features and a distributed communication network (claim 19) a non-transitory, computer-readable medium - are recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components. Simply implementing the abstract idea on generic computer components is not a practical application of the abstract idea, as it adds 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, as discussed in MPEP 2106.05(f). The limitations generally link the abstract idea to a particular technological environment or field of use (such as computing, see MPEP 2106.05(h)). 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. Therefore, Applicant’s arguments are found unpersuasive and Examiner maintains the 101 rejection.
Further, Examiner finds Applicant's arguments fail to comply with 37 CFR 1.111 because they amount to a general allegation that the claims define a patent eligible invention without specifically pointing out how the language of the claims reflect a practical application (e.g., how the claims reflect an improvement).
Even further, with respect to Applicant’s remarks on Desjardins, Examiner respectfully does not find these remarks persuasive as Desjardins is particular for describing techniques for training machine learning models and emphasizes the importance of explaining improvements to technology from the claimed processes within the specification. Again, with respect to machine learning, Examiner has reviewed Applicants specification and merely finds machine learning mentioned only once, with no details or explanation.
Therefore, Applicant’s arguments are found unpersuasive and Examiner maintains the 101 rejection.
Regarding 35 U.S.C. § 103 rejections. Applicant amended representative independent claim 1, analogous to independent claims 10 and 19, recites: “A workers' compensation insurance claim coordination system implemented via a back-end application computer server associated with an insurer, comprising: a workers' compensation insurance claim data store that contains encrypted electronic records for a set of workers' compensation insurance claims associated with workers' compensation insurance policies between the insurer and an employer, each encrypted electronic record including an electronic record identifier and at least one workers' compensation insurance claim parameter; a supplemental request data repository storing supplemental requests from employees associated with the employer and information about group benefit insurance products including all of: an Americans with Disabilities Act ("ADA") leave request, an Accidental Death and Dismemberment ("AD&D") claim, a life insurance benefit, accident insurance, hospital indemnity insurance, business travel accident insurance, critical illness insurance, and Paid Family Medical Leave ("PFML"); the back-end application computer server, coupled to the workers' compensation insurance claim data store and the supplemental request data repository, including: a computer processor, and a computer memory, coupled to the computer processor, storing instructions that, when executed by the computer processor, cause the back-end application computer server to: retrieve information from the workers' compensation insurance claim data store,Machine Learning ("ML") and Artificial Intelligence ("AI") algorithms to the information in the workers' compensation insurance claim data store and the supplemental request data repository to generate a recommendation for an employee,receive an employee report request, and responsive to the employee report request, automatically generate an employee report including all of: an employer identifier, an employee identifier, an active plan summary, a Family Medical Leave ("FML") absence summary, a Workers' Compensation ("WC") absence summary, and a Short-Term Disability ("STD") absence summary; and a communication port coupled to the back-end application computer server that exchanges data with a remote administrator device to support an interactive graphical dashboard display, including the recommendation, via security features and a distributed communication network.
The closest prior art Nelson et al. (US 2020/0311822 A1), teaches A multi-vendor risk relationship data store may contain electronic records representing a plurality of risk relationships between multiple vendors and an enterprise and, for each risk relationship, an electronic record identifier and a set of attribute values; para 0034, teaches the risk relationship might be associated with an insurance policy (e.g., short term disability, long term disability, workers' compensation, a leave management program, a financial services program, a vision vendor program, a disease management program, an employee assistance program, a case management program, a life insurance program, an American Disabilities Act (“ADA”) accommodation program and more.
Closest prior art Savage et al. (US 2013/0110736 A1), teaches A computer system for processing and presentation of employee absence data includes an absence data management and storage system including workers' compensation coverage for employees who incur job-related illnesses or injuries (See at least Savage, para 0003).
Yet, the prior art does not teach the newly amended limitations of independent claims above. After consideration of Applicants arguments, and conducting an updated prior art and non-patent literature (NPL) search, the examiner has yet to find applicable references for these limitations. Thus, prior art rejections have been withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA R NOVAK whose telephone number is (571)272-2524. The examiner can normally be reached Monday - Friday 8:30am - 5:00pm EST.
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/R.R.N./Examiner, Art Unit 3629
/LYNDA JASMIN/Supervisory Patent Examiner, Art Unit 3629
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