Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The Amendment filed May 18, 2026 has been entered. Claims 1-20 are pending and are rejected for the reasons set forth below.
Claim Rejections - 35 USC § 101
3. 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.
4. Claims 1-20 are rejected under 35 U.S.C. §101 because the claimed invention recites and is directed to a judicial exception to patentability (i.e., a law of nature, a natural phenomenon, or an abstract idea) and does not include an inventive concept that is “significantly more” than the judicial exception under the January 2019 and October 2019 patentable subject matter eligibility guidance (2019 PEG) analysis which follows.
Step 1
5. Under the 2019 PEG step 1 analysis, it must first be determined whether the claims are directed to one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of matter). Applying step 1 of the analysis for patentable subject matter to the claims, it is determined that the claims are directed to the statutory category of a process (claims 1-10), a machine (claims 11-19) and a manufacture (claim 20); where the machine and the manufacture are substantially directed to the subject matter of the process. (See e.g., MPEP §2106.03). Therefore, we proceed to step 2A, Prong 1.
Step 2A, Prong 1
6. Under the 2019 PEG step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more designated categories of patent ineligible subject matter (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability.
Claim 1 recites the abstract idea of:
A method for operation of [[an insurance workflow management system]], comprising:
receiving, [[by a server in the insurance workflow management system]], a transaction request and a set of insurance-related requirements associated with the transaction request from [[a first client device]];
generating, [[by the server]], a unique identifier that corresponds to the transaction request and the set of insurance-related requirements;
determining, [[by the server]], that the unique identifier is excluded from unique identifiers stored at [[a database operably connected to the server]],
in response to determining that the unique identifier is excluded from the unique identifiers stored at [[the database]]:
algorithmically generating, [[by the server]], a template pattern in a format based at least in part on the transaction request and the set of insurance-related requirements;
associating, [[by the server]], the template pattern with the plurality of template patterns;
selecting, [[by the server]], based on the set of insurance-related requirements the template pattern from the plurality of template patterns stored at [[the database]];
constructing, [[by the server]], the template document comprising a plurality of input fields and based on the template pattern;
generating, [[by the server]], using the template document, a tailored communication document by:
retrieving, [[from the database]], first data associated with a first input field of the plurality of input fields;
inserting the first data in the tailored communication document;
determining a task based on the template pattern and the first data;
receiving, [[via the user interface]], user input representing the second data; and
inserting the second data in the tailored communication document.
Here, the recited abstract idea falls within one or more of the three enumerated 2019 PEG categories of patent ineligible subject matter, to wit: certain methods of organizing human activity, which includes fundamental economic practices or principles and/or commercial interactions (e.g., insurance -- here, generating documentation corresponding to an insurance transaction request).
Step 2A, Prong 2
7. Under the 2019 PEG step 2A, Prong 2 analysis, the identified abstract idea to which claim 1 is directed does not include limitations or additional elements that integrate the abstract idea into a practical application.
Besides reciting the abstract idea, the limitations of claim 1 also recite generic computer components (e.g., an insurance workflow management system, a server in the insurance workflow management system, a first client device, a database operably connected to the server, a user interface, and a second client device). In particular, the recited features of the abstract idea are merely being applied on a computer or computing device or via software programming that is simply being used as a tool (“apply it”) to implement the abstract idea. (See e.g., MPEP §2106.05(f)). Therefore, these additional elements are recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using generic computer components. In other words, the additional elements are simply used as tools to perform the abstract idea.
Claim 1 also includes the following limitation:
generating, based on the task, a user interface requesting second data associated with a second input field of the plurality of input fields;
sending, by the server first instructions to a second client device, the first instructions causing the second client device to present the user interface on a display of the second client device; and
sending, by the server, a second communication associated with the unique identifier and including second instructions to the first client device, the second communication causing the first client device to present the tailored communication document on the display of the first client device.
This limitation merely states that the system the insurance workflow management system displays various information (e.g., a request for requesting second data, and the tailored communication document) via a user interface. However, the claims do not provide significant technical detail regarding how the information is displayed. Rather, the claim simply states that the information is displayed on the first/second client device via a user interface. Therefore, these limitations amount to no more than merely outputting/displaying data, which is a form of insignificant extra-solution activity (See MPEP 2016.05(g): OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)).
Claim 1 also recites the following limitation:
the database storing: a plurality of transaction request records associated with the unique identifiers, and a plurality of template patterns associated with respective transaction requests.
This limitation merely states that the server comprises a database that stores a plurality of transaction requests and a plurality of template patterns. However, the claims do not provide any technical detail regarding how the data is stored. Rather, the claims simply state that the transaction requests are stores in a database with a unique identifier. Therefore, these limitations amount to no more than merely storing data, which is a form of insignificant extra-solution activity ((See MPEP 2016.05(d): Versata Dev. Group, Inc. v. SAP Am., Inc., 793F.3d 1306, 1334 (Fed. Cir. 2015); and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d at 1363).
Thus, claim 1 does not include any limitations or additional elements that integrate the abstract idea into a practical application. As a result, claim 1 is directed to an abstract idea.
Step 2B
8. Under the 2019 PEG step 2B analysis, the additional elements of claim 1 are evaluated to determine whether they amount to something “significantly more” than the recited abstract idea. (i.e., an innovative concept). Here, the recited additional elements (e.g., an insurance workflow management system, a server in the insurance workflow management system, a first client device, a database operably connected to the server, a user interface, and a second client device), do not amount to an innovative concept since, as stated above in the Step 2A, Prong 2 analysis, the claims are simply using the additional elements as a tool to carry out the abstract idea (i.e., “apply it”) on a computer or computing device and/or via software programming (See e.g., MPEP §2106.05(f)). The additional elements are specified at a high level of generality such that they are being used in the claims to simply implement the abstract idea and are not themselves being technologically improved (See e.g., MPEP §2106.05 I.A.); (See also e.g., applicant’s Specification at least Paragraphs 84-95).
Additionally, the following limitation identified above as insignificant extra-solution activity (merely outputting/displaying data) has been reevaluated under Step 2B:
generating, based on the task, a user interface requesting second data associated with a second input field of the plurality of input fields;
sending, by the server first instructions to a second client device, the first instructions causing the second client device to present the user interface on a display of the second client device; and
sending, by the server, a second communication associated with the unique identifier and including second instructions to the first client device, the second communication causing the first client device to present the tailored communication document on the display of the first client device.
As stated in MPEP 2106.05(d), a factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity (Berkheimer v. HP, Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018)). In view of this requirement set forth by Berkheimer, this limitation does not integrate the abstract idea into a practical application, or amount to significantly more than the abstract idea, because the courts have found the concept of merely outputting/displaying data to be well-understood, routine, and conventional activity (See MPEP 2106.05(d): OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)).
Additionally, the following limitation identified above as insignificant extra-solution activity (merely storing data) has been revaluated in Step 2B:
the database storing: a plurality of transaction request records associated with the unique identifiers, and a plurality of template patterns associated with respective transaction requests.
In view of the requirement set forth by Berkheimer, this limitation does not integrate the abstract idea into a practical application, or amount to significantly more than the abstract idea, because the courts have found the concept of merely storing data to be well-understood, routine, and conventional activity (See MPEP 2016.05(g): Versata Dev. Group, Inc. v. SAP Am., Inc., 793F.3d 1306, 1334 (Fed. Cir. 2015); and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d at 1363).
Thus, claim 1 does not recite any additional elements that amount to “significantly more” than the abstract idea.
Additional Independent Claims
9. Independent claims 11 and 20 are similarly rejected under 35 U.S.C. 101 for the reasons described below:
Claim 11 recites limitations that are substantially similar to those recited in claim 1. However, the primary difference between claims 11 and 1 is that claim 11 is drafted as a system rather than as a method. Similarly, as described above regarding claim 1, claim 11 recites generic computer components (e.g., a server in an insurance workflow management system comprising one or more processors and one or more non-transitory computer-readable media storing computer-executable instructions, a first client device, a database operably connected to the server and storing a plurality of template patterns, a user interface, and second client device) that are simply being used as a tool (“apply it”) to implement the abstract idea. Therefore, since the same analysis should be used for claims 1 and 11, claim 11 is not patent eligible (See Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014)).
Claim 20 recites limitations that are substantially similar to those recited in claim 1. However, the primary difference between claims 20 and 1 is that claim 20 is drafted as a computer readable medium rather than as a method. Similarly, as described above regarding claim 1, claim 20 recites generic computer components (e.g., one or more non-transitory computer-readable media storing instructions, one or more processors, a server, a first client device, a database operably connected to the server, a user interface, and a second client device) that are simply being used as a tool (“apply it”) to implement the abstract idea. Therefore, since the same analysis should be used for claims 1 and 20, claim 20 is not patent eligible (See Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014)).
Dependent Claims
10. Dependent claims 2-10 and 12-19 are also rejected under 35 U.S.C. 101 for the reasons described below:
Claims 2 and 12 simply recite method steps for generating and displaying the tailored communication document in a web browser of the first client device. However, the claims do not provide significant detail regarding how this data is displayed. Therefore, this amounts to no more than merely outputting/displaying data, which is a form of insignificant extra-solution activity. (See MPEP 2016.05(g): OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)). In view of the requirement set forth by Berkheimer, these limitations do not integrate the abstract idea into a practical application, or amount to significantly more than the abstract idea, because the courts have found the concept of merely outputting/displaying data to be well-understood, routine, and conventional activity (See MPEP 2106.05(d): OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, (Fed. Cir. 2014)).
Claims 3 simply refines the abstract idea because it recites process steps (e.g., updating the transaction request based on the second data) that fall under the category of organizing human activity, namely generating documentation corresponding to an insurance transaction request, as described above regarding claim 1.
Claims 4 and 14 simply refine the abstract idea because they recite process steps (e.g., initiating the performance of tasks by the business entity, such as reviewing the template pattern selection and approving the template document) that fall under the category of organizing human activity, namely generating documentation corresponding to an insurance transaction request, as described above regarding claim 1. Simply stating that these processes are performed by generic computer-related components does not integrate the abstract idea into a practical application, or amount to significantly more than the abstract idea.
Claims 5 and 15 simply refine the abstract idea because they recite process steps (e.g., receiving data corresponding to the template document, populating the template document with test data, sending the template document to the business entity, and delegating the template document approval process to the business entity) that fall under the category of organizing human activity, namely generating documentation corresponding to an insurance transaction request, as described above regarding claim 1. Simply stating that these processes are performed by generic computer-related components does not integrate the abstract idea into a practical application, or amount to significantly more than the abstract idea.
Claim 6 simply refines the abstract idea because it recites process steps (e.g., updating the insurance related requirements based on the second data) that fall under the category of organizing human activity, namely generating documentation corresponding to an insurance transaction request, as described above regarding claim 1.
Claim 7 simply refines the abstract idea because it recites process steps (e.g., parsing test data to extract input field test data, populating input fields with the test data, determining that the populated input fields correspond to the transaction request, and generating the tailored communication document in response to the determination) that fall under the category of organizing human activity, namely generating documentation corresponding to an insurance transaction request, as described above regarding claim 1.
Claim 8 simply states that the system applies optical character recognition technology to a document to generate the set of insurance related requirements. However, the claim does not provide significant technical detail regarding how the optical character recognition is performed. Therefore, this limitation amounts to no more than applying generic optical character recognition technology to implement the abstract idea on a computer.
Claim 9 simply provides further definition to the “transaction request” and the “template document” recited in claim 1. Simply stating that the transaction request is a request for an insurance solution does not provide any indication of an improvement to any technology or technological field. Rather, this simply defines the type of request received by the system. Additionally, simply stating that the template document is “pre-filled” with third data does not provide any indication of an improvement to any technology or technological field. The claims do not provide any technical detail regarding how the document is prepopulated with data. Therefore, this amounts to no more than simply entering data for inclusion in the template document.
Claim 10 simply provides further definition to the “insurance related requirements” recited in claim 1. Simply stating that the insurance related requirements are received via a user interface does not provide any indication of an improvement to any technology or technological field. The claims do not provide significant detail regarding how the user interface is structured, or how the user interacts with the user interface. Therefore, this amounts to no more than simply applying a generic user interface to facilitate the abstract idea.
Claims 13 simply refine the abstract idea because it recites process steps (e.g., updating the template document based on updates to the insurance-related requirements) that fall under the category of organizing human activity, namely generating documentation corresponding to an insurance transaction request, as described above regarding claim 1.
Claim 16 simply provides further definition to the “second communication” recited in claim 11. Simply stating that the first communication is sent upon approval of the template document does not provide any indication of an improvement to any technology or technological field. Rather, this merely defines when the communication is sent.
Claim 17 recite the limitations, “tracking, by the server, a status of the first communication and the template document using the unique identifier; and updating, by the server, the database to reflect the status of the first communication.” These limitations simply state that the server tracks and updates data regarding the status of the first communication and the template document. However, the claims do not provide any detail regarding how this data is tracked and updated by the server. Therefore, this amounts to no more than mere data gathering, which is a form of insignificant extra-solution activity. (See MPEP 2106.05(g): See MPEP 2106.05(g): OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2024)). In view of the requirement set forth by Berkheimer, these limitations do not integrate the abstract idea into a practical application, or amount to significantly more than the abstract idea, because the courts have found the concept of mere data gathering to be well-understood, routine, and conventional activity (See MPEP 2106.05(d): OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, (Fed. Cir. 2014)).
Claim 18 simply states that the one or more template patterns comprise one or more template patterns in a second format distinct from the first format. However, the claims do not provide significant technical detail regarding the template formats and how they are implemented. Therefore, such limitations simply add further definition to the “template patterns” recited in claim 11, and do not provide an indication of a technical improvement to any technology or technological field.
Claim 19 simply provides further definition to the “second format” recited in claim 18. Simply stating that the second format is a JSON format does not provide any indication of an improvement to any technology or technological field. Rather, this amounts to no more than merely applying a generic, known type of format to the template pattern.
Thus, the dependent claims do not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application) that results in the claims being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Response to Arguments
11. Applicant’s arguments filed May 18, 2026 have been fully considered.
Arguments Regarding 35 U.S.C. 101
12. Applicant’s arguments (Amendment, Pages 11-16) concerning the prior rejection of the claims under 35 USC §101, including supposed deficiencies in the rejection, are not persuasive for the following reasons. Under the prior and current 101 analysis under 2019 PEG, the amended claims recite and are directed to a patent ineligible abstract idea, without something significantly more, for the reasons given above after consideration of the claimed features and elements. The abstract idea has been restated herein in line with the 2019 PEG guidance and the amended claims. Applicant is directed to the above full Alice/Mayo analysis in the 101 rejection.
Additionally, on pages 12 and 13 of their remarks, the applicant argues, “Because the amended claims recite subject matter that is neither achievable by human intervention nor pertaining to economic, commercial, or legal practices, Applicant respectfully submits that the algorithmic template pattern generation recited in the independent claims is not an abstract idea under Prong One of Step 2A in the Alice/Mayo test. Accordingly, Applicant respectfully submits that claim 1 does not fall into the grouping of a mental process or certain methods of organizing human activity as asserted in the Office Action.” The examiner respectfully disagrees. Firstly, the examiner notes that the claims have not been categorized under the grouping of “mental processes” as asserted by the applicant. Therefore, the arguments presented by the applicant regarding the mental processes grouping are moot. However, the examiner also notes the claims recite limitations corresponding to the generation of insurance-related documents, and interacting with an individual to receive input and provide the insurance-related documents. Such limitations clearly fall under the category of fundamental economic practices regarding insurance and/or commercial interactions.
Additionally, on pages 14 and 15 of their remarks, the applicant argues, “applying the rule set forth in MPEP § 2106.04(d)(1) and MPEP § 2106.05(a), claim 1 recites ordered combinations to implement specific improvements to the technical field of generating a tailored digital communications document deriving data from various, potentially voluminous, sources determined "on the fly." Furthermore, this tailored digital communication is generated using a template derived from a template pattern that is algorithmically generated based on a transaction request and associated requirements.” The examiner respectfully disagrees. Specifically, the examiner notes that the claims do not recite limitations which amount to an improvement to any technology or technological field. Rather, the claims simply apply generic computer-related components to implement the abstract idea on a computer. In other words, the claims do not recite an improvement to the technology that facilitates the generation digital tailored communication documents. For example, simply stating that the template pattern is generated “algorithmically” does not provide any indication of an improvement to any technology or technological field. The claims do not provide any technical detail regarding the algorithm used to generate the template pattern. Therefore, such limitations amount to no more than merely generating the template pattern based on the transaction request and the insurance-related requirements.
Additionally, on pages 15 and 16 of their remarks, the applicant argues, “Applying the rule set forth in MPEP § 2106.05(a), amended claim 1 recites a particular solution to address the computer-centric challenge of processing large volumes of data from a variety of sources (including users) to generate up-to-date and tailored communications that are based on customized template patterns generated based on specific requirements associated with a transaction request." Furthermore, this tailored digital communication is generated using a template derived from a template pattern that is algorithmically generated based on a transaction request and associated requirements… Such features are neither well-understood, routine, nor conventional in the field. As explained above, the conventional system does not process transaction requests and related requirements to generate a template pattern that can ultimately be used to generate a tailored document that may include a variety of types and volumes of data.” The examiner respectfully disagrees. While the examiner recognizes that the methods described in claim 1 may provide benefits to the process of facilitating insurance workflows, these benefits are not achieved through an improvement to any technology or technological field. As discussed above, the claims simply recite the use of generic computer-related technology to facilitate the creation and communication of insurance-related documents. Such limitations do not provide an indication of a technical improvement to any technology or technological field. Additionally, the examiner notes that whether conventional systems have performed the claimed methods is not a consideration under 35 U.S.C. 101. As described in MPEP2106.04(I), “The Supreme Court’s decisions make it clear that judicial exceptions need not be old or long-prevalent, and that even newly discovered or novel judicial exceptions are still exceptions.” In other words, a new abstract idea is still an abstract idea.
Therefore, for these reasons and the reasons given above, the rejection of these claims under 35 U.S.C. §101 is maintained.
Citation of Pertinent Prior Art
13. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Magnus (U.S. Pre-Grant Publication No. 20070179818): Describes a method and system for submission, processing and resolution of insurance-related claims. Specifically, the invention relates to a method and system for the integrated management of the submission, processing, resolution and advance funding of healthcare-related no-fault insurance claims.
Zhou (U.S. Pre-Grant Publication No. 20030018481): Describes a method and apparatus for generating configurable documents. Each document that is generated by the system is comprised of a set of interrelated components. Each of the components is assembled into a document template that when processed by a configuration engine forms a configured document.
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 WILLIAM D NEWLON whose telephone number is (571)272-4407. The examiner can normally be reached Mon - Fri 8:30 - 4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart can be reached at (571) 272-3955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM D NEWLON/Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
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