DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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 & Status
2. A request for continued examination under 37 CFR §1.114, including the fee set forth in 37 CFR §1.17(e), was filed on 7/15/25 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set forth in 37 CFR §1.17(e) has been timely paid, the finality of the previous Office action dated 1/16/25 has been withdrawn pursuant to 37 CFR §1.114 and the submission filed on 7/15/25 has been entered. Claim 1 was previously cancelled by applicant. Pending amended claims 2-22 are rejected for the reasons set forth below.
Claim Rejections - 35 USC §101
3. 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.
4. Claims 2-22 are rejected under 35 U.S.C. §101 because the claimed invention is directed to non-statutory patent ineligible subject matter. (See, Alice and MPEP §2106)
In sum, claims 2-22 are rejected under 35 U.S.C. §101 because the claimed invention recites and is directed to a judicial exception to patentability (i.e., an abstract idea) and does not provide an integration of the recited abstract idea into a practical application nor include an inventive concept that is “significantly more” than the recited abstract idea to which the claim is directed. (MPEP §2106)
In determining subject matter eligibility in an Alice rejection under 35 U.S.C. §101, it is first determined as Step 1 whether the claims are directed to one of the four statutory categories of an invention (i.e., a process, a machine, a manufacture, or a composition of matter) (MPEP §2106.03). Here, the claims are directed to the statutory category of a process (claims 2-8), a machine (claims 9-15) and a manufacture (claims 16-22). Therefore, we proceed to Step 2A, Prong 1. (MPEP §2106)
Under a Step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more enumerated categories of patent ineligible subject matter that amounts to a judicial exception to patentability. (MPEP §2106.04) Here, the independent claims, at their core, recite the abstract idea of:
receiving a request for a new coverage plan, wherein the request includes user information and historical data corresponding to prior expenses associated with a user, and wherein the request is received (by) an enrollment (provider) … in communication with a credit provider … and a coverage provider … ;
processing the request … to generate a new recommendation for one or more coverage plans, … ;
updating the enrollment (provider) … to present the new recommendation for the one or more coverage plans;
detecting a selection of a coverage plan from the one or more coverage plans and a new request to apply for a line of credit corresponding to the coverage plan;
transmitting the selection of the coverage plan (by) the enrollment (provider) … , wherein when the selection of the coverage plan is received by a coverage provider … , the coverage provider … provides coverage plan data corresponding to the coverage plan;
transmitting the user information and a desired amount for the line of credit (by) the enrollment (provider) … , wherein the desired amount is determined based on the coverage plan, and wherein when the user information and the desired amount is received by the credit provider … , the credit provider … processes the user information and the desired amount to provide credit data corresponding to the line of credit;
issuing a payment instrument, wherein the payment instrument incorporates the coverage plan data and the credit data, and wherein the payment instrument allows for single processing of the payment instrument to cause concurrent transmission of distinct requests to the coverage provider … and the credit provider … ;
detecting a single processing of the payment instrument for a transaction, wherein the transaction is associated with the coverage plan and the line of credit, and wherein the transaction includes a claim;
receiving an outstanding claim balance associated with the coverage plan, wherein the outstanding claim balance is received through processing of the claim and the coverage plan data (by) … the coverage provider … , … using post-transaction adjudication data corresponding to previous transactions;
receiving a line of credit balance associated with the line of credit, wherein the line of credit balance is received through processing of the credit data (by) the credit provider … , and wherein the line of credit balance and the outstanding claim balance are received concurrently; and
applying at least a portion of the outstanding claim balance to the line of credit balance to complete the transaction.
Here, the recited abstract idea falls within one or more of the three enumerated categories of patent ineligible subject matter (MPEP §2106.04), to wit: certain methods of organizing human activity, which includes sub-categories of fundamental economic practices or principles and commercial interactions involving sales activities and/or practices (Here, insurance – including processing a request for new insurance coverage and user selection of same, including facilitating insurance coverage recommendations based on analysis of various data), and (Here, one or more commercial interactions – including processing a request for a desired amount for a line of credit for the insurance coverage plan, including issuing a payment instrument for paying the requested insurance coverage and the desired amount of credit, and including processing a payment transaction using the line of credit for the insurance coverage).
Under Step 2A, Prong 2 the recited additional elements are evaluated to determine whether they provide an integration of the recited abstract idea into a practical application. (i.e., whether they provide a technological solution). (MPEP §2106.04) Here, the recited additional elements, such as: a ”clustering algorithm” trained to generate recommendations for at least one insurance coverage plan based on analysis of various user data for various users, various “payment systems”, an “enrollment system”, a “coverage provider system”, a “credit provider system”, and a “memory” or a “computer-readable storage medium” that stores executable instructions to accomplish the various recited claimed functions of the abstract idea, do not amount to an inventive concept since the claims are simply using each of these additional elements, which are recited in the claims at a high degree of generality, as a tool to carry out the recited abstract idea (i.e., “apply it”) on a computer, using a memory device and/or a database, on a data or communication network, on a display device or user interface, or on another computing device listed above, and/or via software programming, where the additional elements are not being technologically improved but simply perform generic computer data receipt and processing/analysis steps, data storage and communication steps, and/or outputting/displaying steps such as those typically used in a general purpose computer, a computing system, a display or user interface, and/or a computer or communication network. Thus, the claims do not provide an integration into a practical application.
The independent claims also include one or more additional element limitation that is/are simply being used to carry out insignificant extra-solution activity recited in the independent claims, which activity is beyond the abstract idea recited therein and is only tangentially related thereto and does not provide a technological improvement (i.e., an integration of the recited abstract idea into a practical application). (MPEP §2106.05(g)) Here, the independent claims include additional element limitation(s) of:
… (a) clustering algorithm is trained using a dataset of input anonymized user information associated with different users, to generate a new recommendation for one or more (insurance) coverage plans.
Applicant’s disclosure suggests that this limitation simply requires that anonymized user data of various users (including medical treatment data, coverage plan data for the medical treatment, payment option and outstanding payment balance data). (See e.g., Spec. ¶ 059) The specification does not discuss any technological problem being overcome by using this type of data used to train the clustering algorithm to enable it to make new recommendation for one or more insurance coverage plans and/or a payment instrument to pay for the new coverage. (See e.g., Spec. ¶¶ 003-005)
Under the Step 2B analysis, it is determined whether the recited additional elements amount to something “significantly more” than the recited abstract idea to which the claims are directed. (i.e., provide an inventive concept). (MPEP §2106.05) Here, the recited additional elements, identified above in the Step 2A, Prong 2 analysis, do not amount to an inventive concept since, as stated above in the Step 2A, Prong 2 analysis, where the additional elements are not being technologically improved, but rather, the claims are simply using the additional elements as a tool to carry out the abstract idea (i.e., “apply it”) on a computer, using a memory device and/or a database, on a data or communication network, or on another computing device listed above, and/or via software programming, where the additional elements are specified at a high level of generality as simply facilitating and/or performing generic computer data receipt and processing/analysis steps, data inputting steps, data storage and communication steps, and/or data outputting/displaying steps such as those typically used in a general purpose computer, a computing system, a display or user interface, and/or a computer or communication network, where the additional elements are being used in the claims to simply implement the abstract idea and are not themselves being technologically improved, and therefore do not provide something “significantly more.” (See e.g., MPEP §2106.05 I.A.)
As determined above in Step 2, Prong 2, the independent claims also include one or more additional element limitation that is/are simply being used to carry out insignificant extra-solution activity recited in the independent claims, which activity is beyond the abstract idea recited therein and is only tangentially related thereto. (See e.g., MPEP §2106.05(g)) Here, “… (a) clustering algorithm is trained using a dataset of input anonymized user information associated with different users, to generate a new recommendation for one or more (insurance) coverage plans.” The additional element limitation(s) of the independent claims identified in this paragraph is/are simply carrying out extra-solution activity/functionality that is well-known, routine or conventional for a computer, a computing system, a computing device, including associated displays and/or user interfaces, for displaying data, and none of the elements are themselves being technologically improved. (See e.g., Spec. ¶ 059); See also, MPEP §2106.05(d)II.)
The dependent claims simply further refine and limit the abstract idea recited by the independent claims, from which these claims respectively directly or indirectly depend, where the abstract idea is described above.
Claims 3, 10 and 17 simply further refine the coverage provider system and the credit provider system additional elements, which simply carry out the abstract idea without themselves being technologically improved (as described in regard to the independent claims, above) are different. Therefore, these claims do not add any element or feature that provides an integration into a practical application by providing a technological solution to a technological problem or by technologically improving any recited additional element (which is simply being used to carry out the abstract idea as a “tool” under Step 2A, Prong 2), or include any element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B). (See MPEP §§2106.04, 2106.05)
Claims 4-6, 11-13 and 20-22 simply further refine the abstract idea by requiring that the insurance coverage plan and credit line recommendations include a future medical expenses forecast for a user, that a user credit inquiry is used in the credit line recommendation, or determining an actual amount associated with a line of credit has a threshold amount and providing a HSA (health savings account) recommended to the user, and these claims do not add any element or feature that provides an integration into a practical application by providing a technological solution to a technological problem or by technologically improving any recited additional element (which is simply being used to carry out the abstract idea as a “tool” under Step 2A, Prong 2), or include any element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B). (See MPEP §§2106.04, 2106.05)
Claims 7, 14 and 21 simply further refine the abstract idea by requiring that user data analyzed for an insurance plan or credit line recommendation includes user saving account banking information, which is simply a type of data to be analyzed, and these claims do not add any element or feature that provides an integration into a practical application by providing a technological solution to a technological problem or by technologically improving any recited additional element (which is simply being used to carry out the abstract idea as a “tool” under Step 2A, Prong 2), or include any element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B). (See MPEP §§2106.04, 2106.05)
Claims 8, 15 and 22 simply further refine the abstract idea by requiring that the abstract idea include a step of providing the user an option to establish a savings account, and these claims do not add any element or feature that provides an integration into a practical application by providing a technological solution to a technological problem or by technologically improving any recited additional element (which is simply being used to carry out the abstract idea as a “tool” under Step 2A, Prong 2), or include any element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B). (See MPEP §§2106.04, 2106.05)
Thus, neither the independent claims nor the dependent claims, viewed individually and as a whole, including consideration of all the limitations of each claim viewed both individually and in combination, add any additional element or provide any subject matter that provides a technological improvement (i.e., an integration into a practical application) that results in the claims being directed to patent eligible subject matter, nor do the claims provide something significantly more than the recited abstract idea to which the claims are directed.
Prior Art Not Relied Upon
5. The following relevant prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. (See, MPEP §707.05) The examiner considers the following reference(s) pertinent for disclosing various, but not all, features or combination of features of the claimed invention:
Bull et al. (US Patent Publication 2017/0178135 A1) discloses a system and various methods for processing and adjudicating health related insurance claims, including expenditures and accounts associated with users, where a machine learning model uses various clustering techniques to derive clusters of various associated users having a certain profile or other certain user data;
Chavarria et al. (US Patent Publication 2016/0005129 A1) discloses a system and various methods for, among other things, processing health care expense and payment data and providing for a user selection of new health care coverage, and includes providing a suggested health care plan via a machine learning process.
However, these references neither alone nor in combination disclose, at a minimum, the following claim required features of the independent claims:
processing the request through a clustering algorithm to generate a new recommendation for one or more coverage plans, wherein the clustering algorithm is trained using a dataset of input anonymized user information associated with different users ;
generating a new recommendation for one or more coverage plans and for a line of credit, wherein the new recommendation is generated by the clustering algorithm according to the particular cluster; and
receive a line of credit balance associated with the line of credit, wherein the line of credit balance is received through processing of the credit data through the credit provider system, and wherein the line of credit balance and the outstanding claim balance are received concurrently.
Response to Arguments
6. Applicant’s arguments filed 7/15/25 have been fully considered.
Applicant’s statements concerning the prior rejection of the claims under 35 USC §101 are found in applicant’s Amendment, Pg. 12. Since applicant makes no specific allegation of any error by the Office in its prior determination that the claims recite and are directed to a patent ineligible abstract idea, without there being anything significantly more than the recited abstract idea to which the claims are directed, no response to any arguments is necessary in this section by the Office under Step 2A, Prong 1 or 2 or under Step 2B.
Applicant is referred to the above §101 rejection of the instant amended version of the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joseph W. King whose telephone number is (571) 270 -5776. The examiner can normally be reached Mon - Thur 7 AM - 3 PM ET. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Matthew Gart, can be reached at (571) 272-3955. The examiner’s fax phone number is (571) 270-6776.
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/JOSEPH W. KING/Primary Examiner, Art Unit 3696
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