DETAILED ACTION
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 .
Status of Claims
This action is in reply to the amendment filed 01/29/2026.
Claims 1, 4, 6-10, 14-16, and 18-20 have been amended. Claims 1-20 are pending and have been examined on the merits (claims 1, 8, and 15 being independent).
The amendment filed 01/29/2026 to the claims has been entered.
Response to Arguments
Applicant’s arguments and amendments filed 01/29/2026 have been fully considered.
Applicants assert that the pending claims fully comply with the requirement of 35 U.S.C. 101. Examiner respectfully disagrees. Applicant’s argument and amendments have been considered and are not persuasive. The rejections under 35 U.S.C. 101 have been maintained and clarified in view of the USPTO MPEP 2106.
Applicant arguments (see Applicant’s remarks, pages 11-16):
(1) Applicant arguments that “Applicant respectfully asserts that the presently amended claims are eligible under the USPTO "2019 Revised Patent Subject Matter Eligibility Guidance" (see Federal Register/Vol. 84, No. 4, dated January 7, 2019 (hereinafter "2019 PEG")) because the claims are not directed to an abstract idea, and the claims are directed to a technological solution to a technical problem” (see remarks, page 11), are not found persuasive.
Response (1): As set forth in previous Office Action, it is determined whether the claims are directed to a judicial exception such as a law of nature, a natural phenomenon, or an abstract idea (See Alice, 134 S. Ct. at 2355) by identify the specific limitation(s) in the claim that recites abstract idea(s); and then determine whether the identified limitation(s) falls within at least one of the groupings of abstract ideas enumerated in the MPEP 2106.04. The cited limitations as drafted are systems and methods that, under their broadest reasonable interpretation, covers performance of a method of organizing human activity, but for the recitation of the generic computer components (e.g., a processor or a graphical user interface). Further, none of the limitations recite technological implementations details for any of the steps but, instead, only recite broad functional language being performed by the generic use of a processor or a graphical user interface. Prioritizing insurance tasks or claims for a claim handler in an insurance company is a fundamental economic practice long prevalent in commerce systems. If a claim limitation, under its broadest reasonable interpretation, covers a fundamental economic principle or practice but for the general linking to a technological environment, then it falls within the organizing human activity grouping of abstract ideas. Accordingly, the claim recites an abstract idea, and so this is a business solution to a business problem. Therefore, Applicant’s arguments are not persuasive.
(2) Applicant arguments that “Applicant respectfully asserts that the amended independent claims include limitations that reflect an improvement in the functioning of a task prioritization module, in which case "the claim integrates the judicial exception into a practical application and thus imposes a meaningful limit on the judicial exception." Section III(A) of October Update.” (see remarks, page 14), are not found persuasive.
Response (2): In the instant application, the claim limitations are not indicative of integration into a practical application by claiming an improvement to the functioning of the computer or to any other technology or technical field. Further, the claim limitations are not indicative of integration into a practical application by applying or using the judicial exception in some other meaningful way. In particular the claim limits of 1) “by a processor” amounts to simply applying the abstract idea to a computer component. (e.g. “apply it”) 2) “via a display” and “graphical user interface” describe transmitting data to a generic device as a display. The “a display” is not described in the specification in such a way to require anything more than merely a generically “interactive” display, and therefore also amounts to simply applying the abstract idea to a computer component. (e.g. “apply it” or the equivalent) 3) “the task prioritization module” amounts to simply applying the abstract idea to a computer component. (e.g. “apply it”) are claimed and described at a high level of generality and are functions any general purpose computer performs such that it amounts to no more than mere instructions to apply the exception to a particular technological environment. Further, none of the limitations recite technological implementation details for any of the steps but, instead, only recite broad functional language being performed by the generic use of a processor.
The claim limits also recite the use of a processor, a graphical user interface, the task prioritization module, a claim inventory prioritization model trained, a claim lifecycle prioritization model trained, a claim messages prioritization model trained, and via a display as additional elements. However, the use of these additional elements, described at a high level of generality, perform generic computer functions such that it amounts to no more than mere instructions to apply the exception to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Thus, the claim is directed toward an abstract idea. Therefore, Applicant’s arguments are not persuasive.
(3) Applicant arguments that “These recited features being "unconventional or otherwise more than what is well understood, routine, conventional activity in the field," (Section III(B) of 2019 PEG), is also clearly acknowledged by the Patent Office, as there are no 35 U.S.C. §102 or §103 rejections in the Office Action.” (see remarks, page 14), are not found persuasive.
Response (3): In the instant application, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration into a practical application, the additional elements amount to no more than mere instructions to apply the exactly using generic computer component. The claim elements when considered separately and in an ordered combination, do not add significantly more than implementing the abstract idea. Furthermore, the Examiner would like to point out that the criteria for rejections under 35 U.S.C. 102/103 are different from the criteria for rejections under 35 U.S.C. 101. The grounds of rejection under 35 U.S.C. 101 is based on the evaluation of the Alice/Mayo two-part test, as detailed in MPEP 2016, which incorporates the Alice decision and the 2019 PEG. As per MPEP 2106(I.) The Alice/Mayo two-part test is the only test that should be used to evaluate the eligibility of claims under examination. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski, the concept of intermediated settlement in Alice and the concept of processing the transfer of funds at issue here. All these fall squarely within the realm of abstract ideas as interpreted in the Alice decision. Also as was pointed out in Ultramercial, the addition of merely novel or non-routine components to the claimed idea does not necessarily turn an abstraction into something concrete (See Ultramercial, Inc. v. Hulu, LLC, _ F.3d_, 2014 WL 5904902, (Fed. Cir. Nov. 14, 2014). On the other hand, the rejections under 35 U.S.C. 102/103 are based on prior art. The presence of novel or non-obvious components (with respect to prior art of record) in a claim makes the claim allowable over prior art. The criteria for rejections under 35 U.S.C. 102/103 are different from the criteria for rejections under 35 U.S.C. 101. Therefore, Applicant’s arguments are not persuasive.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter without significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, (1) it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, (2a) it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so (2b), it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. (2014).
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. In the instant case, the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
Step (1): In the instant case, the claims are directed towards to a method for prioritizing insurance claims for a claim handler in an insurance company which contains the steps of obtaining, determining, executing, generating, displaying, and detecting. The claim recites a series of steps and, therefore, is a process. The claims do fall within at least one of the four categories of patent eligible subject matter because claim 1 is direct to a method, claim 8 is direct to a system, and claim 15 is direct to one or more non-transitory computer-readable media, i.e. machines programmed to carrying out process steps, Step 1-yes.
Step (2A) Prong 1: A method for prioritizing insurance claims for a claim handler in an insurance company is akin to the abstract idea subject matter grouping of: Certain Methods of Organizing Human Activity as fundamental economic principles or practices including insurance and/or commercial or legal interactions. As such, the claims include an abstract idea.
The specific limitations (Claim 1) of the invention are (a) identified to encompass the abstract idea include: {… determining claim task priority, obtaining, …. from one or more external systems, first information comprising audio message data and textual message data, second information required for completion of a task corresponding to the audio message data, and third information associated with completion of the task corresponding to the textual message data; converting, …. one or more data fields of the first information from an external system field format into a model-compatible field format to generate converted first information; executing, using the converted first information and the claim a handler as first input, …. to detect a first pattern of handler selection of priority categories on a graph priority view of claims associated with the handler to generate, as first output, a predicted completion timeline for the task; executing, using the converted first information and the claim handler as second input, …. to detect a second pattern of handler selection of tasks in historical handler task completion data to generate, as second output, a prioritization of tasks associated with the task; executing, using the audio message data, the textual message data, the second information, the third information, and the handler as third input, ….. on historical handler message data comprising historical audio message data and historical textual message data to generate, as third output, a prioritization of messages associated with the task; determining a task prioritization score for the task using the first output, the second output, and the third output; generating a task priority display element for the task and ordering the task among a plurality of tasks based at least in part on the task prioritization score; generating, ….. the task priority display element; detecting, …., a selection by the handler of the task priority display element; determining, …., in response to detecting the selection of the claim task priority display element, factors associated with the claim task, one or more of an audio message response time or a textual message response time, and one or more of a video, a police report, or an eyewitness statement; determining, …., based at least in part on the factors, a task completion trend for the handler; executing, …., the task prioritization module to generate updated training data based at least in part on the task completion trend; executing, …… to detect a third pattern of handler selection of tasks in historical claim handler data using the updated training data, wherein the third pattern of handler selection of tasks is distinct from the second pattern of handler selection of tasks.}
As stated above, this abstract idea falls into the (b) subject matter grouping of: Certain Methods of Organizing Human Activity as fundamental economic principles or practices including insurance and/or commercial or legal interactions as prioritizing insurance tasks or claims for a claim handler in an insurance company.
Step (2A) Prong 2: The instant claims do not integrate the exception into a practical application because additional elements: 1) “by a processor” amounts to simply applying the abstract idea to a computer component. (e.g. “apply it”) 2) “via a display” and “graphical user interface” describe transmitting data to a generic device as a display or interface. The “a display” is not described in the specification in such a way to require anything more than merely a generically “interactive” display, and therefore also amounts to simply applying the abstract idea to a generic computer component. (e.g. “apply it” or the equivalent) 3) “the claim prioritization module” amounts to simply applying the abstract idea to a computer component. (e.g. “apply it”) do not apply, rely on, or use the judicial exception in a manner that that imposes a meaningful limitation on the judicial exception (i.e. apply it 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)).
The instant recited claims including additional elements (i.e., a processor, a graphical user interface, the claim prioritization module, a claim inventory prioritization model trained, a claim lifecycle prioritization model trained, a claim messages prioritization model trained, and via a display) do not improve the functioning of the computer or improve another technology or technical field nor do they recite meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The limitations merely use a generic computing technology (Specification paragraph [0007]: processors, claim management system, a claim handler inventory prioritization system, machine learning model, and a display) as apply it 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)). Therefore, the claims are directed to an abstract idea
Step (2B): The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements (Claims: e.g., a processor, a graphical user interface, the claim prioritization module, a claim inventory prioritization model trained, a claim lifecycle prioritization model trained, a claim messages prioritization model trained, and via a display) amount to no more than mere instructions to apply the exactly using generic computer component. The claim elements when considered separately and in an ordered combination, do not add significantly more than implementing the abstract idea.
The computer is merely a platform on which the abstract idea is implemented. Simply executing an abstract concept on a computer does not render a computer “specialized,” nor does it transform a patent-ineligible claim into a patent-eligible one. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1280 (Fed. Cir. 2012). There are no improvements to another technology or technical field, no improvements to the functioning of the computer itself, transformation or reduction of a particular article to a different state or thing or any other meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment as a result of performing the claimed method. Also, the addition of merely novel or non-routine components to the claimed idea does not necessarily turn an abstraction into something concrete (See Ultramercial, Inc. v. Hulu, LLC, _ F.3d_, 2014 WL 5904902, (Fed. Cir. Nov. 14, 2014). In conclusion, merely “linking/applying” the exception using generic computer components does not constitute ‘significantly more’ than the abstract idea. (MPEP 2106.05 (f) (h)). Therefore, the claims are not patent eligible under 35 USC 101.
Dependent claims 2-7, 9-14, and 16-20 when analyzed as a whole and in an ordered combination are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea, as detailed below. The additional recited limitations in the dependent claims only refine the abstract idea.
For instance, in claims 2, the step of “… wherein at least one of the audio message data or the textual message data comprises a length of time ….” (i.e., using message data), in claims 3, the step of “… wherein the historical audio message data and the historical textual message data comprises a subset of the historical audio message data and a subset of the historical textual message data….” (i.e., using message data), in claim 4, the step of “… the prioritization of messages associated with the claim comprises a high priority task message; and the method further comprises transmitting the high priority task message to a claim handler device and alerting the claim handler of the high priority task message by activating, ...” (i.e., alerting a claim handler), in claims 5, the step of “… further comprising generating tactile feedback indicating the claim prioritization score…” (i.e., making feedback), in claim 6, the step of “… wherein the second output further comprises data representing one or more of trends or patterns of how the handler processed email messages of closed claims completed tasks.” (i.e., providing output), in claims 7, 14, and 20, the step of “… adding, … closed insurance claim information to a set of training data when an insurance claim associated with the converted first information is closed; ...” (i.e., using insurance claim as training data), in claim 9, the step of “… wherein the first output further comprises data representing one or more of trends or patterns of how the handler processed email messages of closed claims completed tasks.” (i.e., providing output), in claim 10 the step of “… wherein the first output further comprises data representing one or more of trends or patterns of how quickly the handler ...” (i.e., providing output), in claim 11, the step of “… wherein a set of training data used … comprises of closed insurance claims related to a single claim handler...” (i.e., using training data set), in claim 12, the step of “… using a set of training data representing closed insurance claims ...” (i.e., using insurance claims as training data), in claim 13, the step of “… using a set of training data representing closed insurance claims related to claim handlers ...” (i.e., using insurance claims as training data), in claim 16, the step of “… email message response time data, text message response time data, or voicemail message response time data” (i.e., claim handler’s message such text, email, etc.), in claim 17, the step of “… using a set of training data representing closed insurance claims ...” (i.e., using insurance claims as training data), in claim 18, the step of “… wherein the second output further comprises data representing one or more of trends or patterns of how the handler processed phone messages associated with closed claims.” (i.e., providing output), and in claim 19, the step of “… wherein the second output further comprises data representing one or more of trends or patterns of how the handler processed phone messages associated with closed claims.” (i.e., providing output) are all processes that, under its broadest reasonable interpretation, covers performance of a fundamental economic practice but for the recitation of a generic computer component. Prioritizing insurance claims for a claim handler in an insurance company is a most fundamental commercial process.
This is an abstract concept with nothing more and is also considered mere instructions to apply an exception akin to a commonplace business method or mathematical algorithm being applied on a general purpose computer, Alice Corp. Pty. Ltd.; Gottschalk and Versata Dev. Group, Inc.; see MPEP 2106.05(f)(2).
In dependent claims 2-7, 9-14, and 16-20, the step claimed are rejected under the same analysis and rationale as the independent claims 1, 8, and 15 above. Merely claiming the same process using outputs by performing a claim prioritization module with training data sets to prioritize insurance claims for a claim handler in an insurance company does not change the abstract idea without an inventive concept or significantly more. Clearly, the additional recited limitations in the dependent claims only refine the abstract idea further. Further refinement of an abstract idea does not convert an abstract idea into something concrete.
Therefore, claims 1-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Conclusion
The prior art made of record but not relied upon herein but pertinent to Applicant’s disclosure is listed in the enclosed PTO-892.
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 extension fee 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 YONG S PARK whose telephone number is (571)272-8349. The examiner can normally be reached on M-F 9:00-5:00 PM, EST.
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/YONGSIK PARK/Examiner, Art Unit 3694
March 10, 2026
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694