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 .
DETAILED ACTION
Introduction
1. The following is a NON-FINAL Office Action in response to the communication received on 05/13/26. Claims 2-15 are now pending in this application.
2. A request for continued examination (RCE) 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the FINALITY of the previous Office Action has been WITHDRAWN pursuant to 37 CFR 1.114.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 05/13/26 has been entered.
Response to Amendments
3. Applicants Amendment has been acknowledged in that: Claims 2, 9 have been amended; hence such, claims 2-15 are now pending in this application.
RESPONSE TO ARGUMENTS
Applicant argues#1
Applicant respectfully submits that even were the presently pending claims found to fall under the judicial exception (Step 2A, Prong 1), they are integrated into a practical application of that exception (Step 2A, Prong 2). Therefore, a repeat of the §101 rejection would not be appropriate. Specifically, claim 2 as currently amended, recites:
2. (Currently Amended) An apparatus comprising memory, a network interface, a screen, and at least one processor configured to: receive compliance update for specific properties from an external system periodically and store the received compliance update in a databases: determining that a user prefers to see information concerning the specific properties; receiving information about insurance policies insuring respective properties of the specific properties, a plurality of compliance violation records and alert criteria including a selectable user interface, via a network interface, thereby providing an overview of outstanding compliance issues and work queues, wherein receiving the alert criteria comprises providing an object configured to receive a user input for selecting at least one alert criteria from a plurality of alert criteria
(The other independent claims, 9, has similar language.) These amendments are supported by the original specification at, for example, paragraph [0025] -[0027]. No new matter is added.
Under Step 2A, Prong 2, the presently pending claims recite a practical application, a specific technological improvement to an Insurance Risk Management Application ("IRMA"), one that, given the speed of online loan collateralization, is not possible without the use of the computing devices.
The claimed invention improves the functioning of the computer by receiving and updating compliance update for properties which is then used to generate an overview of outstanding compliance issues for a user to manage insurance risks. As a result, the presently amended claims provide "a particular way to achieve a desired outcome," here, of finding the most pressing compliance violations via a selectable user interface and automatically dealing with them.
Applicant respectfully submits that receiving the foregoing data feed improves the functioning of the computing device by simplifying operations, such as "determine whether a given compliance violation record meets an alert criteria." For example, a user does not have to retrieve the foregoing information. As a result, operations are performed faster.
Examiner Response
Examiner respectfully disagrees.
The limitations ( receive compliance update for specific properties and store the received compliance update; determining that a user prefers to see information concerning the specific properties; receiving information about insurance policies insuring respective properties of the specific properties, a plurality of compliance violation records, thereby providing an overview of outstanding compliance issues, wherein receiving the alert criteria; to receive a user input for selecting at least one alert criteria from a plurality of alert criteria) is part of the identified abstract idea.
The additional elements outside of the abstract idea, (the memory, network interface, screen, processor, external system, database, object, selectable user interface, work queues) are recited at a high level of generality and are being used as a tool to implement the steps of the identified abstract idea, see MPEP 2106.05(f).
Applicant argued the claims present a technical improvement. Examiner does not find this argument persuasive. Applicant’s claims do not improve technology; the underlying technology remains unaffected by the claims. Applicant is addressing a business problem (determining compliance violation records associated with a property) with a business solution. Applicant is merely using existing technology (for its intended purpose) to implement the business solution. Any improvements lie in the abstract idea itself, not in underlying technology.
The rejection is maintained.
Applicant argues#2
It is respectfully noted that, as the absence of any prior art references introduced in the Office Action indicate, the claimed invention is not known in prior art, it is needed to help manage insurance compliance amounts to something "significantly more" than the abstract idea which is a "certain methods of organizing human activity". The claims describe significantly more.
Accordingly, for at least the foregoing reasons, Applicant respectfully submits that under Step 2A, Prong 2, all presently pending claims are directed to a practical application, and Applicant requests that the §101 rejections be withdrawn.
Examiner Response
Examiner respectfully disagrees.
As far as novelty is concerned:
Firstly, Examiner would like to point out that, as made clear by the courts, the “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.” /Intellectual Ventures | v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188-89, 209 USPQ at 9). Furthermore, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. (MPEP 2106.05 (I))
Therefore there are no additional elements that amount to significantly more than the identified abstract idea.
The rejection is maintained.
Claim Rejections- 35 U.S.C § 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.
6. Claims 2-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims are either directed to a method, and apparatus which is one of the statutory categories of invention. (Step 1: YES).
Representative claim 9 recites the limitations of:
A method comprising:
receive compliance update for specific properties from an external system periodically and store the received compliance update in a database;
determining that a user prefers to see information concerning specific properties;
receiving information about insurance policies insuring respective properties of the specific properties, a plurality of compliance violation records and alert criteria via a network interface, including a user interface, thereby providing an overview of outstanding compliance issues and work queues, wherein receiving the alert criteria comprises
providing an object configured to receive a user input for selecting at least one criteria from a plurality of alert criteria;
storing, by the at least one processor, the received plurality of compliance records in a queue in memory;
determining, by the at least one processor, whether a first of the plurality of compliance violation records meets the received alert criteria, wherein the determining is based at least in part on the received information about the insurance policies insuring the respective properties;
upon determining that the first of the plurality of compliance violation records meets the received alert criteria, rendering, by the at least one processor, a selectable alert;
displaying, by the at least one processor, the first of the plurality of compliance violation records, in response to a selection of the alert by the user;
generating by the at least one processor, a letter based on a template that corresponds to the first of the plurality of compliance violation records; and
based, at least in part, on a severity level of the first of the plurality of compliance violation records, initiate foreclosure proceedings against the respective property.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity.
The claim recites elements that are in bold above, which covers performance of the limitation as a fundamental economic practice (mitigating risk, insurance) (steps for determining compliance violation records associated with insurance policies associated with properties), e.g, receive compliance update for specific properties periodically and store the received compliance update; determining that a user prefers to see information concerning specific properties; receiving information about insurance policies insuring respective properties of the specific properties, a plurality of compliance violation records and alert criteria, thereby providing an overview of outstanding compliance issues, wherein receiving the alert criteria comprises: to receive a user input for selecting at least one criteria from a plurality of alert criteria; storing the received plurality of compliance records; determining, whether a first of the plurality of compliance violation records meets the received alert criteria, wherein the determining is a based at least in part on the received information about the insurance policies insuring the respective properties; upon determining that the first of the plurality of compliance violation records meets the received alert criteria, rendering, a selectable alert; displaying, the first of the plurality of compliance violation records, in response to a selection of the alert by the user; generating a letter based on a template that corresponds to the first of the plurality of compliance violation records; and based, at least in part, on a severity level of the first of the plurality of compliance violation records, initiate foreclosure proceedings against the respective property.
Claim 2 recites substantially the same limitations as claim 9, and therefore is analyzed together with claim 9.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, claims 2,9 recite an abstract idea.
(Step 2A-Prong 1: YES. The claims are abstract)
This judicial exception is not integrated into a practical application. Limitations that are not indicative of integration into a practical application include: (1) Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (MPEP 2106.05.f), (2) Adding insignificant extra solution activity to the judicial exception (MPEP 2106.05.g), (3) Generally linking the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05.h).
Claim 2,9 includes the following additional elements:
An external system, database, work queues, processor, a network interface, a selectable user interface, a queue in a memory and object.
The external system, database, work queues, processor, network interface, selectable user interface, queue in a memory, and object are recited at a high level of generality and being used in its ordinary capacity and are being used as a tool for implementing the steps of the identified abstract idea, see MPEP 2106.05(f), where applying a computer or using a computer as a tool to perform the abstract idea is not indicative of a practical application.
Therefore, the claim, looking at the additional elements individually and in combination, are no more than mere instructions to apply the exception using generic computing components and is not a practical application. MPEP 2106.05(f).
The additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Therefore claims 2,9 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
Representative claim 9, fails STEP 2B because the claims as a whole, looking at the additional elements individually and in combination, are not sufficient to amount to significantly more than the judicial exception because. As discussed above with respect to integration of the abstract idea into a practical application, there are no additional elements recited in the claim beyond the judicial exception. Mere instructions to implement an abstract idea, on or with the use of generic computer components, or even without any computer components, cannot provide an inventive concept - rendering the claim patent ineligible. Thus claim 2,9 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 3-8, 10-15 which further define the abstract idea that is present in their respective independent claim 2,9 and thus correspond to Certain Methods of Organizing Human Activity and hence are abstract for the reasons presented above.
Claims 3, 10 recites, “wherein the at least one processor is configured to render a selectable compliance que tab on the screen”
The “selectable compliance que tab” is recited a high level of generality, operating in their ordinary capacity, and are being used as a tool to implement the steps of the identified abstract idea, see MPEP 2106.05(f)
Claims 8, 15 recite, “wherein the processor is configured to render a selectable alert icon..”
The “selectable alert icon” is recited a high level of generality, operating in their ordinary capacity, and are being used as a tool to implement the steps of the identified abstract idea, see MPEP 2106.05(f)
The dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the dependent claims 3-8, 10-15 are directed to an abstract idea. Thus, claims 2-15 are not patent-eligible.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMAD Z SHAIKH whose telephone number is (571)270-3444. The examiner can normally be reached M-T, 9-600; Fri, 8-11, 3-5.
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/MOHAMMAD Z SHAIKH/Primary Examiner, Art Unit 3694 7/22/2026
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