DETAILED ACTION
Status of Claims
1. This office action is in response to RCE filed 8/14/2025.
2. Claims 1-3, 6-9, 11, 12, 14-16, 18-21 are pending.
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/14/2025 has been entered.
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 1-3, 6-9, 11, 12, 14-16, 18-21
Claims 1-3, 6-9, 11, 12, 14-16, 18-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Claims 1-11 are directed to a system; claims 12-17 are directed to a method; claims 18-21 are directed to a computer readable device – each of which is one of the four statutory categories of invention.
Step 2A: A claim is eligible at revised Step 2A unless it recites a judicial exception and the exception is not integrated into a practical application of the application.
Prong 1: Prong One of Step 2A evaluates whether the claim recites a judicial exception (an abstract idea enumerated in the 2019 PEG, a law of nature, or a natural phenomenon).
Groupings of Abstract Ideas:
I. MATHEMATICAL CONCEPTS
A. Mathematical Relationships
B. Mathematical Formulas or Equations
C. Mathematical Calculations
II. CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY
A. Fundamental Economic Practices or Principles (including hedging, insurance, mitigating risk)
B. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)
C. Managing Personal Behavior or Relationships or Interactions between People (including social activities, teaching, and following rules or instructions)
III. MENTAL PROCESSES.
Concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
See MPEP 2106.04 (a) (2) Abstract Idea Groupings [R-10.2019]
Determining whether an insurance policy request is associated with subrogation and should be assigned to a request handler or not be assigned or to a specialist; arranging for requesting party to answer a series of questions based on codes; determining, based on the answers provided and a set of investigation rules, whether the request should be assigned to an insurance subrogation specialist to investigate whether another enterprise (insurer) may be responsible for responding to the request; utilize a machine learning algorithm to evaluate if any requests should be routed to a specialist where the evaluation includes a series of questions; evaluated performance of question set based on decision accuracy; refine series of questions based on the evaluation of system decision accuracy, including ordering of two or more questions in the question set and adjusting phrasing of two or more questions in the question set; generate an alert based on a prediction by the machine learning algorithm – involves observation, evaluation, judgment or opinion and hence falls under the abstract idea category of Mental Process. Utilizing a machine learning algorithm involves Mathematical Concepts. The above steps also involve processing insurance claim requests and deciding whether to assign to subrogation specialist which involves Commercial/Legal Interactions and/or Managing Interactions between People and thus also fall under the abstract idea category Certain Methods of Organizing Human Activity. Examiner thus notes that the concepts recited in the independent claims 1, 12 and 18, when considered as a whole, recite a combination of abstract ideas.
MPEP 2106.04 Eligibility Step 2A: Whether a Claim is Directed to a Judicial Exception [R-07.2022]
II. B. Evaluating Claims Reciting Multiple Judicial Exceptions
A claim may recite multiple judicial exceptions. For example, claim 4 at issue in Bilski v. Kappos, 561 U.S. 593, 95 USPQ2d 1001 (2010) recited two abstract ideas, and the claims at issue in Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 101 USPQ2d 1961 (2012) recited two laws of nature. However, these claims were analyzed by the Supreme Court in the same manner as claims reciting a single judicial exception, such as those in Alice Corp., 573 U.S. 208, 110 USPQ2d 1976.
In other claims, multiple abstract ideas, which may fall in the same or different groupings, or multiple laws of nature may be recited. In these cases, examiners should not parse the claim. For example, in a claim that includes a series of steps that recite mental steps as well as a mathematical calculation, an examiner should identify the claim as reciting both a mental process and a mathematical concept for Step 2A Prong One to make the analysis clear on the record.
See also RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract.”).
The dependent claims further limit the abstract idea to – types of request characteristics; adjusting questions based on answers; type of request handler; type of business rule; type of retrieval; categorizing request based on investigation rules; type of insurance policy – that constitute Certain Methods of Organizing Human Activity.
Hence under Prong One of Step 2A, the claims recite a combination of judicial exceptions.
Prong 2: Prong Two of Step 2A evaluates whether the claim recites additional elements that integrate the judicial exception into a practical application of the exception.
Limitations that are indicative of integration into a practical application include:
Improvements to the functioning of a computer or to any other technology or technical field – see MPEP 2106.05(a)
Applying the judicial exception with, or by use of, a particular machine – see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing – see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception – see MPEP 2106.05(e)
Limitations that are not indicative of integration into a practical application include:
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 – see MPEP 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception – see MPEP 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Additional elements recited by the claims, beyond the abstract idea, include: data store; encrypted database management system; computer server including processor and memory, and communication port; non-transitory computer readable storage medium; machine learning algorithm; user interface; and graphical display via distributed communication network, communication device. As per para [0028] (“The back-end application computer server 250 and/or the other elements of the system 200 might be, for example, associated with a Personal Computer (“PC”), laptop computer, smartphone, an enterprise server, a server farm, and/or a database or similar storage devices.”). As per para [0037] (“the phrase “machine learning” may refer to artificial intelligence techniques including methods that “learn” (leveraging data to improve performance for a given task). For example, a machine learning algorithm may build a model based on sample data (known as training data) to make predictions or decisions.”). As per para [0029], communication network may be LAN, WAN, WAP, etc. Generating subrogation user interface, generating a graphical display, establishing a communication link with a communication device, transmitting an alert, and displaying an alert on the communication device are insignificant extra solution activities. See MPEP 2106.05(g) (“all uses of the recited judicial exception require such data gathering or data output”).
Hence, Examiner finds that any additional element(s), beyond the abstract idea, has been recited at a high level of generality such that the claim limitations – retrieving, determining, arranging, utilizing, routing, updating, and generating – amount to no more than mere instructions to apply the exception using generic components or insignificant data gathering activities. The combination of additional elements does not purport to improve the functioning of a computer or effect an improvement in any other technology or technical field. Instead, the additional elements do no more than “use the computer as a tool” and/or “link the use of the judicial exception to a particular technological environment or field of use.” The focus of the claims is not on improvement in computers, but on certain independently abstract ideas – determining whether an insurance policy request should be assigned to a request handler or not be assigned; arranging for requesting party to answer a series of questions; determining, based on the answers provided and a set of investigation rules, whether the request should be assigned to an insurance subrogation specialist to investigate whether another enterprise (insurer) may be responsible for responding to the request; utilize a machine learning algorithm to evaluate if any requests should be routed to a specialist where the evaluation includes a series of questions; generate an alert based on a prediction by the machine learning algorithm – that merely use computers as tools. Steps that do no more than spell out what it means to “apply it on a computer” cannot confer patent eligibility. See Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claim[] any less abstract.”).
Hence, the additional elements individually or as an ordered combination, do not integrate the judicial exception into a practical application.
For the above reasons, claims are ineligible under Step 2A.
Step 2B:
In Step 2B, the evaluation consists of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception.
As discussed in Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using generic computer components, which is insufficient to provide an inventive concept.
When considered individually or as an ordered combination, the additional elements fail to transform the abstract idea of – determining whether an insurance policy request should be assigned to a request handler or not be assigned; arranging for requesting party to answer a series of questions; determining, based on the answers provided and a set of investigation rules, whether the request should be assigned to an insurance subrogation specialist to investigate whether another enterprise (insurer) may be responsible for responding to the request; utilize a machine learning algorithm to evaluate if any requests should be routed to a specialist where the evaluation includes a series of questions; generate an alert based on a prediction by the machine learning algorithm – into significantly more.
See MPEP 2106.05(f) Mere Instructions To Apply An Exception [R-10.2019].
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.
Hence, the claims are ineligible under Step 2B.
Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to an abstract idea without significantly more.
Response to Arguments
Applicant's arguments filed 8/14/2025 have been fully considered but they are not persuasive.
101
Applicant argues (page 14 of arguments filed 8/14/2025) that the amendment recites generating a dynamic question set based on claim description codes, evaluating performance of the question set based on system decision accuracy, and automatically refining the series of questions in the question set based on the evaluation of the system decision accuracy. As a result not only does the claimed system automatically determine where to transmit a request, evaluate with a machine learning model if currently assigned requests are transmitted to an appropriate location, update the machine learning model, generate an alert, activate a workflow, establish a communication link and automatically transmit the generated alert, but the claims also recite automatically evaluating performance of the question set based on system decision accuracy, and automatically refining the series of questions in the question set based on the evaluation of the system decision accuracy. Such a technical solution does not qualify as mental processes, human activity or mathematical concepts.
Examiner respectfully disagrees.
Examiner notes that the steps of – generating a dynamic question set based on claim description codes, evaluating performance of the question set based on system decision accuracy, and automatically refining the series of questions in the question set based on the evaluation of the system decision accuracy – can be performed orally by human analysts including mentally evaluating their accuracy and refining the questions based on the accuracy. To place this mental or human process into an automated context using machine learning model is merely limiting an abstract idea to a particular technological environment. Therefore, to call this a technical solution is not persuasive.
Applicant argues that the claims require automatically evaluating performance of a question set based on system decision accuracy, automatically refining the question set based on the evaluation, in response to a machine learning evaluation, automatically routing the resource request to at least one of the request handler and the specialist, wherein the automatic routing reduces an amount of network messaging bandwidth usage; and wherein the subrogation rate is a gross life of claim recovery divided by a gross loss paid for all claims – that are not “well- understood, routine, and conventional.”
Examiner respectfully disagrees because Berkheimer analysis applies to the additional elements and not to the abstract idea. Here, Berkheimer analysis is inapplicable because (1) part of the limitations that the Applicant points to – evaluating performance of a question set based on system decision accuracy, automatically refining the question set based on the evaluation, in response to a machine learning evaluation, automatically routing the resource request to at least one of the request handler and the specialist – constitutes abstract idea(s) and not additional element(s), whereas (2) the remaining limitation – wherein the automatic routing reduces an amount of network messaging bandwidth usage – merely reflects a speculative effect or result of application of the abstract idea which does not fall under Berkheimer analysis.
Previously Addressed
Applicant argues (page 13 of arguments filed 4/29/2025) that the claim features may improve the communication network performance, reducing user bandwidth by reducing the information processed by the system. Applicant argues that by reducing the electronic tariff, by not sending requests to a party that cannot fulfill them, improves the operation of the various portions of the computer system.
Examiner respectfully disagrees.
Examiner notes that limitation (“(v) based on the determination the resource request is associated with subrogation, generate a subrogation user interface and arrange for the resource request to be serviced by the specialist, wherein the resource requests associated with subrogation are not processed by the request handler, thereby reducing a number of messages transmitted via a distributed communication network;”) in claims 1, 12 and 18 a) merely reflects an effect or result, b) is speculative and may never materialize, and c) does not provide a meaningful limitation because it merely applies the abstract idea to achieve a desired result. See MPEP 2106.05(f) (1) (cautioning against claims “so result focused, so functional, as to effectively cover any solution to an identified problem”), (3) (“describes “the effect or result dissociated from any method by which maintaining the state is accomplished” and does not provide a meaningful limitation because it merely states that the abstract idea should be applied to achieve a desired result”).
More importantly, any reduction of processing is attributed exclusively to the application of the abstract idea on generic computers and therefore not sufficient to demonstrate patent eligibility. Courts have consistently held that improved speed or efficiency inherent with applying an abstract idea on a computer are not sufficient to demonstrate an inventive concept. See OIP Techs v. Amazon.com (Fed. Cir. 2015) (“relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.”); Intellectual Ventures I LLC v. Capital One Bank (Fed. Cir. 2017), (“claiming the improved speed or efficiency inherent with applying the abstract idea on a computer does not provide a sufficient inventive concept.”); Intellectual Ventures I LLC v. Capital One Bank (USA) (Fed. Cir. 2015) (“[M]erely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.”); Intellectual Ventures I LLC v. Erie Indemnity (Fed. Cir. 2017) (“Though the claims purport to accelerate the process of finding errant files and to reduce error, we have held that speed and accuracy increases stemming from the ordinary capabilities of a general-purpose computer do not materially alter the patent eligibility of the claimed subject matter.”).
Finally, with respect to preemption, courts have consistently held that arguments about the lack of preemption risk cannot save claims that are deemed to only be directed to patent-ineligible subject matter. (“While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.”) Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); (“where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.”) Ariosa, 788 F.3d at 1379. See also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract.”).
Previously Addressed
Applicant argues, citing para [0031] and non-precedential PTAB decisions, that there is no practical way for a human mind to account for all these parameters.
Examiner finds this unpersuasive.
A PTAB panel reversed the Examiner’s eligibility rejection of Adjaoute’s claims because the claimed subject matter could not practically be performed in the human mind. In contrast, Examiner notes it not be reasonable for the applicant to argue that, but for the additional elements, the underlying concept in the pending claims cannot be performed by interacting with another person in the mind or with the aid of pencil and paper. The claims simply utilize a machine learning algorithm as a tool to perform the abstract idea of determining whether an insurance policy request should be assigned to a request handler or not. Determining, based on the answers to questions provided to a request handler and a set of investigation rules, whether the request should be assigned to an insurance subrogation specialist to investigate whether another enterprise (insurer) may be responsible for responding to the request does not require computers or machine learning algorithm for its performance. For the above reasons, neither of the non-precedential PTAB decisions, cited by the applicant, are applicable here.
In response to applicant’s, incorrect understanding of the controlling precedent argument that no outstanding art rejections renders the claims novel and non-obvious, Examiner points out that the courts have consistently held that an abstract idea does not transform into an inventive concept just because the prior art does not disclose or suggest it. Neither a finding of novelty nor a non-obviousness determination automatically leads to the conclusion that the claimed subject matter is patent eligible. “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“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.”). See MPEP 2106.04 Eligibility Step 2A: Whether a Claim is Directed to a Judicial Exception [R-07.2022] (Cf. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) (“a new abstract idea is still an abstract idea.”)
Previously Addressed
Applicant argues that the “an encrypted database management system and at least one security feature component” is patent eligible based on Cosmokey Solutions v Duo Security.
Examiner respectfully disagrees.
Applicant’s reliance on CosmoKey is misplaced. In that case, the Federal Circuit found that the “patent claims and specification recite a specific improvement to authentication that increases security, prevents unauthorized access by a third party, is easily implemented, and can advantageously be carried out with mobile devices of low complexity.” CosmoKey, 15 F.4th at 1098. The claim limitations were “specific and recite[d] an improved method for overcoming hacking by ensuring that the authentication function is normally inactive, activating only for a transaction, communicating the activation within a certain time window, and thereafter ensuring that the authentication function is automatically deactivated.” Id. at 1099.
Claim 1 of this application is not so specific, nor does Applicant argue that it claims an invention for authentication functions or that it improves security. Thus, while “improving computer or network security can constitute a non-abstract computer-functionality improvement if done by a specific technique that departs from earlier approaches to solve a specific computer problem” (CosmoKey, 15 F.4th at 1099 claim 1 fails to recite such an improvement. The mere recitation of encrypted database management system does not rise to the level of CosmoKey Solutions. For the above reasons, Applicant’s arguments are not persuasive.
Applicant also cites a number of District Court cases to argue in favor of the feature of reducing the amount of information between claim handler and subrogation specialist.
Examiner first notes none of the cases are precedential or binding on the patent office. Second, the nature of the invention of the many of the cases, e.g., Preferential Networks, Data LLC, Electric Scripting, Nasdaq, etc., differs significantly from the present case. Third, the Synchronoss Technologies decision cited by the Applicant has already been overruled by the Federal Circuit in Dropbox Inc. v. Synchronoss Technologies Inc. (Fed. Cir. 2020). Fourth and finally, any alleged bandwidth reduction comes from the capabilities of the generic computer components to carry out the abstract idea of claims adjudication. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.), cert. denied, 136 S. Ct. 701 (2015) (“[R]elying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.”). Routing resource request to the appropriate specialist may speed up claims processing does not improve the back-end application server. See Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084 (Fed. Cir. Apr. 18, 2019) (“This invention makes the trader faster and more efficient, not the computer. This is not a technical solution to a technical problem.”) (“The claims of the ‘999 patent do not improve the functioning of the computer, make it operate more efficiently, or solve any technological problem. Instead, they recite a purportedly new arrangement of generic information that assists traders in processing information more quickly”); See Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. Apr 30, 2019) (“The claims are focused on providing information to traders in a way that helps them process information more quickly, ’556 patent at 2:26–39, not on improving computers or technology.”).
Previously Addressed
Applicant argues that the claims not fall with Certain Methods of Organizing Human Activity, or Mental Process or Mathematical Concepts.
Examiner respectfully disagrees.
As set forth above, determining whether an insurance policy request should be assigned to a request handler or not be assigned and arranging for requesting party to answer a series of questions; determining, based on the answers provided and a set of investigation rules, whether the request should be assigned to an insurance subrogation specialist to investigate whether another enterprise may be responsible for responding to the request – involves observation, evaluation, judgment or opinion and hence falls under the abstract idea category of Mental Process. The above steps also involve processing insurance claim requests and deciding whether to assign to subrogation specialist which involves Commercial/Legal Interactions and/or Managing Interactions between People and thus also fall under the abstract idea category Certain Methods of Organizing Human Activity. Examiner thus notes that the concepts recited in the independent claims 1, 12 and 18, when considered as a whole, recite a combination of abstract ideas.
Applicant argues that claims cannot be performed in the mind but fails to explain why – the steps of determining whether to route an insurance claim request to a handler, present a series of questions, and routing to a subrogation specialist – requires anything more than observation, evaluation, judgement or opinion including oral or written question and answers with the requesting party. See MPEP 2106.04 (a) (2) III (“Another example is FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 120 USPQ2d 1293 (Fed. Cir. 2016). The patentee in FairWarning claimed a system and method of detecting fraud and/or misuse in a computer environment, in which information regarding accesses of a patient’s personal health information was analyzed according to one of several rules (i.e., related to accesses in excess of a specific volume, accesses during a pre-determined time interval, or accesses by a specific user) to determine if the activity indicates improper access. 839 F.3d. at 1092, 120 USPQ2d at 1294. The court determined that these claims were directed to a mental process of detecting misuse, and that the claimed rules here were “the same questions (though perhaps phrased with different words) that humans in analogous situations detecting fraud have asked for decades, if not centuries.” 839 F.3d. at 1094-95, 120 USPQ2d at 1296.”).
Applicant argues that utilizing a machine learning algorithm to evaluate resource requests would be too difficult and challenging in view of the computational complexity involved. Examiner finds this unpersuasive because machine learning has been recited in the claims at a very high level of generality. No specific machine learning model has been disclosed in the specification. Examiner notes that, a person of ordinary skills in art would recognize that machine learning algorithm could encompass Linear Regression, Naïve Bayes, Decision Tree, etc., to name a few. Under the broadest reasonable interpretation, determining whether a request from Requester 1 should be assigned to Request Handler A or Subrogation Specialist B does not involve any more computational complexity than a simple mental process or writing down on a piece of paper.
Applicant argues that the type of method is akin to computer programming which is not a commercial or legal interaction.
In response, Examiner points out that courts have consistently held that mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology. See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1056 (Fed. Cir. 2017) (“But merely ‘configur[ing]’ generic computers in order to ‘supplant and enhance’ an otherwise abstract manual process is precisely the sort of invention that the Alice Court deemed ineligible for patenting.”). Here, the claimed invention merely automates formerly human activity of evaluating resource requests which is not sufficient to overcome patent ineligibility. Simply placing the operations in an automated context will generally not confer eligibility. “The Supreme Court and the Federal Circuit have repeatedly made clear that merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract.” Affinity Labs of Tex., LLC v. DirecTV, LLC,838 F.3d 1253, 1259 (Fed. Cir. 2016).
MPEP 2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field [R-10.2019]:
II. IMPROVEMENTS TO ANY OTHER TECHNOLOGY OR TECHNICAL FIELD
Consideration of improvements is relevant to the integration analysis regardless of the technology of the claimed invention. Notably, the court did not distinguish between the types of technology when determining that the invention improved technology. However, it is important to keep in mind that an improvement in the judicial exception itself (e.g., a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG LLC, the court determined that the claim simply provided a trader with more information to facilitate market trades, which improved the trader but did not improve computers or technology.
Similarly, any purported improvement in the claims is in the judicial exception itself and not in the technology. Using a machine learning algorithm to evaluate whether an insurance request should be routed to a specialist may improve the insurance business process workflow but it does nothing to improve computers or technology. Indeed, nothing in the claims improves the functioning of a computer, makes it operate more efficiently, or solves any technological problem. See Trading Techs. Int’l, Inc. v. IBG LLC, (Fed. Cir. 2019). There is a fundamental difference between computer functionality improvements, on the one hand, and uses of existing computers as tools to perform a particular task, on the other. The present claims are directed at routing an insurance resource request and merely use a computer to improve the performance of that determination not the performance of a computer.
The combination of additional elements does not bring about (i) an improvement to the functionality of a computer or other technology or technical field; (ii) a “particular machine” to apply or use the judicial exception; (iii) a particular transformation of an article to a different thing or state; or (iv) any other meaningful limitation. See MPEP 2106.05(a)-(c), (e)-(h). Hence, the additional elements fail to integrate the recited combination of abstract idea(s) into a practical application or provide significantly more. See MPEP 2106.05(f).
For the above reasons, Applicant’s arguments are not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARUNAVA CHAKRAVARTI whose telephone number is (571)270-1646. The examiner can normally be reached 9 AM - 5 PM ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Calvin Hewitt can be reached at (571)272-6709. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ARUNAVA CHAKRAVARTI/Primary Examiner, Art Unit 3692