DETAILED ACTION
1. 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 .
2. Status of Application and Claims
Claims 1-4, 6, 7, 9, 10, 12-14, 16-18, 20-23, and 25-27 are pending.
Claims 1-4, 6, 7, 10, 13, 14, 16, 17, 20, 22, 25, and 26 were amended or newly added in the Applicant’s filing on 6/02/2026.
Claim(s) 8 and 19 were cancelled in the Applicant’s filing on 6/02/2026.
This office action is being issued in response to the Applicant’s filing on 6/02/2026.
3. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/02/2026 has been entered.
4. Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit its scope when given their broadest reasonable interpretation. see MPEP §2013(I)(C). Specifically, the “broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See MPEP §2111, citing In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984).
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See MPEP §2013(I)(C).
As such, claim limitations that contain statement(s) such as “if,” “may,” “might,” “can,” and “could” are treated as containing optional language. See MPEP §2013(I)(C). As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. See MPEP §2013(I)(C).
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. See MPEP §2111.04(II). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See MPEP §2143.03, citing Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009);
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble. See MPEP §2111.02;
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby.” See MPEP §2111.04;
Contingent limitations. See MPEP §2111.04(II);
Printed matter. See MPEP §2111.05; and
Functional language associated with a claim term. See MPEP §2181.
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized, underlined and/or boldened language is interpreted as not further limiting the scope of the claimed invention.
Additionally, the following italicized, underlined and emboldened language is not necessarily an exhaustive list of claim language that is interpreted as not further limiting the scope of the claimed invention. Applicant should review all claims for additional claim interpretation issues.
Claim 1 recites an apparatus comprising:
a memory storing instructions;
a communications interface; and
at least one processor coupled to the memory and to the communications interface, the at least one processor being configured to execute the instructions to:
…
transmit, to the computing system via the communications interface, a notification comprising at least a portion of the generated output data and elements of explainability data associated with the trained artificial intelligence process, the elements of explainability data comprising a feature contribution value characterizing a contribution of a corresponding one of the feature values to the predicted likelihood of the occurrence of the attrition event during the second temporal interval, and the notification causing the computing system to perform operations, consistent with the portion of the output data and with the feature contribution value, that reduce the predicted likelihood of the occurrence of the attrition event during the second temporal interval.
Claim 1 is an apparatus claim. The apparatus is composed of a memory, communications and one or more processors. The apparatus transmits data to a computing system. If the apparatus is transmitting data to a computing system, the computer system is outside and external to the apparatus. The functions performed by or functions configured to be performed by the computing system is outside the scope of the apparatus.
Stated in an alternative manner, the apparatus is transmitting instructions to a computing system instructing the computing system to perform functions. The apparatus, itself, is not performing the functions. The apparatus (the apparatus claimed) is merely transmitting instructions.
Claim 20 has similar issues.
5. 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 1-4, 6, 7, 9, 10, 12-14, 16-18, 20-23, and 25-27 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
STEP 2A – PRONG ONE
The claim(s) recite(s) a method, a system configured to execute a method and/or method and/or computer-readable medium encoded with instructions to perform a method of comprising:
receiving, ..., an identifier of a targeted participant in a service from a computing system, and based on the received identifier, obtaining, from a data repository, elements of consolidated interaction data associated with a first temporal interval and with the targeted participant, the targeted participant being associated with a value of a parameter of the service that exceeds a threshold value;
obtaining, from the data repository, … , composition data associated with an input dataset for a … process, the composition data specifying a sequential order of a plurality of input features of the input dataset;
generating, …, and in accordance with the composition data, feature values for the input dataset based on the elements of the consolidated interaction data;
… performing operations, in parallel …, and in real-time upon receipt of the identifier, that apply applying the … process to the feature values of the input dataset, and that based on an application of the … process to the feature values, generate output data representative of a predicted likelihood of an occurrence of an attrition event involving the targeted participant during a second temporal interval, the occurrence of the attrition event during the second temporal interval corresponding to a decrease in the parameter value by a threshold percentage during the second temporal interval, and the second temporal interval being subsequent to the first temporal interval and being separated from the first temporal interval by a corresponding buffer interval; and
… , transmitting, … , a notification comprising at least a portion of the generated output data and elements of explainability data associated with the trained artificial intelligence process, the elements of explainability data comprising a feature contribution value characterizing a contribution of a corresponding one of the feature values to the predicted likelihood of the occurrence of the attrition event during the second temporal interval; and
the notification comprising information that causes … to perform operations, in accordance with the portion of the output data and the feature contribution value, that reduce the predicted likelihood of the attrition event during the second temporal interval.
These limitations, as drafted, recite a method and/or a system configured to perform a method that, under its broadest reasonable interpretation, covers a series of steps instructing how to predict financial events (i.e., attrition events, such as a decline in asset value – see para. 18) which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Examiner notes that predicting finance events is the mitigation of financial risk and that the mitigation of financial risk is a court-provided example of a fundamental economic practice. See MPEP §2106.04(a)(2)(II)(A), citing Alice Corp. v. CLS Bank, 573 U.S. 208, 218, 110 USPQ2d 1976, 1982 (2014).
These limitations, as drafted, also recite a method and/or a system configured to perform a method that, under its broadest reasonable interpretation, covers a series of steps instructing how to predict commercial and/or sales activities and/or behaviors (i.e., attrition events, such as customers ceasing their participation in financial or investment planning services – see para. 15-16) qualifies as a commercial or legal interaction, a subcategory of certain methods of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(B).
Additionally, these limitations, as drafted, under its broadest interpretation, covers a series of steps that can be practically performed in the human mind (e.g., observations, evaluations, judgments and opinions) which are mental process, a second enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(III).
Examiner notes that “’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” is a mental process. See MPEP §2106.04(a)(2)(III)(A) citing Electric Power Group v. Alstom, SA. (Fed. Cir. 2016).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of a memory (Claim(s) 1), a communications interface (Claim(s) 1), a processor (Claim(s) 1, 13 and 20), a trained artificial intelligence process (Claim(s) 1, 13 and 20), a computing system (Claim(s) 1, 13 and 20), a plurality of distributed computing components (Claim(s) 1, 13 and 20), and a computing network (Claim(s) 1, 13 and 20).
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. See MPEP §2106.05(f). Alternately, the additional elements amount to no more than generally linking the exception to a particular technological environment or field of use. See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. See MPEP §2106.07(a)(II). The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
DEPENDENT CLAIMS
Dependent Claim(s) 2-4, 6, 7, 9, 10, 12, 14, 16-18, 21-23 and 25-27 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 1, 13 and 20. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
No additional computer components other than those found in the respective independent claims is recited, thus it is presumed that the claim is further utilizing the same generically recited computer.
As such, the dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
6. No Prior Art Rejection
Applicant’s amended claims have overcome the prior art of record.
Specifically, the prior art fails to teach or suggest the limitations of:
obtaining, from the data repository, and the using at least one processor, composition data associated with an input dataset for a trained artificial intelligence process, the composition data specifying a sequential order of a plurality of input features of the input dataset;
generating, using the at least one processor, and in accordance with the composition data, feature values for the input features of the input dataset based on the elements of consolidated interaction data (as in Claim 13).
Substantially similar limitations are present in all independent claims.
The prior art does not teach a method comprising specifying a sequential order of a plurality of features of an input dataset, generating feature values for the input dataset based upon the specified sequential order, and utilizing said input dataset for utilization with a trained artificial intelligence process.
No further prior art has been asserted against the claimed invention.
7. Response to Arguments
Applicant's arguments filed 6/02/2026 pertaining to claim interpretation issues and the previously asserted §101 rejection have been fully considered but they are not persuasive.
Claim Interpretation
Applicant argues that the previously asserted claim interpretation was unwarranted. See Arguments, pp. 15-16.
Specifically, Applicant argues:
For example, the Office alleges that "the computing system performing operations based on the portion of the output data and the feature contribution value elements of explainability data," as recited similarly by Applicant's independent claims, fails to limit the scope of the claimed Applicant's independent claims because "the computer system is outside and external to the apparatus[,] ... [and the] functions performed by or functions configured to be performed by the computing system is outside the scope of the apparatus." Id., at p. 2. Applicant disagrees, and submits that these comments are based on nothing more than unsupported, conclusory statements that find no support within the Office's own examination procedures. See Arguments, pp. 15-16.
The Examiner respectfully disagrees.
Claim 1 is a system claim for an apparatus. The apparatus receives an identifier from a computing system and transmits a notification to the computing system.
Based upon the claim, as written, the computing system in communication with the apparatus is not a component element of the apparatus itself.
The apparatus transmits a notification to the computing system, an element outside the apparatus. Admittedly, the computer system is a designated recipient of the transmission but the functions performed or to be performed by the computer system (i.e., the element outside the recited apparatus) based upon receipt of the notification are outside the scope of the claimed invention.
§101 Rejection
Step 2A Prong One
Applicant argues that the claimed invention does not recite a judicial exception and, as such, satisfies Step 2A Prong One of the §101 Guidelines. See Arguments, pp. 17-23.
The Examiner respectfully disagrees.
As to the Examiner’s prior assertion that the claimed invention recites a fundamental economic practice, a subcategory of certain methods of organizing human activity, the Applicant argues:
As an initial point, and relying on paragraphs [0018] and [0130] of Applicant's Specification, the Office asserts that the claimed "attrition event is a negative finance occurrence" and that "[p]redicting the probability of a negative financial event and attempting to prevent the occurrence of said negative financial event is [a] mitigation of a financial risk," . . . which corresponds to a "court-provided example of a fundamental economic practice." Id., at pp. 10- 11. Applicant disagrees. Even assuming that the claimed "attrition event" could correspond to a "negative financial occurrence," which Applicant does not concede, the cited portions of Applicant's Specification at most describe processes that "prevent the predicted service-specific attrition events," but not that the prevention of such "service-specific attrition events" represents any "mitigation of risk" deemed patent-ineligible by the Office. See, e.g., id., at p. 10 (citing paragraphs [018] and [0130] of Applicant's Specification). Indeed, beyond conclusory, unsupported assertions, the Office's analysis of Applicant's claims under Prong One of Revised Step 2A of the Alice/Mayo test does not- and cannot- identify any portion of Applicant's Specification that would support its conclusion that the claimed "predicted likelihood of an occurrence of an attrition event involving the targeted participant during a second temporal interval" corresponds to, or represents, any "mitigation of risk," much less any patent-ineligible "fundamental economic practice" or other "method of organizing human activity." Id., at p. 5-6. See Arguments, pp. 19-20 – emphasis original.
The Examiner respectfully disagrees.
As acknowledged by the Applicant, the specification recites:
In other examples, described herein, a machine-learning or artificial- intelligence process may be adaptively trained to predict, at a temporal prediction point, a likelihood of an occurrence of a service-specific attrition event involving one of a targeted set of current participants in financial or investment planning services provisioned by the financial institution during a future temporal interval based on training data associated with a first prior temporal interval, and using validation data associated with a second, and distinct, prior temporal interval. In some instances, each of the targeted set of participants may hold a position in one or more securities or financial products administered by the financial institution, e.g., via one or more investment advisers associated with the provisioned financial or investment planning services, and the positions held by the each of the targeted participants may be characterized by a corresponding parameter value, such as a value of assets under administration, that predetermined, or dynamically determined, threshold value. Further, and for a corresponding one of the targeted participants, a service-specific attrition event may occur when the value of the assets under administration for the corresponding one of the targeted participants declines by a predetermined, or dynamically determined, threshold percentage, such as, but not limited to, sixty percent (e.g., the corresponding one of the targeted participants ceases to participate in the financial or investment planning services, or "attrites," when the value of the assets under administration declines by greater than the threshold percentage). See specification, para. 18 – emphasis added.
Although not illustrated in FIG. 2A, financial-planning system 203 may receive ranked output data 236, which includes the customer-specific sets of linked elements of customer data, output data elements, and input datasets, the elements of explainability data 194, and/or input datasets 224, from FI computing system 130. In some instances, ranked output data 236 may be encrypted, and financial-planning system 203 may decrypt portions of ranked output data 236 with a corresponding decryption key, e.g., a private cryptographic key associated with financial-planning system 203. In some examples, financial-planning system 203 may access each of the customer-specific sets of linked elements of customer data, output data elements, and input datasets maintained within ranked output data 236, and may perform operations that engage, proactively, one or more of the customers (e.g., those associated with predicted occurrences of service- specific attrition events) in an attempt to prevent the predicted service-specific attrition events. See specification, para. 130 – emphasis added.
The specification establishes that the attrition event is a negative financial occurrence, such as a decline in asset value. The claimed invention performs operations to prevent the occurrence of said decline in asset value.
Predicting and attempting to prevent a negative financial event is the mitigation (i.e., an action of reducing the severity, seriousness or painfulness) of a financial risk (e.g., the risk of decline in asset value). Mitigation of financial risks is a court-provided example of a fundamental economic practice. See MPEP §2106.04(a)(2)(II)(A), citing Alice Corp. v. CLS Bank. (2014).
Predicting and attempting to prevent a negative financial event is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Applicant further argues:
Furthermore, in analyzing Applicant's independent claims, the Office concedes that "[a]pplying a trained artificial intelligence process is not a patent-ineligible abstract idea," but continues to assert that the generation of output data based on the application of the that "trained artificial intelligence process" represents a patent-ineligible "fundamental economic practice" or a patent-ineligible "mental process." Id., at p. 11. Applicant disagrees, and Applicant submits that the generation of "output data" based on an "application of the trained artificial intelligence process to [an input dataset]," as recited similarly by Applicant's independent claims, does not represent a patent-ineligible abstract idea for the same reasons that "[a]pplying a trained artificial intelligence process" does not represent a patent-ineligible ineligible abstract idea. See, e.g., id. Furthermore, the Office does not- and cannot- point to any portion of the M.P.E.P., or to any decision of the Federal Circuit or Supreme Court, that would support an assertion that the claimed generation of "output data" based on an "application of the trained artificial intelligence process to [an input dataset]," represents a patent-ineligible abstract idea within Prong One of Revised Step 2A of the Alice/Mayo test. See Arguments, p. 20 – emphasis original.
The Examiner respectfully disagrees.
The claimed invention, as in Claim 13, recites a method that “apply the trained artificial intelligence process to the feature values of the input dataset, and that, based on an application of the trained artificial intelligence process to the feature values, generate output data representative of a predicted likelihood of an occurrence of an attrition event involving the targeted participant during a second temporal interval, the occurrence of the attrition event during the second temporal interval corresponding to a decrease in the parameter value by a threshold percentage during the second temporal interval.”
The abstract idea (i.e., the fundamental economic practice) recited in Claim 13 is “apply the … process to the feature values of the input dataset, and that, based on an application of the … process to the feature values, generate output data representative of a predicted likelihood of an occurrence of an attrition event involving the targeted participant during a second temporal interval, the occurrence of the attrition event during the second temporal interval corresponding to a decrease in the parameter value by a threshold percentage during the second temporal interval.”
While the process being performed by the trained artificial intelligence is an abstract idea, the trained artificial intelligence process (i.e., the fact that the process is a trained artificial intelligence process) is not part of abstract idea.
The trained artificial intelligence performing the process is an additional element, an element recited in addition to the abstract idea (i.e., not an element of the abstract idea itself). The trained artificial intelligence is examined under Step 2A Prong Two to determine whether the additional elements in the claim integrate the abstract idea into a practical application. See MPEP $2106.05(f)(2).
However, the utilization of a trained artificial intelligence to perform the abstract idea does not necessarily transform an otherwise abstract idea into patent-eligible subject matter.
As to the Examiner’s prior assertion that the claimed invention recites a mental process, the Applicant argues:
Applicant also submits that the Office fails to provide reasoning sufficient to support its conclusion that Applicant's independent claims recite a patent-ineligible mental process under Prong One of Revised Step 2A of the Alice/Mayo test. When interpreting Applicant's claims under current Office examination practice, the Office is required to afford Applicant's claims their broadest reasonable interpretation consistent with the Applicant's Specification. See M.P.E.P. § 2111. Here, despite conclusory, unsupported assertions, the Office's analysis of Applicant's claims does not- and cannot- identify any portion of Applicant's Specification that would support its conclusion that a user could perform, via pen and paper or in the mind, any of the actual elements recited by Applicant's independent claims. See, e.g., id. Further, if examined properly the claimed combination of elements recited by Applicant's independent claims encompass artificial intelligence in a manner that cannot be performed practically in the human mind and as such, Applicant's independent claims cannot recite a patent-ineligible mental process in accordance with the Office's examination guidelines. See, e.g., Memorandum entitled "Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. § 101," issued on August 4, 2025, p. 2 (hereinafter, the "August 4th Memorandum"). See Arguments, pp. 20-21 – emphasis original.
The Examiner respectfully disagrees.
The claimed invention, as in Claim 13, recites a method that “apply the trained artificial intelligence process to the feature values of the input dataset, and that, based on an application of the trained artificial intelligence process to the feature values, generate output data representative of a predicted likelihood of an occurrence of an attrition event involving the targeted participant during a second temporal interval, the occurrence of the attrition event during the second temporal interval corresponding to a decrease in the parameter value by a threshold percentage during the second temporal interval.”
The abstract idea (i.e., the mental process) recited in Claim 13 is “apply the … process to the feature values of the input dataset, and that, based on an application of the … process to the feature values, generate output data representative of a predicted likelihood of an occurrence of an attrition event involving the targeted participant during a second temporal interval, the occurrence of the attrition event during the second temporal interval corresponding to a decrease in the parameter value by a threshold percentage during the second temporal interval.”
A human being can “perform, via pen and paper or in the mind” the recited process. A human being can process (e.g., via mental computations) feature values of the input dataset, and that, based on an application of the process (e.g., mental computations) to the feature values, generate output data representative of a predicted likelihood of an occurrence of an attrition event involving the targeted participant during a second temporal interval, the occurrence of the attrition event during the second temporal interval corresponding to a decrease in the parameter value by a threshold percentage during the second temporal interval.
While the process being performed by the trained artificial intelligence is an abstract idea, the trained artificial intelligence (i.e., the fact that the process is a trained artificial intelligence process) is not part of abstract idea.
The trained artificial intelligence performing the process is an additional element, an element recited in addition to the abstract idea (i.e., not an element of the abstract idea itself). The trained artificial intelligence is examined under Step 2A Prong Two to determine whether the additional elements in the claim integrate the abstract idea into a practical application. See MPEP $2106.05(f)(2).
However, the utilization of a trained artificial intelligence to perform the abstract idea does not necessarily transform an otherwise abstract idea into patent-eligible subject matter.
Applicant further argues:
As an initial point, the Office's application of an "inherency" test within the context of Pring One of Step 2A of the Alice/Mayo test is inconsistent with the Office's own examination guidelines regarding subject-matter eligibility. The M.P.E.P. is clear that claims do not recite a mental process when they "contain limitation(s) that cannot practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations." M.P.E.P. § 2106.04(a)(2)(ll)(A). The August 4th Memorandum further confirms that "[c]laim limitations that encompass Al in a way that cannot be practically performed in the human mind do not fall within [the mental process] grouping." August 4th Memorandum, p. 2. Contrary to the Office's assertions, Applicant's independent claims, amended herein, precisely recite such limitations. See Arguments, p. 21.
The Examiner agrees.
Claim limitations that encompass Al in a way that cannot be practically performed in the human mind do not fall within mental process grouping. However, there is no evidence in the specification nor the claims that the claimed invention encompasses AI in a way that cannot be practically performed in the human mind do not fall within mental process grouping.
Applicant further argues:
Specifically, Applicant's amended independent claims recite operations performed "in parallel across a plurality of distributed computing components interconnected across a computing network," which apply a trained artificial intelligence process to an input dataset and generate corresponding output data "in real-time upon receipt of the identifier." These recitations when read in light of Applicant's Specification, require particular computing architectures and cannot be performed in the human mind or with pen and paper. See, e.g., Applicant's Specification, [0026] (describing how "FI computing system 130 may include a plurality of interconnected, distributed computing components[,] ... which may be configured to implement one or more parallelized, fault-tolerant distributed computing and analytical processes." Furthermore, Applicant's Specification describes that "the distributed computing components of F1 computing system 130 may also include one or more graphics processing units (GPUs) capable of processing thousands of operations (e.g., vector operations) in a single clock cycle, and additionally, or alternatively, one or more tensor processing units (TPUs) capable of processing hundreds of thousands of operations (e.g., matrix operations) in a single clock cycle." Id. See, e.g., id., at [0022] and [0026]. Contrary to the Office's assertions, these computer-specific hardware components and parallelized protocols are inherent to the processes of Applicant's independent claims, just as a computerized manipulation of network monitors and pixels are inherent to the Office's own contrasting examples. See, e.g., Advisory Action, Continuation Sheet 4. See Arguments, pp. 21-22 – emphasis original.
The Examiner respectfully disagrees.
The computerized architecture performing the process is an additional element, an element recited in addition to the abstract idea (i.e., not an element of the abstract idea itself). The computer architecture is examined under Step 2A Prong Two to determine whether the additional elements in the claim integrate the abstract idea into a practical application. See MPEP $2106.05(f)(2).
Additionally, MPEP § 2106.04(a)(2)(III)(C) recites:
In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification. For instance, examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process.
The claimed invention recites a mental process even though the claimed invention recites that the mental process is being performed on a computer. The claims merely recite that the “concept is performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept.”
Applicant’s arguments are replete with assertions that the Examiner has failed to provide “sufficient reasoning to support its conclusion that Applicant’s independent claims recite a patent-ineligible” abstract idea.
The Examiner respectfully disagrees.
Examiner notes that MPEP §2106.07 (h) recites:
After examiners identify and explain in the record the reasons why a claim is directed to an abstract idea, natural phenomenon, or law of nature without significantly more, then the burden shifts to the applicant to either amend the claim or make a showing of why the claim is eligible for patent protection. See MPEP §2106.07 (h).
The Examiner has already explained in the record the reasons why the claim recites an abstract idea and, as such, the burden of proof shifts to the applicant to make a showing of why the claim does not.
Step 2A Prong Two
Applicant argues that the claimed invention recites a practical application, specifically “an improvement in the functioning of a computer, or an improvement to other technology or technical field,” and, as such, satisfies Step 2A Prong Two of the §101 Guidelines. See Arguments, pp. 23-30.
Specifically, Applicant argues:
Applicant further traverses the Office's assertions in the Advisory Action that Applicant's Specification "provides no evidence that the claimed invention results in an improvement to the functioning of a computer, an improvement to conventional technology or technological processes, or is addressing a technology-based problem," and that "there is no evidence in [Applicant's Specification] that the claimed invention has expanded the functionality of a computer." Advisory Action, Continuation Sheets 5-6. Applicant disagrees. Contrary to these unsupported assertions, Applicant's Specification expressly describes the technical problem addressed by the invention and provides detailed disclosure of the technological solution.
For example, Applicant's Specification describes expressly that the claimed processes "may enable the one or more of the F1 computing systems to predict, in real-time, a likelihood of an occurrence of service-specific attrition event . . . via an implementation of one or more parallelized, fault-tolerant distributed computing and analytical protocols across clusters of graphical processing units (GPUs) and/or tensor processing units (TPUs)." See Applicant's Specification, [0022] (emphasis added). Thus, Applicant's Specification expressly identifies a technology-based problem-the need for real-time prediction using parallelized distributed computing-and provides a technology-based solution involving specific computing hardware (GPUs, TPUs, etc.) and specific computing protocols (parallelized, fault-tolerant distributed computing). See, e.g., id., at [0022] and [0026]-[0027]. See Arguments, p. 28 – emphasis added.
The Examiner respectfully disagrees.
MPEP §2106.05(a) recites:
If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. – emphasis added.
While the specification does recite that the claimed process “may enable the one or more of the F1 computing systems to predict, in real-time, a likelihood of an occurrence of service-specific attrition event . . . via an implementation of one or more parallelized, fault-tolerant distributed computing and analytical protocols across clusters of graphical processing units (GPUs) and/or tensor processing units (TPUs),” such disclosure does not establish that the claimed invention results in an improvement to the functioning of a computer, an improvement to conventional technology or technological processes, or is addressing a technology-based problem. See specification, para. 22.
Stated in an alternative manner, if conventional computer technology was capable of “implementation of one or more parallelized, fault-tolerant distributed computing and analytical protocols across clusters of graphical processing units (GPUs) and/or tensor processing units (TPUs)distributed computing” then computer technology has not been improved.
Additionally, the specification does not provide any evidence that there is even a technology-based problem to be solved. While Applicant argues “Applicant's Specification expressly identifies a technology-based problem-the need for real-time prediction using parallelized distributed computing-and provides a technology-based solution involving specific computing hardware (GPUs, TPUs, etc.) and specific computing protocols (parallelized, fault-tolerant distributed computing),” a need for a tool does not necessarily mean that existing technology was not capable of performing the claimed process but for the claimed technology-based solution. A need for a tool is not necessarily a technology-based problem.
Examiner asserts that the claimed invention is analogous to Electric Power Group LLC v. Alstom SA (Fed. Cir. 2016) stated:
The claims here are unlike the claims in Enfish. There, we relied on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas” (in Alice, as in so many other § 101 cases, the abstract ideas being the creation and manipulation of legal obligations such as contracts involved in fundamental economic practices). Enfish, 822 F.3d at 1335-36; see Alice, 134 S. Ct. at 2358-59. That distinction, the Supreme Court recognized, has common-sense force even if it may present line-drawing challenges because of the programmable nature of ordinary existing computers. In Enfish, we applied the distinction to reject the § 101 challenge at stage one because the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computers could carry out one of their basic functions of storage and retrieval of data. Enfish, 822 F.3d at 1335-36; see Bascom, 2016 U.S. App. LEXIS 11687, 2016 WL 3514158, at *5; cf. Alice, 134 S. Ct. at 2360 (noting basic storage function of generic computer). The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. see Electric Power Group LLC v. Alstom SA, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016) – emphasis added.
The claimed invention is not an improvement to computer technology or computer functionality. Rather, the claimed invention is applying a computer’s existing capabilities (i.e., one or more parallelized, fault-tolerant distributed computing and analytical protocols across clusters of graphical processing units (GPUs) and/or tensor processing units (TPUs) distributed computing) to implement a particular abstract idea. As in Electric Power Group, the focus of the claimed invention is not on an improvement in computers as tools but on improving an abstract idea (i.e., predict, in real-time, a likelihood of an occurrence of service-specific attrition event) that uses computers as tools.
Applicant further argues:
The Office also asserts in the Advisory Action that "the claims, as written, fail to recite the details of how a technical solution to the technical problem was accomplished" and "merely recite that the claimed functions (i.e., the outcome) are being performed." Advisory Action, Continuation Sheet 6. Applicant disagrees, and contrary to the Office's assertions, Applicant's amended independent claims recite specific details of the technical solution described in Applicant's Specification, as described herein, including the claimed performance of operations "in parallel across a plurality of distributed computing components interconnected across a computing network, and in real-time upon receipt of the identifier that apply the trained artificial intelligence process to the feature values of the input dataset, and based on an application of the trained artificial intelligence process to the feature values dataset, that generate output data representative of a predicted likelihood of an occurrence of an attrition event involving the targeted participant during a second temporal interval," and the claimed transmission, "to the computing system[,] . . . [of] a notification comprising at least a portion of the generated output data and elements of explainability data . . . [that includes] a feature contribution value characterizing a contribution of a corresponding one of the feature values to the predicted likelihood of the occurrence of the attrition event during the second temporal interval," as recited similarly by Applicant's independent claims. See Arguments, pp. 28-29.
The Examiner respectfully disagrees.
MPEP §2106.05(f)(1) recites:
Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words “apply it”. See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more. See Electric Power, 830 F.3d at 1356, 119 USPQ2d at 1743 – emphasis added.
Assuming there was a technology-based problem (e.g., existing technology was incapable performing parallelized distributed computing), the claims, as written, fail to recite the details of how a technology-based solution to the technology-based problem was accomplished.
If there was a technology-based problem (e.g., existing technology was incapable of performing the claimed functions) then the claims should recite the details of the technology-based solution (e.g., how existing technology was improved to overcome this inability). However, the claims, as written, provide no such details and merely recite that the claimed functions (i.e., the outcome) are being performed.
Applicant previously argued:
For example, Applicant's Specification describes expressly that the claimed processes "may enable the one or more of the F1 computing systems to predict, in real-time, a likelihood of an occurrence of service-specific attrition event . . . via an implementation of one or more parallelized, fault-tolerant distributed computing and analytical protocols across clusters of graphical processing units (GPUs) and/or tensor processing units (TPUs)." See Applicant's Specification, [0022] (emphasis added). Thus, Applicant's Specification expressly identifies a technology-based problem-the need for real-time prediction using parallelized distributed computing-and provides a technology-based solution involving specific computing hardware (GPUs, TPUs, etc.) and specific computing protocols (parallelized, fault-tolerant distributed computing). See, e.g., id., at [0022] and [0026]-[0027]. See Arguments, p. 28 – emphasis added.
If the technology-based problem was an inability of existing technology to employ parallelized distributed computing and the technology-based solution is specific computing hardware and specific computing protocols, the specific computing hardware and the specific computing protocols should be recited in the claims.
Examiner notes that Claim 1 recites that the apparatus comprises at least one processor. Under the broadest reasonable interpretation, the apparatus comprises one processor. Applicant’s arguments assert that the claimed improvement requires multiple processors, such as GPUs and TPUs, to enable the parallelized distributed computing.
MPEP §2106.04(d) recites:
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f); [and]
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
Examiner asserts that the additional elements amount to merely (1) including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, or alternatively, (2) merely links the use of a judicial exception to a particular technological environment or field of use.
Step 2B
Applicant argues that the additional elements amount to “significantly more” than the abstract idea and, as such, satisfies Step 2B of the §101 Guidelines. See Arguments, pp. 30-32.
The Examiner respectfully disagrees.
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to no more than mere instructions to apply the exception using generic computer components. The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Applicant further argues:
Finally, the Supreme Court explained in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014) (hereinafter, "Alice Corp.") that claims reciting an "inventive concept" are patent eligible under 35 U.S.C. § 101:
[w]e have described step two of this analysis as a search for an inventive concept-i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.
Alice Corp., 573 U.S. at 217-218 (internal quotations and citations omitted). Here, Applicant's claims recite subject matter that is neither anticipated, nor rendered obvious by, the references of record, taken individually or in any allegedly proper combination. See Final Office Action p. 8 (failing to reject Applicant's claims under 35 U.S.C. §§ 102 or 103). Thus, Applicant's independent claims involve an "inventive concept" under 35 U.S.C. § 101, at least because the claims recite features that exceed "well-understood, routine, conventional activities" already known in the industry. See Alice Corp., 573 U.S. at 224-225. See Arguments, p. 31.
The Examiner respectfully disagrees.
A finding of novelty and nonobviousness does not necessarily lead to the conclusion that the additional elements amount to significantly more than the abstract idea. “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry.” See Assn for Molecular Pathology v. Myriad Genetics, Inc., 106 USPQ2d 1972, 1979 (2013). Indeed, "[t]he 'novelty' of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the §101 categories of possibly patentable subject matter.” See Diamond v. Diehr, 209 USPQ 1, 9 (1981); See also Mayo Collaborative Services v. Prometheus Laboratories, Inc., 101 USPQ2d 1961, 1973 (2012) (rejecting “the Government’s invitation to substitute §102, 103, and 112 inquiries for the better inquiry under §101.”)
8. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON M. BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RYAN D. DONLON can be reached on (571)270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692
June 13, 2026
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