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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11 May 2026 has been entered.
Status of Claims
In the reply filed on 11 May 2026, the following changes have been made: amendments to claim 1.
Claims 1-8 are currently pending and have been examined.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/240,744 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. For claim 3, the prior-filed application does not provide support for wherein the channel is selected based, at least in part, on one or more permissions associated with providing communications to the member via one or more channels. While [0035] of the specification states permissions, that is with respect to respect to accessing and receiving data, it does not deal with channel selection as in claim 3. For claim 4, the prior-filed application does not provide support for wherein the channel is selected based, at least in part, on a capacity of the channel in association with providing communications to the member or the provider. Examiner cannot find disclosure for this claimed feature in the prior filed application. For claim 6, the prior-filed application does not provide support for wherein the channel is selected based, at least in part, on a set of rules associated with providing communications to the member and the provider. Examiner cannot find disclosure for this claimed feature in the prior filed application.
Accordingly, claims 3-4 and 6 are not entitled to the benefit of the prior application.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2-8 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 2-8 are not proper dependent claims. Specifically, claims 2-8 do not contain a reference to a claim previously set forth. Claims 2-8 state Error! Reference source not found. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-8 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
The claim(s) recite(s) subject matter within a statutory category as a process (claims 1-8).
INDEPENDENT CLAIMS
Step 2A Prong 1
Claim 1 recites steps of
determining, by one or more processors, a current gap-in-care for the member, wherein the current gap-in-care for the member is defined as a difference between a current health-related behavior of the member and a guideline behavior for the member;
receiving a response to a database query, the response including a number of feature vectors associated with a plurality of members;
filtering, by the one or more processors, the feature vectors of the response to reduce the number of feature vector;
processing, by the one or more processors, the filtered feature vectors using a trained gradient-boosted decision tree model to generate one or more member-level predictions associated with the current gap-in-care;
determining, by the one or more processors, for each channel of a plurality of channels, a channel-specific probability of at least partially closing the current gap-in-care within a clinically-defined period of time for the member
determining, by the one or more processors, for each channel, a clinical impact associated with at least partially closing the current gap-in-care for the member, by applying Shapley Additive Explanations values to the trained gradient-boosted decision tree model and calculating a delta between Shapley Additive Explanations values corresponding to a care-gap-open state and a care-gap-closed state for the current-gap-in-care;
determining, by the one or more processors, a gap-in-care closure rate for the member;
selecting, by the one or more processors, the channel from the plurality of channels based, at least in part, on a combination of the probability of at least partially closing the current-gap-in-care, the determined clinical impact associated with at least partially closing the current gap-in-care for the member; and the gap-in-care closure rate for the member;
and
using the selected channel to transmit an electronic message to at least one of the member and a provider, wherein the electronic message comprises data associated with one or more actions for the member to take in connection with at least partially closing the current gap-in-care for the member and an impact associated with taking the one or more actions.
These steps for determining channel selection to address gap in care for the member, as drafted, under the broadest reasonable interpretation, includes methods of organizing human activity. That is nothing in the claim element precludes the italicized portions from managing personal behavior or relationships or interactions between people through managing the interactions between the member and provider to address the gap in care for the member. This could be analogized to considering historical usage information while inputting data. The italicized portions containing the recitation of filtering feature vectors, processing feature vectors, determining a probability, applying SHAP values, and calculating a delta between SHAP values have been treated as part of the abstract idea, specifically as mathematical calculations which falls within the abstract idea of mathematical concepts, in light of the 2024 USPTO AI Guidance. If a claim limitation, under its broadest reasonable interpretation, covers performance as organizing human activity and mathematical calculations but for the recitation of generic computer components, then it falls within the “Methods of Organizing Human Activity” and “Mathematical Concepts” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong 2
This judicial exception is not integrated into a practical application. In particular, the additional elements, non-italicized portions identified above for claim 1 do not integrate the abstract idea into a practical application, other than the abstract idea per se, because the additional elements amount to no more than limitations which:
amount to mere instructions to apply an exception (such as by one or more processors; using a trained gradient-boosted decision tree model; and, using the selected channel to transmit an electronic message amounts to invoking computers as a tool to perform the abstract idea, see MPEP 2106.05(f))
add insignificant extra-solution activity to the abstract idea (such as recitation of receiving a response to a database query amounts to mere data gathering since it does not add meaningful limitations to the receiving performed, see MPEP 2106.05(g))
Each of the above additional element(s) therefore only amounts to mere instructions to implement functions within the abstract idea using generic computer components or other machines within their ordinary capacity, and add insignificant extra-solution activity to the abstract idea. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. These elements are therefore not sufficient to integrate the abstract idea into a practical application. Therefore, the above claims, as a whole, are directed to an abstract idea.
Step 2B
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to discussion of integration of the abstract idea into a practical application, the additional elements amount to no more than add insignificant extra-solution activity. Additionally, the additional limitations, other than the abstract idea per se, amount to no more than limitations which:
amount to mere instructions to apply an exception in particular fields such as using a trained gradient-boosted decision tree model, e.g., requiring the use of software to tailor information and provide it to the user on a generic computer, Intellectual Ventures I LLC v. Capital One Bank., MPEP 2106.05(f); by one or more processors; and, using the selected channel to transmit an electronic message, e.g., a commonplace business method or mathematical algorithm being applied on a general-purpose computer, Alice Corp. v. CLS Bank, MPEP 2106.05(f).
amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields such as recitation of receiving a response to a database query, e.g., receiving or transmitting data over a network, Symantec, MPEP 2106.05(d)(II)(i).
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide generic computer implementation.
DEPENDENT CLAIMS
Step 2A Prong 1
Dependent claims recite additional subject matter which further narrows or defines the abstract idea embodied in the claims (such as claims 2-8 particular aspects for determining channel selection to address gap in care for the member such as
[Claim 2] wherein determining the gap-in-care closure rate for the member comprises one or more of the following:
measuring an average closure rate through a randomized control trial experimentation;
predicting an average closure rate, regressed post-hoc using a causal inferential approach; and
deriving the closure rate for the member from the machine learning model;
[Claim 3] wherein the channel is selected based, at least in part, on one or more permissions associated with providing communications to the member via one or more channels;
[Claim 4] wherein the channel is selected based, at least in part, on a capacity of the channel in association with providing communications to the member or the provider;
[Claim 5] wherein the channel is selected based, at least in part, on a cost associated with providing the electronic message using the channel;
[Claim 6] wherein the channel is selected based, at least in part, on a set of rules associated with providing electronic messages to the member and the provider;
[Claim 7] wherein the one or more actions comprise at least one of the following:
instructing the member to talk to a care provider;
instructing the care provider to talk to the member;
instructing the member to talk to a pharmacist;
instructing the member to self-monitor a health indicator;
instructing the member on lifestyle management;
instructing the member to obtain a medical screening;
instructing the member for medical adherence;
querying the member to achieve a medication optimization; and
a digital outreach;
[Claim 8] wherein the selected channel comprises at least one of:
a selected pharmacist;
a health hub;
a clinic;
a direct communication;
a digital application;
a trained team outreach;
an in-home assessment; and
a provider outreach;
these italicized portions covers performance as organizing human activity since they merely describe types of data and determinations performed by humans). The italicized portion containing the recitation of deriving from the machine learning model has been treated as part of the abstract idea, specifically as mathematical calculations which falls within the abstract idea of mathematical concepts, in light of the 2024 USPTO AI Guidance.
Step 2A Prong 2
Dependent claims 7-8 recite additional subject matter which amount to limitations consistent with the additional elements in the independent claims (the additional limitations in claim 7 (a digital outreach); and, claim 8 (a digital application) amounts to invoking computers as a tool to perform the abstract idea, see MPEP 2106.05(f))). Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Step 2B
Dependent claims 7-8 recite additional subject matter which, as discussed above with respect to integration of the abstract idea into a practical application, amount to invoking computers as a tool to perform the abstract idea, e.g., a commonplace business method or mathematical algorithm being applied on a general-purpose computer, Alice Corp. v. CLS Bank, MPEP 2106.05(f). Also, see [0052] which provides an example of an off-the-shelf system buses, [0054] which provides examples of off-the-shelf processors, [0065] which provides examples of off-the-shelf memory devices, and [0033] which provides examples of off-the-shelf personal computing devices. There is no indication that these additional elements improve the functioning of a computer or improves any other technology. Their collective functions merely provide generic computer implementation.
Therefore, in consideration of all the facts, the present invention is still not a patent-eligible invention under USC 101. Additionally, it is evident that the present claims monopolize the fundamental building blocks of data science in healthcare to determine how to message a patient about a missed check-up, restricting further innovation in this area without offering a specific, technical improvement to how the computer actually operates. Using AI tools is generally not enough to transform an abstract idea into patent-eligible subject matter if the core of the invention is still abstract; “monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.” Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980 (quoting Myriad, 569 U.S. at 589, 106 USPQ2d at 1978 and Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012)).
No Prior Art Rejection
While references of record are understood to be the closest prior art. For claim 1, while the combination of Anand et al. (US20200117860A1) in view of Holub et al. (US20210313063A1) and further in view of Luellen (US20180308569A1) teaches most of the limitations of the claim, the scope of the claims clarifies using a trained gradient-boosted decision tree model, determining, by the one or more processors, for each channel of a plurality of channels, a channel-specific probability of at least partially closing the current gap-in-care within a clinically-defined period of time for the member, and applying Shapley Additive Explanations values to the trained gradient-boosted decision tree model and calculating a delta between Shapley Additive Explanations values corresponding to a care-gap-open state and a care-gap-closed state. This goes beyond any teachings or suggestions in the art.
Response to Arguments
The arguments filed on 11 May 2026 have been considered, but are not fully persuasive.
Regarding the USC 101 rejection, applicant argues on pages 6 to 8 for Step 2A Prong 1 that the claim 1 does not recite a judicial exception and does not include limitations directed to mathematical calculations, mental process, or methods of organizing human activity. Applicant asserts that there are no mathematical concepts involved, that any computations are used in the context of the claimed channel-selection process, and any recited mathematical concepts the office action has not properly shown that the claims are directed to mathematical concepts. Applicant asserts that the claim is not directed to organizing human activity in the sense contemplated by the 2019 Guidance and is instead directed to a computer-implemented method. Applicant also asserts that the claims do not recite a mental process and cannot be reasonably characterized as being performed in the human mind. Applicant states that the USC 101 should be withdrawn.
Examiner disagrees with the applicant’s arguments. While applicant is trying to clarify the claim language with amendments, examiner asserts that the claims are still directed to the judicial exception(s) as confirmed by multiple subject matter experts at the USPTO. Applicant’s invention outlines a method for detecting, evaluating, and managing "gaps in care" (i.e., discrepancies between a patient's current health behavior and medical best practices) using machine learning. The use of feature vectors and Shapley Additive Explanations represents mathematical concepts, specifically statistical analysis, which the courts have repeatedly held that cannot be patented unless they are tied to a specific, transformative technical implementation (MPEP 2106). Examiner asserts that tacking on language of gradient boosting (which the applicant did not contend they invented), feature vectors, and SHAP without delineating the algorithmic steps explaining the specific computations performed by the computer (i.e., constrained to computers) does not automatically save the claims from USC 101. MPEP 2106 is clear in that claims can recite an abstract idea even if they are claimed as being performed on a computer. Again, if the applicant’s claims truly weren’t directed to methods of organizing human activity, then the claims wouldn’t be directed towards determining how best to deliver individualized communications to support medical adherence and gap closure, but that is not the case presently. Examiner points to the USPTO October 2019 Guidance (also incorporated in MPEP 2106) states that claims can recite an abstract idea even if they are claimed as being performed on a computer. The USPTO October 2019 Guidance is clear in that the courts have found claims requiring a generic computer or nominally reciting a generic computer may still recite an abstract idea even though the limitations may not be entirely performed by humans. The computer components recited in the present application are still recited at a high level of generality. The computers in the claims are not used in a specific, inventive way. Again, the claims are very outcome-focused and do not detail how each of the outcomes are exactly reached. While the applicant has clarified the type of machine learning model being used, again, the missing piece is that there is no clarity on the actual computer processing or how the computer is programmed to achieve the results in a non-abstract way different from how humans analyze/process data. Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1984 (2014). See also OIP Techs. v. Amazon.com, 788 F.3d 1359, 1364, 115 USPQ2d 1090, 1093-94 (Fed. Cir. 2015) ("Just as Diehr could not save the claims in Alice, which were directed to ‘implement[ing] the abstract idea of intermediated settlement on a generic computer’, it cannot save OIP's claims directed to implementing the abstract idea of price optimization on a generic computer.") (citations omitted). Even if the claims nominally recites computer components that are rooted in technology, there is no recitation of how the computer components are specifically programmed to distinguish from generic computer processes. Thus, the present claim(s) are still not eligible under Step 2A Prong 1.
On pages 8 to 9 the applicant argues that for Step 2A Prong 2 the claims integrate any such abstract idea into a practical application. Specifically, claim 1 recites processing filtered feature vectors using a trained gradient-boosted decision tree model to generate one or more member-level predictions associated with the current gap-in-care. Applicant asserts that claim 1 also recites determining clinical impact by applying Shapley Additive Explanations values to the trained gradient-boosted decision tree model and calculating a delta between Shapley Additive Explanations values corresponding to a care-gap-open state and a care-gap-closed state for the current gap-in-care. Applicant asserts that these features are not mere instructions to apply an abstract
idea on a generic computer; that these steps are integrated into a single claimed process that results in the transmission of an electronic message through the selected channel since the claimed channel selection is based on specific computer-generated outputs. Applicant asserts that the claim addresses a specific problem in healthcare communication systems: selecting an appropriate communication channel for managing a current gap-in-care based on member specific data, channel-specific probability, model-derived clinical impact, and gap closure rate. The amended claims provide a specific technical implementation and that the recited transmission of an electronic message is not merely
appended to the claim as field-of-use activity.
Examiner disagrees with the applicant’s arguments. Further analyzing the additional elements under Step 2A Prong 2, examiner asserts the fact remains that the specification still provides a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art. The MPEP provides that improvements to the functioning of a computer or to any other technology or technical field can signal eligibility, see MPEP 2106.05(a), and provides examples of improvements to computer functionality, MPEP 2106.05(a)(I), and improvements to any other technology of technical field, MPEP 2106.05(a)(I). “In computer-related technologies, the examiner should determine whether the claim purports to improve computer capabilities or, instead, invokes computers merely as a tool”. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016). In Enfish, the court evaluated the patent eligibility of claims related to a self-referential database. Id. The court concluded the claims were not directed to an abstract idea, but rather an improvement to computer functionality. Id. It was the specification' s discussion of the prior art and how the invention improved the way the computer stores and retrieves data in memory in combination with the specific data structure recited in the claims that demonstrated eligibility. 822 F.3d at 1339, 118 USPQ2d at 1691. The claim was not simply the addition of general-purpose computers added post-hoc to an abstract idea, but a specific implementation of a solution to a problem in the software arts. 822 F.3d at 1339, 118 USPQ2d at 1691. Unlike Enfish, the instant claimed invention appears to improve upon a judicial exception rather than a problem in the software arts. Rather than improving a computer's algorithm (i.e., solving a technically based problem), the claimed invention purports to solve the non-technological problem of gap-in-care ([0003] of the specification) through determining how best to deliver individualized communications to support medical adherence and gap closure. The fact still remains that applicant’s main/glaring issue is that specification does not show or describe a deficiency in computer technology; applicant is certainly not inventing a new communications system to address care gaps. Additionally, the applicant’s assertion in the present arguments of the problems of selecting an appropriate communication channel for managing a current gap-in-care does not point to any technological problem associated with current communication technology, but rather with the abstract care process. All the applicant is doing is applying known technology for their intended benefit(s) to a new data environment and calling it an improvement (see Customedia Techs., LLC v. Dish Network Corp., Case No.18-2239 (Fed. Cir. Mar. 6, 2020).
The examiner also asserts the following facts which the applicant has been unable to dispute:
1) the invention does NOT involve a novel algorithm or data structure that significantly improves the computer's functionality,
2) the invention does NOT involve a new hardware component or configuration that works with the computer to achieve a specific technical benefit, and
3) the computer is NOT used in a completely new way demonstrating a significant technical advancement. Improvement to the abstract idea is not an improvement to computer technology. Thus, examiner does not see how the present claims improve the functioning of a computer or provide improvements to any other technology or technical field. Applicant’s amended claim glaringly still does not show any improvement to the additional element(s). Examiner is not persuaded by the applicant’s assertion on record (pg. 9) of the claimed steps resulting in the transmission of an electronic message through the selected channel; nowhere in the MPEP nor even in case law has there been USC 101 eligibility for the end result of a data output or transmission. The claimed invention appears similar to the example of improvements that are insufficient to show an improvement in computer-functionality such as arranging transactional information on a graphical user interface in a manner that assists traders in processing information more quickly, Trading Technologies v. IBG LLC, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019). See MPEP 2106.05(a)(I)(viii). The asserted benefits from the applicant’s invention seem to come as a result of the use of general-purpose computers. The broad claims are lacking concrete limitations to integrate the abstract idea into a practical application. Examiner points out that the claimed limitations have no indication in the specification that the operations recited invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (fed Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). Most importantly, in DDR Holdings & unlike the present claims, the claims at issue specified how interactions with the Internet were manipulated to yield a desired result—a result that overrode the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink. 773 F.3d at 1258; 113 USPQ2d at 1106. The examiner also points out that there is no indication in the specification that the claimed invention affects a transformation or reduction of a particular article to a different state or thing. Examiner points to the recitation of machine learning in the claim(s) as generic. "[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice Corp. v. CLS Banklnt'l, 573 U.S. 208 223 (2014). Applicant does not and cannot contend they invented the concept of a gradient-boosted decision tree, nor does the specification disclose any new gradient-boosted decision tree technique. In fact, the specification [0055] recognizes known machine learning models in the art. The alleged improvement of using the gradient-boosted decision tree model lies in the abstract idea itself, not to any technological improvement nor to any improvement to the functioning of a computer. See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287-88 (Fed. Cir. 2018). The fact pattern of the applicant’s claims is congruent to the Recentive Analytics, Inc. v. Fox Corp., 2025 U.S.P.Q.2d 628 (Fed. Cir. 2025) decision by the Federal Circuit. Just like in Recentive, the present claims still do not delineate steps through which the gradient-boosted decision tree achieves an improvement. See, e.g., IBM v. Zillow Grp., Inc., 50 F.4th 1371, 1381 (Fed. Cir. 2022) (holding abstract a claim that "d[id] not sufficiently describe how to achieve [its stated] results in a non-abstract way," because "[s]uch functional claim language, without more, is insufficient for patentability under our law." (quoting Two-Way Media Ltd v. Comcast Cable Commc'ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017))); see also Intell. Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (similar); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016) (similar). Claiming a mere concept or functional result without disclosing the implementation details does not overcome USC 101. Applying an established technique to a new field or data set is insufficient for patent eligibility. To show an involvement of a computer assists in improving technology, the claims must recite details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology (MPEP 2106.05(a)(II)). In Finjan, Inc. v. Blue Coat Systems the courts found that the claims were “directed to a non-abstract improvement in computer functionality…” (MPEP 2106.04(d)). The present invention does not meet the condition set forth by the courts and thus does not integrate the judicial exception into a practical application. The claims are clearly not eligible under Step 2A Prong 2.
On pages 10 to 11 the applicant argues that for Step 2B the claims do not simply "use a computer," but recites a specific ordered combination of operations along with a specific machine-learning model architecture, and a specific model-explanation technique that provides significantly more than the abstract idea. Applicant asserts that the office has not has not established that it was well-understood, routine, and conventional to use the claimed ordered combination which uses the generated data in a meaningful way to select a channel from a plurality of channel. Applicant requests withdrawal of the USC 101 rejection.
Examiner disagrees with the applicant’s arguments. Examiner points out that the “apply it” and “well-understood, routine, and conventional” analysis was performed under Step 2B, with court case citations, which didn’t result in the claim being eligible under USC 101. In comparison to Bascom, examiner points out that Bascom is not similar to the present application because Bascom claimed a technical improvement in the art i.e., a technology-based solution to filter content on the internet while the present application is not presenting an improvement (as indicated above). Applicant seems to conflate on record the term architecture with algorithm. As a person of ordinary skill in the art, examiner seeks to make the record clear that applicant has not claimed any specific machine learning architecture or technique in the claim, but rather specified an off-the-shelf algorithm for use on new data. The use of a computer or other machinery in its ordinary capacity for economic or other tasks or simply adding a general-purpose computer or computer components after the fact to an abstract idea does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). The invention is presently is still not patent-eligible under USC 101. Therefore, the USC 101 rejection is strongly maintained.
Prior Art Cited but Not Relied Upon
The following document was found relevant to the disclosure but not applied:
Samal, L., Dykes, P. C., Greenberg, J. O., Hasan, O., Venkatesh, A. K., Volk, L. A., & Bates, D. W. (2016). Care coordination gaps due to lack of interoperability in the United States: a qualitative study and literature review. BMC health services research, 16, 1-8.
This reference is relevant since it discloses determination of gap in care from a clinician’s perspective as well as from a patient’s perspective.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WINSTON FURTADO whose telephone number is (571)272-5349. The examiner can normally be reached Monday-Friday 8:00 AM to 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mamon Obeid can be reached at (571) 270-1813. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WINSTON R FURTADO/Examiner, Art Unit 3687
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