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
1. This office action is in response to an amendment received on 11/24/25 for patent application 17/751,903.
2. Claims 2,9 are amended.
3. Claims 2-15 are pending.
RESPONSE TO ARGUMENTS
Applicant argues#1
Non-Statutory Subject Matter Rejection: 35 U.S.C. §101
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:
upon determining that the first of the plurality of compliance violation records
meets the received alert criteria, render a selectable alert;
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.
(The other independent claims, 9, has similar language.) These amendments are supported by the original specification at, for example, paragraph [0111]. 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. While in many cases supporting an IRMA can be considered to fall under the abstract idea of "Certain Methods of Organizing Human Activities," using computer techniques to determine which compliance violation records should be dealt with in a short period of time and then automatically responding to the most severe violations integrates the abstract idea into a practical application consistent with MPEP §2106.05(e) (other meaningful limitations). Filtering compliance violations is a service similar to the filtering discussed by the Federal Circuit in BASCOM:
While the claims of the '606 patent are directed to the abstract idea of filtering content, BASCOM has adequately alleged that the claims pass step two of Alice's two-part framework. BASCOM has alleged that an inventive concept can be found in the ordered combination of claim limitations that transform the abstract idea of filtering content into a particular, practical application of that abstract idea. We find nothing on this record that refutes those allegations as a matter of law or justifies dismissal under Rule 12(b)(6). We therefore vacate the district court's order granting AT&T's motion to dismiss under FRCP 12(b)(6) and remand so that the case may proceed.
BASCOM Global Internet Services v. AT&T Mobility, 827 F.3d 1341, 1352 (2016). Thus, using inherently computer-based filtering of the compliance violations, while clearly involving the judicial exception of "Organizing Human Activities," does not simply recite the judicial exception. Therefore, under the 2019 PEG, Step 2A, Prong 2, and MPEP 2106.05(a), these claims "reflect an improvement to [a] technical field" and thus integrate the alleged judicial exception into a practical application.
Examiner Response
Examiner respectfully disagrees.
The limitations (upon determining that the first of the plurality of compliance violation records meets the received alert criteria, render a selectable alert; 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) is part of the identified abstract idea.
The additional elements (An apparatus comprising memory, a network interface, a screen, and at least one processor) are recited at 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).
BASCOM was found patent eligible because the ordered combination was directed toward solving a problem arising in the realm of computer networks, providing a solution rooted in computer technology. BASCOM provided a filtering of content that was not independent of the internet. The ordered combination of elements as set forth by BASCOM, describe a customized filtering tool with customizable features specific to each end user.
It was the non-conventional and non-generic arrangement of known conventional elements which made BASCOM patent eligible.
Whereas as discloses in the instant specification (see spec paras cited below), discloses the processor and network interface recited at a high level of generality, operating in their ordinary capacity, which are being used as a tool to implement the identified abstract idea.
The cited portions of the specification are reproduced below:
[0051] As shown in FIG. 1, the server2 may comprise a plurality of modules, such as modules 22-34. Each module may comprise a processor as well as input and output devices for communicating with other modules, databases, and other system elements.
[0052] User interface module22 may communicate with users and enable users to communicate with server and other users. User interface module22 may cause information to be output to a user, e.g., at a user output device such as a display device (e.g., a display device at a user terminal), and/or a speaker. For example, user interface module22 may generate interactive user interfaces. The information outputted to a user may be (or be related to) a user account, one or more loans, loan specifications, loan documents, status, pop-ups, confirmation windows, loan submission indicia, and other information described herein. User interface module may communicate such information electronically, e.g., via networked communication such as the internet (e.g., in an email or webpage), telecommunication service, etc. In some embodiments, user interface module22 may comprise input devices for users to input information about one or more loans and/or financial instruments, and other information.
[0265] It will be readily apparent to one of ordinary skill in the art that the various processes described herein may be implemented by, e.g., appropriately programmed general purpose computers, special purpose computers and computing devices. Typically a processor (e.g., one or more microprocessors, one or more microcontrollers, one or more digital signal processors) will receive instructions (e.g., from a memory or like device), and execute those instructions, thereby performing one or more processes defined by those instructions.
Instructions may be embodied in, e.g., one or more computer programs, one or more scripts.
[0266] The term "compute" shall mean to determine using a processor in accordance with a software algorithm.
[0267] A "processor" means one or more microprocessors, central processing units (CPUs), computing devices, microcontrollers, digital signal processors, graphics processing units (GPUs) or like devices or any combination thereof, regardless of the architecture (e.g., chip-level 14-2424-C2
multiprocessing or multi-core, RISC, CISC, Microprocessor without Interlocked Pipeline Stages, pipelining configuration, simultaneous multithreading, microprocessor with integrated graphics processing unit, GPGPU).
These recitations from the specification do not disclose a non-conventional and non-generic arrangement of known conventional pieces as was the case in Bascom.
Therefore the claimed invention is unlike the invention in Bascom.
Therefore there are no additional elements that are indicative of integration into a practical application.
The rejection is maintained.
Applicant argues#2
The use of generic computing machinery in this context should not be a hindrance to allowance. Again quoting from the Commissioner for Patents' November 2, 2016, Memorandum on "Recent Subject Matter Eligibility Decisions," pages 2 and 3:
Notable Points from McRO: Examiners should consider the claim as a whole under Step 2A of the USPTO's SME guidance, and should not overgeneralize the claim or simplify it into its "gist" or core principles, when identifying a concept as a
judicial exception.
An "improvement in computer-related technology" is not limited to improvements in the operation of a computer or a computer network per se, but may also be claimed as a set of "rules" (basically mathematical relationships) that improve computer-related technology by allowing computer performance of a function not
previously performable by a computer.
An indication that a claim is directed to an improvement in computer-related
technology may include
(2) a particular solution to a problem or a particular way to achieve a desired outcome defined by the claimed invention, as opposed to merely claiming
the idea of a solution or outcome.
Like the invention claimed in McRO, the presently pending claims provide "a particular way to achieve a desired outcome," here, of finding the most pressing compliance violations and automatically dealing with them. 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.
The McRo court relied on the specification’s explanation of how the claimed rules enabled the automation of specific animation tasks that previously could not be animated when determining that the claims were directed to improvements in computer animation instead of an abstract idea.
The rules recited in the instant invention are not improving the computer related technology.
The instant specification recites in paras 51-52, 265-268 recite general purpose computing hardware components which are being used to implement the steps of the identified abstract idea, see MPEP 2106.05(f).
The hardware components that are recited are operating in exactly the same way they were designed to function.
There are no rules that are identified in the claims that are improving computer-related technology by allowing computer performance of a function not previously performed by a computer.
Therefore the claims are unlike the claims in McRo.
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:
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, 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, 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, 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 9 includes the following additional elements:
A processor, a network interface, a queue in a memory and an object.
The processor, network 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, there are no additional elements in the claim that amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use.
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. 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)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using computer hardware amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use. Generally linking the use of the judicial exception to a particular technological environment or field of use, with the use of generic 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
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 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 12/23/2025