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, 6-10, 12, 13, 14, and 16-24 are pending.
Claims 1, 3, 13, 14, 18, 20 and 22-24 were amended or newly added in the Applicant’s filing on 9/10/2025.
Claim(s) 5, 11, and 15 were cancelled in the Applicant’s filing on 9/10/2025.
This office action is being issued in response to the Applicant’s filing on 9/10/2025.
3. 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, 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. In other words, if the prior art structure is capable of performing the intended use, then it meets the claim.
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 emboldened 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, a computer system 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.
4. 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, 6-10, 12, 13, 14, and 16-24 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 first 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 first interaction data;
…, applying the … process to the feature values of the input dataset, and based on an application of the … process to the feature values, generating, … , 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 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 causing … to perform operations, consistent 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).
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 application (Claim(s) 1, 13 and 20) and a computing system (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 (i) adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, (ii) adding insignificant extra-solution activity to the judicial exception, and/or (iii) generally linking the use of judicial exception to a particular technological environment or field of use. 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, 6-10, 12, 14, 16-19 and 21-24 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.
5. Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1-4, 6-10, 12, 13, 14, and 16-24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites an apparatus to execute 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.
Claims 1, 13 and 20, as written, contain terms that are subjective or determinations of whether the claim limitations are satisfied are subjective. Specifically, said claims contain terminology such as “operations, consistent with …”. Claims are indefinite in circumstances where a claim contains a term that is completely dependent on a person’s subjective opinion. See MPEP §2173.05(b)(IV). As such, claims containing the cited claim limitations are rejected under §112, 2nd paragraph.
Appropriate correction is requested.
6. No Prior Art Rejection
Applicant’s argument regarding the prior art of record is persuasive, and therefore the current art rejection is withdrawn.
7. Response to Arguments
Applicant's arguments filed 9/10/2025 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, p. 11-12.
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, p. 11.
The Examiner respectfully disagrees.
Claim 1 is a system claim for an apparatus. The apparatus executes instructions causing the apparatus to transmit a notification to a computing system. The system claim is for the apparatus performing the transmitting, not the computer system receiving the transmission. The computer system is an element outside the scope of the claimed invention.
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. 19-22.
Specifically, the Applicant argues:
Even assuming that the quoted elements allegedly recited by Applicant's independent claims reflect accurately the actual language recited by these claims, which they do not, the Office fails to provide reasoning sufficient to support its conclusion that Applicant's independent recite a patent-ineligible method of organizing human activity or a patent-ineligible mental process. See, e.g., id.
As an initial point, none of the quoted elements allegedly recited by Applicant's independent claims, or the actual elements of Applicant's independent claims, recite explicitly any process for predicting "financial events." Furthermore, 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 "certain method of organizing human activity." Id., at p. 5. See Arguments, pp. 21-22 – emphasis original.
The Examiner respectfully disagrees.
This was addressed in the Final Rejection issued on 10/04/2024 and the Non-Final Rejection issueed on 6/10/2025. See Final Rejection, pp. 14-16; and Non-Final Rejection, pp. 17-18.
Interpretation of the claims is not limited to “the actual language recited by these claims” themselves. The claims are read in light of the specification.
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 finance occurrence, such as a decline in asset value, and the claimed invention performs operations to prevent the occurrence of said attrition event.
Predicting the probability of a negative financial event and attempting to prevent the occurrence of said 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).
Predicting the probability of a negative financial event and attempting to prevent the occurrence of said negative financial event is mitigation of a financial risk (i.e., the risk of a negative financial event). 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).
In a footnote, Applicant argues:
Contrary to the Office's assertions, Applicant's independent claims do not merely recite an "an application of a ... process to the input dataset." Final Office Action, pp. 4-5 (emphasis added). Instead, Applicant's independent claims recite similarly "an application of a trained artificial intelligence process," and the Office provides no support within the M.P.E.P. for abstracting out the specific process recited by Applicant's independent claims, i.e., the claimed "trained artificial intelligence process" in its analysis under Prong One of Step 2A of the Alice/Mayo test. Indeed, such a generalization is inconsistent with the Office's own examination procedures, which require that the Office "[i]dentify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea," and not a generalization of these specific limitations. 2019 Guidance, 84 Fed. Reg. 4, p. 54 (emphasis added). Further, the Office does not- and cannot- point to any portion of the M.P.E. P. that would support an assertion that the claimed "application of a trained artificial intelligence process" represents a patent-ineligible abstract idea. See Arguments, p. 21, footnote 2 – emphasis original.
The Examiner respectfully disagrees.
The Examiner identified the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea. See Final Rejection issued on 10/04/2024, pp. 4-5, Step 2A – Prong One; and Non-Final Rejection issued on 6/10/2025, pp. 5-6, Step 2A Prong One.
The claim elements that were “abstracted out” are additional claim elements, computerized elements recited in addition to the abstract idea. Additional claim elements were examined in the previous Final Rejection under Step 2A Prong Two, not Step 2A Prong One. See Final Rejection issued on 10/04/2024, pp. 5-6, Step 2B – Prong Two; and Non-Final Rejection issued on 6/10/2025, pp. 6-7.
Applying a trained artificial intelligence process is not a patent-ineligible abstract idea. The process (i.e., the abstract idea) being performed by the trained artificial intelligence is a patent-ineligible abstract idea. The abstract idea is being performed by a trained artificial intelligence, an additional claim element (i.e., a computerized claim element). 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.
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. 23-26.
Specifically, Applicant argues:
As an initial point, Applicant submits that the Office's analysis fails to identify properly those elements recited in Applicant's independent claims that extend beyond any allegedly recited abstract idea. Indeed, the Office's analysis under Prong One of Revised Step 2A of the Alice/Mayo test fails to establish that the elements of:
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, 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 second temporal interval being subsequent to the first temporal interval and being separated from the first temporal interval by a corresponding buffer interval.
as recited similarly by Applicant's independent claims in unamended form, represent one of the sub-grouping of "methods or organizing human activity" or "mental processes" deemed patent- ineligible by the Office. See, e.g., supra, at pp. 20-23. Thus, the Office's analysis of Applicant's independent claims under Prong Two of Revised Step 2A of the Alice/Mayo fails to identify properly those additional elements of Applicant's independent claims that extend beyond the allegedly recited method of organizing human activity, even un unamended form, and as such, this analysis cannot evaluate properly those additional elements individually, and in combination, to determine whether they integrate the exception into a practical application. The Office's analysis of Applicant's independent claims under Prong Two of Revised Step 2A of the Alice/Mayo test is inconsistent with the Office's current examination guidelines, and for these additional reasons, the rejection of Applicant's independent claims is improper and should be withdrawn. See, e.g., 2019 Guidance, 84 Fed Reg. 4, pp. 54-55. See Arguments, pp. 23-24.
The Examiner respectfully disagrees.
In the argued claim limitation, the claim recites an element of:
apply the … process to the feature values of the input dataset, and 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 second temporal interval being subsequent to the first temporal interval and being separated from the first temporal interval by a corresponding buffer interval.
The claim element recites an abstract idea under Step 2A Prong One, the abstract idea being either a fundamental economic practice or a mental process. The claim element recites applying a process (i.e., thinking, computing, calculating) to feature values, generating output data representative of a predicted likelihood of an occurrence of an attrition event involving the targeted participant during a second temporal interval, the second temporal interval being subsequent to the first temporal interval and being separated from the first temporal interval by a corresponding buffer interval.
In the argued claim limitation, the additional claim element (i.e., computerized claim element) is “the trained artificial intelligence.” The abstract idea is being performed by the additional element. There is no evidence that the performance of the abstract idea by the additional claim element demonstrates an integration of the exception into a practical application under Step 2A Prong Two.
Applicant further argues:
Furthermore, Applicant submits that the elements recited by Applicant's independent claims, when considered as a whole in unamended form, and when examined properly by the Office, provide a specific, technological improvement to an existing, computer-implemented predictive processes that ingest, operate on, and process increasingly large volumes of interaction data. See, e.g., Applicant's Amendment filed January 6, 2025, pp. 17-20 (citing Applicant's Specification, [0014]-[0022]. Thus, these quoted elements recited similarly by Applicant's independent claims, when properly considered as a whole even in unamended form, represent meaningful, unconventional limitations that integrate any allegedly abstract idea into a practical application, and as such, Applicant's independent claims are not directed to a patent ineligible abstract idea or other judicial exception. See Arguments, p. 24 – emphasis original.
Contrary to the Office's assertions, these quoted elements, recited similarly in Applicant's independent claims, which may facilitate, among other things, an application of a trained artificial intelligence process to an input dataset associated with a first temporal interval, a dynamic generation of output data indicative of a likelihood of an occurrence of an event during a second temporal interval subsequent to the first temporal interval and separated from the first temporal interval from a buffer interval, and a provisioning of a portion of the output data to a computing system concurrently with explainability data characterizing the application of the trained artificial intelligence process, represent a specific, technological solution that addresses a problem within, and that improves an operation of computing systems that implement, existing, predictive processes that ingest, operate on, and process increasingly large volumes of interaction data. See, e.g., Applicant's Specification, [0014]-[0022]. For example, the claimed combination of elements recited by Applicant's independent claims, when implemented via the parallelized, fault-tolerant distributed computing and analytical protocols described in Applicant's Specification, facilitate a generation of output data for each of the multiple, targeted participants while reducing a computational effort associated with the generation of such output data through existing predictive processes, e.g., based on a successive application of these existing processes to input datasets associated with corresponding ones of the targeted participants. See, e.g., id. See Arguments, pp. 25-26 – emphasis original.
The Examiner respectfully disagrees.
As previously stated in the Final Rejection issued on 10/04/2024 (see pp. 17-19) and the Non-Final Rejection issued on 9/10/2025 (see pp. 19-23), 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.
However, the specification does not provide any 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. Nor that there is even a technical (i.e., technology-based) problem to be solved.
For example, the specification provides no evidence that existing computers could not perform the recited method but for the technological solution offered by the claimed invention (i.e., there is no evidence in the specification that the claimed invention has expanded the functionality of a computer). The specification provides no evidence that the claimed invention has improved the functioning of artificial intelligence (i.e., there is no evidence in the specification that the claimed invention has improved computer technology or a technical field).
In the claimed invention, the computer has not been improved. The non-technological process that the software is performing may have been improved but, according to Alice, improving the process without any technological innovation is not statutory. The computer still operates according to its known and standard capabilities
Additionally, 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.
Even assuming there was a technical problem, the claims, as written, fail to recite the details of how a technical solution to the technical problem was accomplished.
For example, if there was a technical problem (e.g., existing technology was incapable of performing the claimed functions) then the claims should recite the details of the technical 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.
Examiner asserts that the claimed invention is analogous to Electric Power Group LLC v. Alstom SA (Fed. Cir. 2016) wherein the court 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 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 attrition events) that use computers as tools.
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. 27-28.
Specifically, Applicant 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, including Hollins and Magdelinic, taken individually or in any allegedly proper combination. See, e.g., supra, at p. 15. 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, pp. 20-21.
The Examiner respectfully disagrees.
Even assuming that the claimed invention overcame the previously asserted prior art (i.e., Hollins and Magdelinic), 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.”)
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.
8. Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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 January 17, 2026
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