DETAILED ACTION
Response to Amendment
This Office Action is responsive to Applicant’s arguments and request for reconsideration of application 17/895,235 (08/25/22) filed on 04/28/26.
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 2 - 7, 10 - 13, 15 - 20 and 24 - 26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
ALICE/ MAYO: TWO-PART ANALYSIS
2A. First, a determination whether the claim is directed to a judicial exception (i.e., abstract idea).
Prong 1: A determination whether the claim recites a judicial exception (i.e., abstract idea).
Groupings of abstract ideas enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Mathematical concepts- mathematical relationships, mathematical formulas or equations, mathematical calculations.
Certain methods of organizing human activity- fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
Mental processes- concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
Prong 2: A determination whether the judicial exception (i.e., abstract idea) is integrated into a practical application.
Considerations indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
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
Considerations that are not indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
2B. Second, a determination whether the claim provides an inventive concept (i.e., Whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
Considerations indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
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 NOTE: The only consideration that does not overlap with the considerations indicative of integration into a practical application associated with step 2A: Prong 2.
Considerations that are not indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. NOTE: The only consideration that does not overlap with the considerations that are not indicative of integration into a practical application associated with step 2A: Prong 2.
See also, 2010 Revised Patent Subject Matter Eligibility Guidance; Federal Register; Vol. 84, No. 4; Monday, January 7, 2019
Claims 2 - 7, 10 - 13, 15 - 20 and 24 - 26 is/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.
1: Statutory Category
Applicant’s claimed invention, as described in independent claim 24, is/are directed to a process (i.e. a method).
2(A): The claim(s) are directed to a judicial exception (i.e., an abstract idea).
PRONG 1: The claim(s) recite a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claim as a whole recites a method of organizing human activity. The claimed invention is involves collecting personal needs assessment (PNA) data from an insurance customer comprising: presenting the insurance customer with a first set of questions; receiving a first subset of the PNA data in response to the presented first set of questions; inputting the received first subset of the PNA data to one or more trained machine learning policy recommendation models, each of the trained policy recommendation models generating a partial recommendation based on a plurality of respective features in the input PNA data; determining feature importance of the one or more trained machine learning policy recommendation models providing the partial recommendation; determining a second set of questions from a plurality of PNA questions based on the determined feature importance; presenting the insurance customer with the second set of PNA questions; and receiving a second subset of the PNA data in response to the presented second set of questions; applying at least one of the one or more trained machine learning policy recommendation models to the PNA data collected from the insurance customer comprising the first subset of PNA data and the second subset of PNA data to generate a recommendation of one or more insurance policies each of the insurance policies including a policy type and policy amount; applying the generated recommendation of the one or more insurance policies to a policy explainability model to identify one or more of the plurality of features of the respective trained machine learning policy recommendation models that led to the generated recommendation; mapping the one or more features identified by the policy explainability model to a human-understandable explanation of the recommendation;
outputting the generated recommendation and the human-understandable explanation of the recommendation for presentation to the insurance customer; determining a future action for contacting the insurance customer in the future comprising: predicting a probability that a plurality of lifestage milestones will occur within a given set of time;
predicting a persona type of the insurance customer; predicting future insurance needs of the insurance customer based on the predicted probability that the plurality of lifestage milestones will occur and the predicted persona type; determining a difference between current insurance of the insurance customer and future insurance needs;
based on the determined difference, generating a contact action associated with the insurance customer to take at a future time; and contacting the insurance customer, based on the contact action plan, to recommend an insurance product or change to an existing insurance product; receiving an indication of the insurance customer accepting or rejecting the recommended insurance product or change to the existing insurance product; and retraining the one or more trained machine learning policy recommendation models using the received indication, which is a fundamental economic principles or practices (recommending insurance policies); commercial or legal interactions (recommending insurance policies); and managing personal behavior or relationships or interactions between people (collecting, presenting, receiving, inputting, determining, applying, mapping, outputting, predicting, generating, contacting, retraining).
The mere nominal recitation of “a computing device” does not take the claim out of the method of organizing human activity grouping. Thus, the claim recites an abstract idea.
PRONG 2: The judicial exception (i.e., an abstract idea). Is not integrated into a practical application.
The claim recites the combination of additional elements of “a computing device” performing some of the positively recited steps or acts required of the claimed invention (e.g., “collecting”, “receiving”). The additional element(s) is/ are recited at a high level of generality (i.e., as a generic computer performing the generic computer functions of and (a) data receipt/ transmission (e.g., “collecting”, “receiving”, “inputting”, “outputting”, etc. step(s) as claimed); (b) data display (e.g., “presenting”, etc. step(s) as claimed); and (c) data processing (e.g., “determining”, “applying”, “mapping”, “predicting”, “generating”, “contacting”, “retraining”, etc. step(s) as claimed)). The additional element(s) is/ are recited at a high level of generality (i.e., as general means of gathering information for recommending insurance policies, and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The “computing device” that is used to perform the steps or acts is also recited at a high level of generality, and merely automates the step(s). The “computing device” limitations are no more than mere instructions to apply the exception using generic computer components. Accordingly, the additional element(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limitations on practicing the abstract idea. The claim is directed to an abstract idea. NOTE: (a) The claimed invention is exclusively from the perspective of “a computing device”, but the “computing device” only performs some of the positively recited step or acts (e.g., “collecting”, “receiving”).
Since the claim(s) recite a judicial exception and fails to integrate the judicial exception into a practical application, the claim(s) is/are “directed to” the judicial exception. Thus, the claim(s) must be reviewed under the second step of the Alice/ Mayo analysis to determine whether the abstract idea has been applied in an eligible manner.
2(B): The claims do not provide an inventive concept (i.e., The claim(s) do not include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field. Applicant’s specification as filed 08/25/22 does not provide any indication that the “computing device” is anything other than a generic, off-the-shelf computer component. Furthermore, the prosecution history of the instant application provides McCormick, US Pat. No. 11,538,076; Shiu, US Pub. No. 2021/0295427; and Jain, US Pat. No. 11,456,080 operating in a similar environment, suggesting performing tasks such as (a) data receipt/ transmission (e.g., “collecting”, “receiving”, “inputting”, “outputting”, etc. step(s) as claimed); (b) data display (e.g., “presenting”, etc. step(s) as claimed); and (c) data processing (e.g., “determining”, “applying”, “mapping”, “predicting”, “generating”, “contacting”, “retraining”, etc. step(s) as claimed) are well understood, routine and conventional. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed such as (a) data receipt/ transmission (e.g., “collecting”, “receiving”, “inputting”, “outputting”, etc. step(s) as claimed); (b) data display (e.g., “presenting”, etc. step(s) as claimed); and (c) data processing (e.g., “determining”, “applying”, “mapping”, “predicting”, “generating”, “contacting”, “retraining”, etc. step(s) as claimed) are well understood, routine and conventional. Symantec, TLI, OIP Techs and buySAFE court decisions cited in MPEP § 2106.05(D) (ii) indicate that mere collection or receipt of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). SAP America Inc. v. Investpic, LLC, 890 F.3d 1016 USPQ2d 1638 (Fed Cir. 2018) (displaying and disseminating financial information) and Intellectual Ventures 1 LLC v. Capital One Bank (USA) (advanced internet interface providing user display access of customized web pages) indicate displaying information is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here).
Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer.
For these reasons, there is no invention concept in the claim, and thus the claim is ineligible.
Dependent claims 2 - 7, 10 - 13 and 15 - 20 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims). Therefore, independent non-transitory computer readable medium claim 25 and independent computing device claim 26 is/are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as the method claims. The component(s) (i.e., “non-transitory computer readable medium” and “a processor of a computing device”) described in independent non-transitory computer readable medium claim 25 and the component(s) (i.e., “a processor” and “a memory”) described in independent computing device claim 26, add nothing of substance to the underlying abstract idea. At best, the product(s) (non-transitory computer readable medium, computing device) recited in the claim(s) are merely providing an environment to implement the abstract idea.
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 24, 25 and 26 (claims 2 - 7, 10 - 13 and 15 - 20 based on their dependency) 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 24, 25 and 26 (claims 2 - 7, 10 - 13 and 15 - 20 based on their dependency) recite the limitation " inputting the received first subset of the PNA data to one or more trained machine learning policy recommendation models, each of the trained policy recommendation models generating a partial recommendation based on a plurality of respective features in the input PNA data;”. There is insufficient antecedent basis for and/ or inconsistent terminology with respect to “the trained policy recommendation models” in the claim. NOTE: Does applicant intend -- inputting the received first subset of the PNA data to one or more trained machine learning policy recommendation models, each of the trained machine learning policy recommendation models generating a partial recommendation based on a plurality of respective features in the input PNA data; -- or something similar?
Claim 24, 25 and 26 (claims 2 - 7, 10 - 13 and 15 - 20 based on their dependency) recite the limitation “contacting the insurance customer, based on the contact action plan, to recommend an insurance product or change to an existing insurance product;”. There is insufficient antecedent basis for and/ or inconsistent terminology with respect to “the contact action plan” in the claim. NOTE: Does applicant intend -- contacting the insurance customer, based on the contact action [[DELETE plan]], to recommend an insurance product or change to an existing insurance product; -- .
NOTE: The specific language used is not required, but intended as an aide to the applicant in overcoming one or more of the objections and/ or rejections noted in this office action. Alternative language may be proposed. Please indicate where support may be found in the specification for any amendments made.
Response to Arguments
Objections
Withdrawn in light of applicant’s arguments and/ or amendments.
101
Applicant's arguments have been fully considered but they are not persuasive.
(1)Applicant argues the claimed invention is not directed to a judicial exception (i.e., an abstract idea).
Applicant’s claimed invention is directed to an abstract idea.
Certain Method of Organizing Human Activity
The claimed invention is directed to certain methods of organizing human activity.
Fundamental economic principles or practices relate to the economy and commerce. The claimed invention encompasses fundamental economic principles or practices as it relates to insurance (e.g., recommending insurance policies). This interpretation is consistent with the prosecution history of the instant application.
For example, para. [0002] of applicant’s specification as filed 08/25/22 states:
[0002] The current disclosure relates to insurance products and in particular to computer implemented systems and methods for providing insurance recommendations.
See also, at least claims 24, 25 and 26 as filed (04/28/26).
The claimed invention encompasses commercial or legal interactions. The claimed invention relates to insurance (e.g., recommending insurance policies). Insurance, in the instant scenario, pertains to agreements in the form of “contracts” (e.g., between parties such as the “insurance customer” as claimed), “legal obligations” (i.e., because it imposes contractual obligations enforceable by law), and “business relations”.
The claimed invention encompasses managing personal behavior or relationships or interactions (e.g., collecting, presenting, receiving, inputting, determining, applying, mapping, outputting, predicting, generating, contacting, retraining). For example, filtering content (e.g., “determining a second set of questions from a plurality of PNA questions …..”). For example, considering historical information (e.g., “the first subset of PNA data”).
See also, MPEP §2106.04(a)(2)(II).
Mental Processes
Withdrawn in light of applicant’s arguments and/ or amendments.
(2)Applicant argues the judicial exception (i.e., an abstract idea) is integrated into a practical application.
Applicant suggests the claimed invention presents a “practical application” because it provides improvements to the functioning of a computer, or to any other technology or technical field (e.g., “improves a computer-implemented recommendation pipeline by imposing concrete, model-driven controls on data acquisition, explanation generation, and future action selection, and retraining of the models using received indications”. See pg. 13 of applicant’s arguments/ remarks as filed 04/28/26.; “improve computer functionality for recommendation systems”. See pg. 14 of applicant’s arguments/ remarks as filed 04/28/26.). The Examiner disagrees.
Applicant’s arguments suggesting the claimed invention provides improvements to the functioning of a computer, or to any other technology or technical field suggests the applicant believes the technical aspects of the invention are substantial. There exists alternative perspectives however.
As noted above, insurance (e.g., recommending insurance policies) is directed to the underlying abstract idea, not the functioning of the computer itself. What applicant is really arguing is the use of a computer as a tool or the benefits of automation itself.
Adding the words “apply it” (or an equivalent) with the judicial exception is not
not indicative of integration into a practical application. See also, MPEP § 2106.05(f). Merely using a computer as a tool to perform an abstract idea; and mere instructions to implement an abstract idea on a computer are not indicative of integration into a practical application. See also, MPEP §2106.05(f).
The role of the device is limited to necessary data gathering and outputting (e.g., “collecting by a computing device personal needs assessment (PNA) data from an insurance customer comprising: …..”; “receiving at the computing device a first subset of the PNA data in response to the presented first set of questions; inputting the received first subset of the PNA data to one or more trained machine learning policy recommendation models, each of the trained policy recommendation models generating a partial recommendation based on a plurality of respective features in the input PNA data”; “receiving at the computing device a second subset of the PNA data in response to the presented second set of questions”; “outputting the generated recommendation and the human-understandable explanation of the recommendation for presentation to the insurance customer”; and “receiving an indication of the insurance customer accepting or rejecting the recommended insurance product or change to the existing insurance product” steps as claimed.).
Adding insignificant extra-solution activity to the judicial exception is not indicative of integration into a practical application. See also, MPEP §2106.05 (g).
Collecting information (e.g., “collecting by a computing device personal needs assessment (PNA) data from an insurance customer comprising: …..”; “receiving at the computing device a first subset of the PNA data in response to the presented first set of questions; inputting the received first subset of the PNA data to one or more trained machine learning policy recommendation models, each of the trained policy recommendation models generating a partial recommendation based on a plurality of respective features in the input PNA data”; “receiving at the computing device a second subset of the PNA data in response to the presented second set of questions”; “outputting the generated recommendation and the human-understandable explanation of the recommendation for presentation to the insurance customer”; and “receiving an indication of the insurance customer accepting or rejecting the recommended insurance product or change to the existing insurance product”); analyzing it (e.g., “determining feature importance of the one or more trained machine learning policy recommendation models providing the partial -recommendation; determining a second set of questions from a plurality of PNA questions based on the determined feature importance”; “applying at least one of the one or more trained machine learning policy recommendation models to the PNA data collected from the insurance customer comprising the first subset of PNA data and the second subset of PNA data to generate a recommendation of one or more insurance policies each of the insurance policies including a policy type and policy amount; applying the generated recommendation of the one or more insurance policies to a policy explainability model to identify one or more of the plurality of features of the respective trained machine learning policy recommendation models that led to the generated recommendation; mapping the one or more features identified by the policy explainability model to a human-understandable explanation of the recommendation”; and “determining a future action for contacting the insurance customer in the future comprising: predicting a probability that a plurality of lifestage milestones will occur within a given set of time; predicting a persona type of the insurance customer; predicting future insurance needs of the insurance customer based on the predicted probability that the plurality of lifestage milestones will occur and the predicted persona type; determining a difference between current insurance of the insurance customer and future insurance needs; based on the determined difference, generating a contact action associated with the insurance customer to take at a future time; and contacting the insurance customer, based on the contact action plan, to recommend an insurance product or change to an existing insurance product”; and “retraining the one or more trained machine learning policy recommendation models using the received indication.”); and displaying certain results of the collection and analysis (e.g., “presenting the insurance customer with a first set of questions”; “presenting the insurance customer with the second set of PNA questions”; and “outputting the generated policy recommendation and the human-understandable explanation of the policy recommendation for presentation to the insurance customer;”) merely indicates a field of use or technical environment in which to apply the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use. See also, MPEP §2106.05(h).
(3)Applicant argues the claimed invention provides an inventive concept (i.e., The claim(s) do not include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)). Applicant argues there is a “non-generic, non-conventional use”.
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field. Applicant’s specification as filed 08/25/22 does not provide any indication that the “computing device” is anything other than a generic, off-the-shelf computer component, see at least [0028] [0029] [0043] [0078]. Furthermore, the prosecution history of the instant application provides McCormick, US Pat. No. 11,538,076; Shiu, US Pub. No. 2021/0295427; and Jain, US Pat. No. 11,456,080 operating in a similar environment, suggesting performing tasks such as (a) data receipt/ transmission (e.g., “collecting”, “receiving”, “inputting”, “outputting”, etc. step(s) as claimed); (b) data display (e.g., “presenting”, etc. step(s) as claimed); and (c) data processing (e.g., “determining”, “applying”, “mapping”, “predicting”, “generating”, “contacting”, “retraining”, etc. step(s) as claimed) are well understood, routine and conventional. See McCormick, abstract, Fig. 5A, col. 1, lines 8 - 11, col. 1, line 33+ - col. 2, line 3; col. 2, lines 18 - 39; col. 2, line 65+ - col. 3, line 56; col. 4, lines 4 - 26; col. 5, lines 42 - 59; col. 6, line 4 – col. 6, line 55; col. 6, line 66+ - col. 8, line 21; col. 9, lines 41 - 58; col. 10, lines 16 - 37; col. 10, lines 63+ - col. 11, line 17; col. 11, lines 48 - 58; col. 12, lines 50 - 62; col. 14, lines 34 - 47. See Shiu, abstract, [0001] [0002] [0004] - [0007] [0016] [0017] [0019] [0021] [0022] [0036] [0037] [0042] [0046] [0047] [0063] [0064]. See Jain, col. 34, line 63+ - col. 35, line 2; col. 69, line 44+ - col. 70, line 2; col. 106, lines 8 – 28; col. 129, line 64+ - col. 130, line 36; col. 131, lines 5 - 55. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed such as (a) data receipt/ transmission (e.g., “collecting”, “receiving”, “inputting”, “outputting”, etc. step(s) as claimed); (b) data display (e.g., “presenting”, etc. step(s) as claimed); and (c) data processing (e.g., “determining”, “applying”, “mapping”, “predicting”, “generating”, “contacting”, “retraining”, etc. step(s) as claimed) are well understood, routine and conventional. Symantec, TLI, OIP Techs and buySAFE court decisions cited in MPEP § 2106.05(D) (ii) indicate that mere collection or receipt of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). SAP America Inc. v. Investpic, LLC, 890 F.3d 1016 USPQ2d 1638 (Fed Cir. 2018) (displaying and disseminating financial information) and Intellectual Ventures 1 LLC v. Capital One Bank (USA) (advanced internet interface providing user display access of customized web pages) indicate displaying information is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here).
Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer.
For these reasons, there is no invention concept in the claim, and thus the claim is ineligible.
Dependent claims 2 - 7, 10 - 13 and 15 - 20 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims). Therefore, independent non-transitory computer readable medium claim 25 and independent computing device claim 26 is/are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as the method claims. The component(s) (i.e., “non-transitory computer readable medium” and “a processor of a computing device”) described in independent non-transitory computer readable medium claim 25 and the component(s) (i.e., “a processor” and “a memory”) described in independent computing device claim 26, add nothing of substance to the underlying abstract idea. At best, the product(s) (non-transitory computer readable medium, computing device) recited in the claim(s) are merely providing an environment to implement the abstract idea.
(4)Applicant argues Example 47, claim 3.
The facts associated with the claimed invention are more aligned with Example 47, claim 2 from the July 2024 Subject Matter Eligibility Examples which were found to be ineligible.
For example, the claimed invention refers to the steps or acts being performed “by a computing device” and “at the computing device”. This language is very similar to the “at a computer” and “by the computer” language recited in Example 47, claim 2. In Example 47, claim 2 this language was considered to be recited at a high level of generality i.e., as a generic computer performing generic computer functions. For example, the claimed invention refers to “inputting the received first subset of the PNA data to one or more trained machine learning policy recommendation models, each of the trained policy recommendation models generating a partial recommendation based on a plurality of respective features in the input PNA data; determining feature importance of the one or more trained policy machine learning recommendation models providing the partial recommendation”; “applying at least one of the one or more trained machine learning policy recommendation models to the PNA data collected from the insurance customer comprising the first subset of PNA data and the second subset of PNA data to generate a recommendation of one or more insurance policies each of the insurance policies including a policy type and policy amount; applying the generated recommendation of the one or more insurance policies to a policy explainability model to identify one or more of the plurality of features of the respective trained machine learning policy recommendation models that led to the generated recommendation; mapping the one or more features identified by the policy explainability model to a human-understandable explanation of the recommendation”; and “retraining the one or more trained machine learning policy recommendation models using the received indication”.). This language is very similar to the “using the trained ANN” and “outputting the anomaly data from the trained ANN” recited in Example 47, claim 2. In Example 47, claim 2 this language was determined not to provide any details about how the trained artificial neural network (ANN) operates and merely provided a generic output.
Adding insignificant extra-solution activity to the judicial exception is not indicative of integration into a practical application. See also, MPEP §2106.05 (g).
Mere instructions to implement an abstract idea on a computer, merely using a computer as a tool to perform an abstract idea or an equivalent of an “apply it” rational are not indicative of integration into a practical application. See also, MPEP §2106.05 (f).
Generally linking the use of the judicial exception to a particular technological environment or field of use is not indicative of integration into a practical application. See also, MPEP §2106.05 (h).
(5) Applicant argues machine learning.
The retraining applicant references in their arguments/ remarks dated 04/28/26 is not an improvement to machine-learning itself, but the application of machine learning to insurance/ insurance recommendations. See also McCormick, col. 2, lines 18 - 39; and col. 4, lines 4 - 26. See also Jain, col. 34, line 63+ - col.35, line 2; col. 69, line 44+ - col. 70, line 2; col. 106, lines 8 - 28. McCormick and Jain illustrate retraining machine-learning models is not an “improvement” to machine learning itself.
The court in Recentive Analytics concluded, “patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied are patent ineligible under § 101.” See pg. 18 of Recentive Analytics. See Recentive Analytics, Inc. v. Fox Corp. United States Cour of Appeals for the Federal Circuit. 2023-2437.
Similarly, Desjardins suggests eligibility determinations should turn on whether “the claims are directed to an improvement to computer functionality versus being directed to an abstract idea”. (See Desjardins, pg. 8). Carmody similarly follows guidance set forth in Desjardins. The alleged “improvements” applicant argues (i.e., “improves a computer-implemented recommendation pipeline by imposing concrete, model-driven controls on data acquisition, explanation generation, future action selection, and retraining of the models using received indications”. See pg. 13 of applicant’s arguments/ remarks as filed 04/28/26) are directed to the benefits of automation itself. Ex Parte Desjardins, Appeal No. 2024-000567. Ex Parte Carmody, Appeal No. 2025-002843.
112
Please note the rejections withdrawn and maintained
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SARA C HAMILTON whose telephone number is (571)272-1186. The examiner can normally be reached Monday-Thursday, 8-5, EST.
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, Christine Tran can be reached at 571-272-8103. 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.
SARA CHANDLER HAMILTON
Primary Examiner
Art Unit 3695
/SARA C HAMILTON/Primary Examiner, Art Unit 3695
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