DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 Feb 17, 2026 has been entered.
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The amendment filed on Feb 17, 2026 has been entered. The following has occurred: Claims 1 and 11 have been amended; Claims 6 and 16 were previously cancelled; Claims 8 and 18 have been cancelled.
Claims 1-5, 7, 9-15, 17, 19, and 20 are pending.
Response to Amendment
35 U.S.C. 112(b) rejection has been added in light of the amendment.
35 U.S.C. 101 rejection has been maintained in light of the amendment.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
The later-filed application must be an application for a patent for an invention, which is also disclosed in the prior application (the parent or original non-provisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. § 112(a) or the first paragraph of pre-AIA 35 U.S.C. § 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed applications, Application No. 16/128,814; 16/010,382; 14/799,459; and Provisional Applications No. 63/196,479; 62/024,846; and 62/024,816 fail to provide adequate support or enablement in the manner provided by 35 U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph for one or more claims of this application. Specifically, the parent applications fail to provide written description support for:
“an employer graphical user interface that provides functionality, via a computer network, for an employer to: … attest that the employer performs the employee screening procedures specified by the employer; and” “receives verification documents from the employer, verifying that the employer performs the employee screening procedures specified by the employer; outputs an attestation to the assessor, executed by the employer, attesting that the employer performs the employee screening procedures specified by the employer” recited in claims 1 and 11;
“wherein the employer graphical user interface provides functionality for the employer to upload the verification documents via the computer network” recited in claims 4 and 14;
“assessor” recited in claims 1, 5, 7, 11, 15, and 17;
“stores a date stamp indicative of the date when the employer specified, via the employee graphical user interface, the employee screening procedures performed by the employer; outputs the date stamp to the assessor; and provides functionality for the assessor to contact the employer to re-specify the employee screening procedures performed by the employer and/or re-attest that the employer performs the employee screening procedures identified by the employer” recited in claims 8 and 18;
“scrapes web pages; identifies, in the scraped web pages, job listings posted by the employer advertising open positions; and identifies, in the identified job listings, employee screening procedures performed by the employer” recited in claims 9 and 19;
“wherein the web scraping module comprises a neural network trained on a dataset that includes job listings advertising open positions and indicating the employee screening procedures to be performed to screen candidates for those open positions” recited in claims 10 and 20.
The dependent claims 2-5, 7, 9, 10, 12-15, 17, 19, and 20 depend from the independent claims 1 and 11 above and therefore inherit the deficiencies of their parent claim. Therefore, claims 1-5, 7, 9-15, 17, 19, and 20 do not get priority of the filing date of the parent applications because the parent applications fail to demonstrate possession of such claim terms.
Accordingly, the earliest effective filing date of the instant application is its filing date of June 6, 2022.
Claim Rejections - 35 USC § 112
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.
Claims 1-5, 7, 9-15, 17, 19, and 20 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 pre-AIA the applicant regards as the invention.
Claim 1 recites “outputs an attestation to the assessor,” and claim 11 recites “outputting an attestation to the assessor,” (bold emphasis included) which lacks antecedent basis. Claim 1 does not recite an assessor. The claim limitations were previously integrated from originally claims 6, 8, 16, and 18 that were dependent of claim 5 which introduced “an assessor.” For the purpose of expediting compact prosecution, the Examiner will interpret “outputs an attestation to the assessor,” to be --outputs an attestation to an assessor-- in claim 1 and “outputting an attestation to the assessor,” to be -- outputting an attestation to an assessor-- in claim 1. Accordingly, dependent claims 5 and 15 recite “an assessor” should read --the assessor--.
Claims 2-5, 7, 9, 10, 12-15, 17, 19, and 20 depend from claims 1 and 11 above and therefore inherit the 35 U.S.C. 112 deficiencies of their parent claim.
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 1-5, 7, 9-15, 17, 19, and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Is the claim to a process, machine, manufacture or composition of matter? (MPEP 2106.03)
In the present application, claims 1-5, 7, 9, and 10 are directed to a system (i.e. a machine) and 11-15, 17, 19, and 20 are directed to a method (i.e. a process). Thus, the eligibility analysis proceeds to Step 2A. prong one.
Step 2A. prong one: Does the claim recite an abstract idea, law of nature, or natural phenomenon? (MPEP 2106.04)
While claims 1 and 11 are directed to different categories, the language and scope are substantially the same and have been addressed together below.
stores: a plurality of industries; a plurality of employee screening procedures; and an industry-specific weight for each of the plurality of employee screening procedures and each of a plurality of industries, wherein each industry-specific weight is indicative of a relative importance of performing the employee screening procedure to reduce the risk of harm or loss posed by an organization in the industry;
for an employer to: specify the employee screening procedures performed by the employer; and attest that the employer performs the employee screening procedures specified by the employer; and
receives verification documents from the employer, verifying that the employer performs the employee screening procedures specified by the employer;
outputs an attestation to the assessor, executed by the employer, attesting that the employer performs the employee screening procedures specified by the employer;
identifies the industry of the employer; and
quantifies the risk of harm or loss posed by the employer by summing each of the industry-specific weights, for the industry of the employer, of the employee screening procedures performed by the employer;
stores a date stamp indicative of the date when the employer specified, via the employee graphical user interface, the employee screening procedures performed by the employer;
outputs the date stamp to the assessor; and
provides functionality for the assessor to contact the employer to re-specify the employee screening procedures performed by the employer and/or re-attest that the employer performs the employee screening procedures specified by the employer.
The claimed invention is directed to an abstract idea of quantifying risk from employee screening procedure.
The bolded portions of limitations above recite concepts performable in the human mind including observation, evaluation, and judgement, which falls under “Mental Processes,” one of the abstract idea categories. Under the broadest reasonable interpretation, other than the additional elements, the claims 1 and 11 recite processes that are all acts that could be performed by a human, e.g., mentally or manually, using a pen and paper, without the use of a computer or any other machine. For example, a business assessor (i.e., person), using pen and paper or via oral communication, could store information for a plurality of industries, a plurality of employee screening procedures, and an industry-specific weight for each of the employee screening procedures; an employer can specify with the functionality of a check box on paper that the employee screening procedures to be performed manually by the employer and attest that the employer has manually performed the employee screening procedures specified by the employer; receive verification documents from the employer that verifies (example of observation, evaluation, and judgement) the employer performed the employee screening procedures; present an attestation to the assessor that the employer has performed the employee screening procedures; the assessor can identify the industry of the employer; quantify the risk of harm or loss posed by the employer by summing each of the industry-specific weights of the employee screening procedures performed by the employer for the industry of the employer; store a date stamp indicative of when the employer specified the employee screening procedures performed by the employer; present the date stamp to the assessor; and for the assessor to contact the employer to re-specify the employee screening procedures performed by the employer and/or re-attest that the employer performs the employee screening procedures specified by the employer.
Additionally, the bolded portions of the above-mentioned limitations, other than the (non-bolded portions of the limitations) additional elements, recite a fundamental economic practice long prevalent in our system of commerce in the form of mitigating risk for risk management business in assessing business based upon screening practices, which falls within the “Certain Methods of Organizing Human Activity” category of the abstract ideas. That is, humans such as analysts, creditors, and assessors, have been responsible for gathering information, storing information and analyzing business standards of screening practices to review and determine the businesses creditability and risk, before the invention of computer systems were available to support these tasks, because risk assessment industry has existed longer than computers, this is supported by the applicant’s specification in para. [0002]-[0004]).
The claims specifically recite and require for an employer and an assessor (human per se), to manually perform the employee screening procedures and attest that the employer has performed the employee screening procedures specified by the employer, without the need of a computer. The functionality and viability of the claimed invention are dependent of the employer’s ability to perform the employee screening procedures and attest the employer performs the employee screening procedures to be done manually. This specifically affirms the claims are directed to abstracts idea under the categories of “Mental Processes” and “Certain Methods of Organizing Human Activity.”
Lastly, under the broadest reasonable interpretation, other than the recitation of the additional elements (non-bolded portions of the limitations), the claims 1 and 12 recite a step of quantifying the risk of harm by summing each of the industry-specific weights, for the industry of the employer, of the employee screening procedures performed by the employer (limitation [F]), that is a step of performing mathematical calculations (i.e. quantifying by summing weights), which falls under “Mathematical Concept” category of the abstract ideas.
Accordingly, the claims 1 and 11 recite an abstract idea and the analysis proceeds to Step 2A. prong two.
Step 2A. prong two: Does the claim recite additional elements that integrate the judicial exception into a practical application? (MPEP 2106.04)
This judicial exception is not integrated into a practical application because the additional elements merely add instructions to apply the abstract idea to a computer.
The additional elements considered include:
“a system for quantifying the risk of harm or loss posed by an employer, the system comprising: non-transitory computer readable storage media that,” “an employer graphical user interface that provides functionality, via a computer network,” and “a hardware processing unit,” “provides functionality;”
This judicial exception is not integrated into a practical application because the additional elements merely add instructions to apply the abstract idea to a computer and insignificant extra-solution activity. In particular, the claim only recites the above-mentioned additional elements to store, specify, receive, identify, quantify (i.e. analyze), output, and contact (i.e., communicate) information. The additional elements in the steps are recited at a high-level of generality (i.e., as generic computer components performing a generic computer function; see applicant’s specification para. [0039], [0040] and fig. 1 describing the system server may be any hardware computing devices having one or more hardware computer processors that perform the functions described. In fig. 2A and para. [0041] describing generic computer-readable storage media and system graphical user interface) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”).
That is, the function of limitations [A]-[I] are steps of 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 as discussed in MPEP 2106.05(f). The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer. Accordingly, even in combination, these additional element(s) do not integrate the abstract idea into a practical application because they do not improve a computer or other technology, do not transform a particular article, do not recite more than a general link to a computer, and do not invoke the computer in any meaningful way; the general computer is effectively part of the preamble instruction to “apply” the exception by the computer. Therefore, the claims are directed to an abstract idea and the analysis proceeds to Step 2B.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? (MPEP 2106.05)
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the bold portions of the limitations recited above, were all considered to be an abstract idea in Step2A-Prong Two. The additional elements and analysis of Step2A-Prong two is carried over. For the same reason, these elements are not sufficient to provide an inventive concept. Applicant has merely recited elements that instruct the user to apply the abstract idea to a computer or other machinery. When considered individually and in combination the conclusion, as discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer to perform the above-mentioned limitations in [A]-[I] amount to no more than mere instructions to apply the function of the limitations to the exception using generic computer component, as discussed in MPEP 2106.05(f). The claim as a whole merely describes how to generally “apply” the concept for quantifying risk from employee screening procedure. Thus, viewed as a whole, nothing in the claim adds significantly more (i.e. an inventive concept) to the abstract idea. For these reasons there is no inventive concept in the claims and thus are ineligible.
As for dependent claims 2 and 12, these claims recite limitations that further define the abstract idea noted in the independent claims. The claims further recite additional descriptive information regarding to the stored employee screening procedures and the stored industry-specific weights are derived from literature. The additional descriptive information does not change the abstract idea of the independent claims. The claims do not recite new additional element. The further detail of the claim limitation does not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technology environment. The claims are ineligible.
As for dependent claims 3 and 13, the claims recite the use of the same additional element previously indicated in the independent claims, at a high level of generality (i.e. as a generic computer system performing generic computer functions of generating, storing, selecting, and comparing information) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Even in combination, the additional element does not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself, see MPEP 2106.05(f). The claims are ineligible.
As for dependent claims 4 and 14, the claims recite the use of the same additional element previously indicated in the independent claims, at a high level of generality (i.e. as a generic computer system performing generic computer functions of uploading information) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Even in combination, the additional element does not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself, see MPEP 2106.05(f). The claims are ineligible.
As for dependent claims 5 and 15, the claims recite the use of the same additional element previously indicated in the independent claims, at a high level of generality (i.e. as a generic computer system performing generic computer functions of outputting information) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Even in combination, the additional element does not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself, see MPEP 2106.05(f). The claims are ineligible.
As for dependent claims 7 and 17, the claims recite another abstract step of using the same additional element previously indicated in the independent claims, at a high level of generality (i.e. as a generic computer system performing generic computer functions of outputting information) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Even in combination, the additional element does not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself, see MPEP 2106.05(f). The claims are ineligible.
As for dependent claims 9 and 19, the claims recite the use of the same additional element previously indicated in the independent claims, at a high level of generality (i.e. as a generic computer system performing generic computer functions of scrapping and identifying information) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Even in combination, the additional element does not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself, see MPEP 2106.05(f). The claims are ineligible.
As for dependent claims 10 and 20, these claims recite limitations that further define the abstract idea noted in above. The claims further recite additional descriptive information regarding to the web pages are scraped by a neural network trained on a dataset. The additional descriptive information does not change the abstract idea of the independent claims. The use of trained neural network is simply being used to facilitate the tasks of the abstract idea. They do not integrate the abstract idea into a practical application and are not significantly more, alone or in combination (see MPEP 2106.05(f)). The claims are ineligible.
Therefore, claims 1-5, 7, 9-15, 17, 19, and 20 are rejected under 35 U.S.C. 101.
Response to Remarks
35 U.S.C. 101 Rejections:
The Applicant’s remarks are fully considered however are found to be unpersuasive.
On page 8 of the remarks, the applicant asserts: “Those computer processing steps not "a novel method of assessing an organization's risk of loss or harm" because they have no bearing whatsoever on the underlying risk assessment. Instead, their only function is to provide practical benefits to the users of the computing system. They are, in other words, "additional elements" beyond any method assessing an organization's risk of loss or harm. As to "how/why the additional elements are directed to improved computer functionality": those features improve the functioning of prior art computing systems by providing functionality that not provided by those prior art computing systems. In other words, because they are an improvement to the functionality of the computer rather than an improvement to a business practice previously done by humans.”
The examiner respectfully disagrees. The applicant does not provide any detail to the specifics of the improvement nor how the additional elements are an improvement to the functionality of the computer.
That is, based on the specification’s description, the additional elements of the system which includes “a server 160 may be any hardware computing device having one or more hardware computer processors that perform the functions described herein. For example, the server 160 may be a web server that provides a graphical user interface to receive information from the assessor computer 140 and the employer computer 120 via the internet. As described below, the server 160 may also receive information from publicly accessible third-party information sources 130. For example, the server 160 may scrape the web for publicly accessible information regarding the employer 20.” (Para. [0040]); “FIG. 2A is a block diagram illustrating the risk quantification system 200 according to an exemplary embodiment. As shown in FIG. 2A, the risk quantification system 200 includes one or more databases 260 (stored, for example, by the computer-readable storage media 180) and a system graphical user interface (GUI) 269 (provided by the server 160 and accessible, for example, via the one or more networks 150).” (Para. [0041]); “The system risk quantification 200 provides functionality, via the system GUI 269, to update the list of pre-stores employee screening procedures 270 and/or the industry-specific weights 280 in response to changes in the consensus for what is considered best practices in each industry.” (Para. [0047]); “the risk quantification system 200 may provide functionality, via the assessor GUI 249, for the assessor 40 to specify contact information 224 for the employer 20.” (Para. [0050]); “the risk quantification system 200 provides functionality to identify an employer 20 and the employer industry 222.” (Para. [0053]); “an attestation view 800 of the employer GUI 229 generated and output by the risk quantification system 200 according to an exemplary embodiment. As shown in FIG. 8, the risk quantification system 200 may be configured to receive an attestation 226 from the employer 20 that the employer information 220 provided by the employer 20 via the risk quantification system 200 is true and correct.” (Para. [0060]); “the web scraping module 230 may parse each job listing or other information source using a machine learning algorithm (e.g., a neural network) trained on a training dataset of job listings and/or other information sources.” (Para. [0063]).
The additional elements as described in the specification, can be any hardware computing device, that includes process, computer-readable storage media, and a system graphical user interface (GUI), to perform the computer functions of receiving information from computer via the internet; scraping the web for accessible information; updating the list of employee screening procedure and information; specifying contact information; identifying employer industry; generating and outputting information; receiving an attestation from employer. These are examples of any (i.e. generic) computer system is able to perform the generic computer functions without the need to explain how a computer is able to receive, identify, attest, output, scrap, and quantify information because one ordinary skill in the art would be able to recognize a computer system is capable of performing the described computer functions. As discussed in MPEP 2106.05(f)(1), if the claim limitations that attempt to cover any solution or 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). The claims and the specification only recite the system with processor can perform the computer function/functionality to produce the result of receiving information, scraping information, updating information, generating information, outputting information, and using machine learning algorithm. The specification does not describe the technological detail or mechanism for accomplishing the result other than just using a computer can accomplish the result for a benefit.
The applicant previously stated a problem the invention is designed to solve, “this application is directed to a system that quantifies an organization's risk of future loss, for example the risk of a home health organization putting patients at risk of harm by failing to provide the expected standard of care, as opposed to the standard practice of humans using their subjective judgment to assess each organization's risk of future loss.” The examiner asserts, that is a business/economic problem for evaluating and quantifying an organization’s risk which falls under “Mental Processes” and “Mathematical Concepts” of the abstract idea categories. The analysis of the risk or rating of the organization is subject to the employer executing the screening procedure and the standard/rules/instructions followed. The application is merely utilizing or applying computer system for convenience and the predicted result that will be accomplished without description of how the mechanism for accomplishing the result other than by utilizing a computer system. This is not technological problem and there is no technological improvement reflected in the claims nor the specification.
Thus, the 101 rejection has been maintained.
Conclusion
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/WENREN CHEN/Primary Examiner, Art Unit 3626