DETAILED ACTION
Response to Amendment
This Office Action is responsive to Applicant’s arguments and request for reconsideration of application 17931908 (09/14/22) filed on 07/06/26.
Claim Objections
Claim 12 is objected to because of the following informalities:
Claim 12 recites, “receiving, at a processor, data from a plurality of physiological assessments performed by a specific individual, said assessments comprising at least one cognitive test and at least one walking test providing gait characteristics measured from video data, wherein said physiological assessments are of a type that measures a physiological state predictive of at least one of frailty, disability, or mortality;”
This should be -- receiving, at a processor, data from a plurality of physiological assessments performed by a specific individual, said plurality of physiological assessments comprising at least one cognitive test and at least one walking test providing gait characteristics measured from video data, wherein said plurality of physiological assessments are of a type that measures a physiological state predictive of at least one of frailty, disability, or mortality; -- or something similar.
Inconsistent terminology.
Appropriate correction is required.
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 6 - 12 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 6 - 12 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.
Re Claims 6 - 11:
1: Statutory Category
Applicant’s claimed invention, as described in independent claim 6, is/are directed to a process (i.e. computer-implemented 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).
Mathematical Concepts
The claim recites a mathematical formula or calculation (calculating ….. a statistical shift for said individual; calculating said statistical shift based on a difference between said percentile-specific age and said average age; determining ….. a personalized adjusting factor based on said calculated statistical shift; raising each mortality probability of said plurality of mortality probabilities to a power of a function of said personalized adjusting factor, and wherein said gait-personalized mortality table comprises mortality probabilities that structurally embody the individual's measured gait characteristics.). Thus, the claim recites a mathematical concept. Thus, the claim recites 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 receiving ….. data from a plurality of physiological assessments performed by a specific individual, said plurality of physiological assessments comprising at least one cognitive test and at least one walking test providing gait characteristics measured from video data, wherein said plurality of physiological assessments are of a type that measures a physiological state predictive of at least one of frailty, disability, or mortality; accessing a base mortality table comprising a plurality of mortality probabilities; calculating ….. a statistical shift for said individual by: determining an average age for an actuarial event from said base mortality table;
determining a percentile-specific age for said actuarial event based on said received said plurality of physiological assessments; and calculating said statistical shift based on a difference between said percentile-specific age and said average age;
determining ….. a personalized adjusting factor based on said calculated statistical shift;
generating a gait-personalized mortality table, wherein said generating comprises modifying said base mortality table by raising each mortality probability of said plurality of mortality probabilities to a power of a function of said personalized adjusting factor, and wherein said gait-personalized mortality table comprises mortality probabilities that structurally embody the individual's measured gait characteristics; and outputting an identifier for a specific data record ….., wherein said specific data record is identified by matching underwriting criteria associated with said plans to the mortality probabilities within said gait-personalized mortality table, which is a fundamental economic principles or practices (generating a gait-personalized mortality table); commercial or legal (generating a gait-personalized mortality table); and managing personal behavior or relationships or interactions between people (receiving, accessing, calculating, determining, generating, modifying, raising, outputting, matching).
The mere nominal recitation of “computer-implemented” (preamble only) and a “processor” does not take the claim out of the method of organizing human activity grouping. Thus, the claim recites an abstract idea.
Mental Processes
The claim recites limitations directed to receiving ….. data from a plurality of physiological assessments performed by a specific individual, said plurality of physiological assessments comprising at least one cognitive test and at least one walking test providing gait characteristics measured from video data, wherein said plurality of physiological assessments are of a type that measures a physiological state predictive of at least one of frailty, disability, or mortality; accessing a base mortality table comprising a plurality of mortality probabilities; calculating ….. a statistical shift for said individual by: determining an average age for an actuarial event from said base mortality table; determining a percentile-specific age for said actuarial event based on said received said plurality of physiological assessments; and calculating said statistical shift based on a difference between said percentile-specific age and said average age;
determining ….. a personalized adjusting factor based on said calculated statistical shift;
generating a gait-personalized mortality table, wherein said generating comprises modifying said base mortality table by raising each mortality probability of said plurality of mortality probabilities to a power of a function of said personalized adjusting factor, and wherein said gait-personalized mortality table comprises mortality probabilities that structurally embody the individual's measured gait characteristics; and outputting an identifier for a specific data record ….., wherein said specific data record is identified by matching underwriting criteria associated with said plans to the mortality probabilities within said gait-personalized mortality table.
The limitation(s), as drafted, is/are a process that, under it’s broadest reasonable interpretation, covers performance of the limitation(s) in the mind. That is, other than reciting “computer-implemented” (preamble only) and a “processor”, nothing in the claim element precludes the steps from practically being performed in the mind. In other words, the claim encompasses the user manually receiving ….. data from a plurality of physiological assessments performed by a specific individual, said plurality of physiological assessments comprising at least one cognitive test and at least one walking test providing gait characteristics measured from video data, wherein said plurality of physiological assessments are of a type that measures a physiological state predictive of at least one of frailty, disability, or mortality; accessing a base mortality table comprising a plurality of mortality probabilities; calculating ….. a statistical shift for said individual by: determining an average age for an actuarial event from said base mortality table; determining a percentile-specific age for said actuarial event based on said received said plurality of physiological assessments; and calculating said statistical shift based on a difference between said percentile-specific age and said average age;
determining ….. a personalized adjusting factor based on said calculated statistical shift; generating a gait-personalized mortality table, wherein said generating comprises modifying said base mortality table by raising each mortality probability of said plurality of mortality probabilities to a power of a function of said personalized adjusting factor, and wherein said gait-personalized mortality table comprises mortality probabilities that structurally embody the individual's measured gait characteristics; and outputting an identifier for a specific data record ….., wherein said specific data record is identified by matching underwriting criteria associated with said plans to the mortality probabilities within said gait-personalized mortality table. NOTE: (a) The claim is exclusively from the perspective of a “processor” with respect to some positively recited steps or acts, or silent regarding who/what is performing some positively recited steps or acts.
The mere nominal recitation of “computer-implemented” (preamble only) and a “processor” does not take the claim out of the mental processes 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 “computer-implemented” (preamble only) performing some of the positively recited steps or acts required of the claimed invention. The claim recites the combination of additional elements of a “processor” performing some of the positively recited steps or acts required of the claimed invention. The additional element(s) is/ are recited at a high level of generality (i.e., as a generic computer being used as a tool to perform the generic computer functions of (a) data receipt/ transmission (e.g., “receiving”, “accessing”, “outputting”, etc. step(s) as claimed); and (b) data processing (e.g., “calculating”, “determining”, “generating”, “modifying”, “raising”, “matching”, 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 actuarial data (e.g., “plurality of physiological assessments” comprising “at least one cognitive test” and “at least one walking test providing gait characteristics measured from video data”)), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The claim is recited at a high level of generality, and merely automates the step(s). 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.
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 9/14/22 does not provide any indication that the claimed invention incorporates anything other than generic, off-the-shelf computer components, see at least paragraphs [0071] [0072] [0073]. Furthermore, the prosecution history of the instant application provides Briggs, US Pat. No. 10,580,077 operating in a similar environment, suggesting performing tasks such as (a) data receipt/ transmission (e.g., “receiving”, “accessing”, “outputting”, etc. step(s) as claimed); and (b) data processing (e.g., “calculating”, “determining”, “generating”, “modifying”, “raising”, “matching”, etc. step(s) as claimed) are well understood, routine and conventional. See Briggs, abstract, col. 2, lines 40 - 57; col. 3, lines 22+ - col. 4, line 38; col. 5, lines 16 - 32; col. 6, lines 26 - 67. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant such as (a) data receipt/ transmission (e.g., “receiving”, “accessing”, “outputting”, etc. step(s) as claimed); and (b) data processing (e.g., “calculating”, “determining”, “generating”, “modifying”, “raising”, “matching”, 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). 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 inventive concept in the claim, and thus the claim is ineligible.
Dependent claims 7 - 11 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Re Claim 12:
1: Statutory Category
Applicant’s claimed invention, as described in independent claim 12, is/are directed to a process (i.e. computer-implemented 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).
Mathematical Concepts
The claim recites a mathematical formula or calculation (calculating ….. a statistical shift for said individual based on said received data; determining ….. a personalized adjusting factor based on said calculated statistical shift; raising each mortality probability of said plurality of mortality probabilities to a power of a function of said personalized adjusting factor, and wherein said gait-personalized mortality table comprises mortality probabilities that structurally embody the individual's measured gait characteristics.). Thus, the claim recites a mathematical concept. Thus, the claim recites 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 receiving ….. data from a plurality of physiological assessments performed by a specific individual, said assessments comprising at least one cognitive test and at least one walking test providing gait characteristics measured from video data, wherein said physiological assessments are of a type that measures a physiological state predictive of at least one of frailty, disability, or mortality;
accessing a base mortality table comprising a plurality of mortality probabilities;
calculating ….. a statistical shift for said individual based on said received data;
determining ….. a personalized adjusting factor based on said calculated statistical shift;
generating a gait-personalized mortality table, wherein said generating comprises modifying said base mortality table by raising each mortality probability of said plurality of mortality probabilities to a power of a function of said personalized adjusting factor, and wherein said gait-personalized mortality table comprises mortality probabilities that structurally embody the individual's measured gait characteristics; and outputting an identifier for a specific data record from a database of plans, wherein said specific data record is identified by matching underwriting criteria associated with said plans to the mortality probabilities within said gait-personalized mortality table, which is a fundamental economic principles or practices (generating a gait-personalized mortality table); commercial or legal (generating a gait-personalized mortality table); and managing personal behavior or relationships or interactions between people (receiving, accessing, calculating, determining, generating, modifying, raising, outputting, matching).
The mere nominal recitation of “computer-implemented” (preamble only) and a “processor” does not take the claim out of the method of organizing human activity grouping. Thus, the claim recites an abstract idea.
Mental Processes
The claim recites limitations directed to receiving ….. data from a plurality of physiological assessments performed by a specific individual, said assessments comprising at least one cognitive test and at least one walking test providing gait characteristics measured from video data, wherein said physiological assessments are of a type that measures a physiological state predictive of at least one of frailty, disability, or mortality; accessing a base mortality table comprising a plurality of mortality probabilities; calculating ….. a statistical shift for said individual based on said received data; determining ….. a personalized adjusting factor based on said calculated statistical shift; generating a gait-personalized mortality table, wherein said generating comprises modifying said base mortality table by raising each mortality probability of said plurality of mortality probabilities to a power of a function of said personalized adjusting factor, and wherein said gait-personalized mortality table comprises mortality probabilities that structurally embody the individual's measured gait characteristics; and outputting an identifier for a specific data record from a database of plans, wherein said specific data record is identified by matching underwriting criteria associated with said plans to the mortality probabilities within said gait-personalized mortality table.
The limitation(s), as drafted, is/are a process that, under it’s broadest reasonable interpretation, covers performance of the limitation(s) in the mind. That is, other than reciting “computer-implemented” (preamble only) and a “processor”, nothing in the claim element precludes the steps from practically being performed in the mind. In other words, the claim encompasses the user manually receiving ….. data from a plurality of physiological assessments performed by a specific individual, said assessments comprising at least one cognitive test and at least one walking test providing gait characteristics measured from video data, wherein said physiological assessments are of a type that measures a physiological state predictive of at least one of frailty, disability, or mortality; accessing a base mortality table comprising a plurality of mortality probabilities; calculating ….. a statistical shift for said individual based on said received data; determining ….. a personalized adjusting factor based on said calculated statistical shift; generating a gait-personalized mortality table, wherein said generating comprises modifying said base mortality table by raising each mortality probability of said plurality of mortality probabilities to a power of a function of said personalized adjusting factor, and wherein said gait-personalized mortality table comprises mortality probabilities that structurally embody the individual's measured gait characteristics; and outputting an identifier for a specific data record from a database of plans, wherein said specific data record is identified by matching underwriting criteria associated with said plans to the mortality probabilities within said gait-personalized mortality table. NOTE: (a) The claim is exclusively from the perspective of a “processor” with respect to some positively recited steps or acts, or silent regarding who/what is performing some positively recited steps or acts.
The mere nominal recitation of “computer-implemented” (preamble only) and a “processor” does not take the claim out of the mental processes 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 “computer-implemented” (preamble only) performing some of the positively recited steps or acts required of the claimed invention. The claim recites the combination of additional elements of a “processor” performing some of the positively recited steps or acts required of the claimed invention. The additional element(s) is/ are recited at a high level of generality (i.e., as a generic computer being used as a tool to perform the generic computer functions of (a) data receipt/ transmission (e.g., “receiving”, “accessing”, “outputting”, etc. step(s) as claimed); and (b) data processing (e.g., “calculating”, “determining”, “generating”, “modifying”, “raising”, “matching”, 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 actuarial data (e.g., “plurality of physiological assessments” comprising “at least one cognitive test” and “at least one walking test providing gait characteristics measured from video data”), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The claim is recited at a high level of generality, and merely automates the step(s). 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.
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 9/14/22 does not provide any indication that the claimed invention incorporates anything other than generic, off-the-shelf computer components, see at least paragraphs [0071] [0072] [0073]. Furthermore, the prosecution history of the instant application provides Briggs, US Pat. No. 10,580,077 operating in a similar environment, suggesting performing tasks such as (a) data receipt/ transmission (e.g., “receiving”, “accessing”, “outputting”, etc. step(s) as claimed); and (b) data processing (e.g., “calculating”, “determining”, “generating”, “modifying”, “raising”, “matching”, etc. step(s) as claimed) are well understood, routine and conventional. See Briggs, abstract, col. 2, lines 40 - 57; col. 3, lines 22+ - col. 4, line 38; col. 5, lines 16 - 32; col. 6, lines 26 - 67. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant such as (a) data receipt/ transmission (e.g., “receiving”, “accessing”, “outputting”, etc. step(s) as claimed); and (b) data processing (e.g., “calculating”, “determining”, “generating”, “modifying”, “raising”, “matching”, 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). 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 inventive concept in the claim, and thus the claim is ineligible.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 6 and 12 (claims 7 - 11 based on their dependency) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 6 and 12 (claims 7 - 11 based on their dependency) recite, “generating a personalized mortality model from measured gait characteristics”. It is unclear where support may be found for this limitation in applicant’s specification as filed 09/14/22. NOTE: Applicant’s specification as filed 09/14/22 doesn’t refer to any “model” or “personalized mortality model” in particular.
Claims 6 and 12 (claims 7 - 11 based on their dependency) recite, “outputting an identifier for a specific data record from a database of plans, wherein said specific data record is identified by matching underwriting criteria associated with said plans to the mortality probabilities within said gait- personalized mortality table.” It is unclear where support may be found for this limitation in applicant’s specification as filed 09/14/22. NOTE: Applicant’s specification as filed 09/14/22 doesn’t refer to several concepts the limitation references such as “outputting an identifier”, “specific data record” or “database of plans”.
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 6 and 12 (claims 7 - 11 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.
Claims 6 and 12 (claims 7 - 11 based on their dependency) recite, “A computer-implemented method for generating a personalized mortality model from measured gait characteristics” (preamble only). NOTE: The claim is indefinite because although the preamble of the claim suggested the claimed invention is “for generating a personalized mortality model”, the invention described in the body of the clam never accomplishes this result.
Response to Arguments
Objection
Please note the objections withdrawn and maintained 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 judicial exception (i.e., an abstract idea) is integrated into a practical application.
Applicant suggests the claimed invention presents a “practical application” because it (a) provides improvements in the functioning of a computer, or to any other technology or technical field (e.g., “Just as the self-referential table in Enfish was found to be an improvement to computer functionality, the recited "gait-personalized mortality table" is a specific improvement to the technology of computer-based predictive modeling.” See pg. 7 of applicant’s arguments/ remarks as filed 07/06/26); and (b) provides a technical solution to a technical problem (e.g., “Amended claims 6 and 12 solve this technical problem by providing a specific technological pathway that makes automation possible for the first time. This is a specific technological improvement that solves a technical problem rooted in computer technology.” See pg. 7 of applicant’s arguments/ remarks as filed 07/06/26). The Examiner disagrees.
Applicant’s arguments suggesting the claimed invention (a) provides improvements in the functioning of a computer, or to any other technology or technical field; and (b) provides a technical solution to a technical problem suggests the applicant believes the technical aspects of the invention are substantial. There exists alternative perspectives however.
With respect to applicant’s “improvements”/ “solution”. “Actuarial Science” such as insurance (e.g., generating a gait-personalized mortality table) 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.
NOTE: This interpretation is consistent with applicant’s specification as filed 09/14/22. For example, para. [0002] [0003] of applicant’s specification as filed 09/14/22 states:
[0002] The present invention relates to insurance generally and to underwriting of insurance policies in particular.
[0003] Currently, when requesting underwriting for insurance policies, customers share their historical medical records/conditions and insurance actuaries have various tables (e.g., mortality tables, disability tables, etc.) which they use to determine the costs of the insurance policies. Each row of these tables lists an age and its related probabilities, such as: the probability of a healthy person to file a claim, to die, to die if they are living in an institution, etc.
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).
With respect to the limitation “wherein said gait-personalized mortality table comprises mortality probabilities that structurally embody the individual's measured gait characteristics.” The examiner disagrees with applicant’s suggestion that this is the core of the technical solution. The “gait-personalized mortality table” is merely a table or data compilation that represents “non-functional descriptive material”. See also, MPEP §§2111.05.
It is noted that the features upon which applicant relies (i.e., "….. specific improvement to the technology of computer-based predictive modeling." See pg. 7 of applicant's arguments/ remarks as filed 07/06/26 ) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. NOTE: Applicant’s invention as described in claim 6 - 12 does not describe an “improvement” to “computer-based predictive modeling”. Furthermore, applicant’s specification as filed 09/14/22 does not support “modeling” or “predictive modeling” in particular. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant’s arguments rely on language solely recited in preamble recitations in claim(s) 6 - 12. When reading the preamble in the context of the entire claim, the recitation “A computer-implemented method for generating a personalized mortality model from measured gait characteristics …..” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Contrary to applicant’s arguments, many of the features applicant relies upon are “insignificant”. For example, they amount to “necessary data gathering and outputting” (e.g., “receiving, at a processor, data from a plurality of physiological assessments performed by a specific individual, said plurality of physiological assessments comprising at least one cognitive test and at least one walking test providing gait characteristics measured from video data, wherein said plurality of physiological assessments are of a type that measures a physiological state predictive of at least one of frailty, disability, or mortality; accessing a base mortality table comprising a plurality of mortality probabilities”; and “outputting an identifier for a specific data record from a database of plans …..”).
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., “receiving, at a processor, data from a plurality of physiological assessments performed by a specific individual, said plurality of physiological assessments comprising at least one cognitive test and at least one walking test providing gait characteristics measured from video data, wherein said plurality of physiological assessments are of a type that measures a physiological state predictive of at least one of frailty, disability, or mortality; accessing a base mortality table comprising a plurality of mortality probabilities”;”); and analyzing it (e.g., Regarding claims 6 - 11 “calculating, by said processor, a statistical shift for said individual by:
determining an average age for an actuarial event from said base mortality table;
determining a percentile-specific age for said actuarial event based on said received said plurality of physiological assessments; and calculating said statistical shift based on a difference between said percentile-specific age and said average age;
determining, by said processor, a personalized adjusting factor based on said calculated statistical shift; generating a gait-personalized mortality table, wherein said generating comprises modifying said base mortality table by raising each mortality probability of said plurality of mortality probabilities to a power of a function of said personalized adjusting factor, and wherein said gait-personalized mortality table comprises mortality probabilities that structurally embody the individual's measured gait characteristics”; and “….. wherein said specific data record is identified by matching underwriting criteria associated with said plans to the mortality probabilities within said gait- personalized mortality table”. Regarding claim 12 “calculating, by said processor, a statistical shift for said individual based on said received data; determining, by said processor, a personalized adjusting factor based on said calculated statistical shift; generating a gait-personalized mortality table, wherein said generating comprises modifying said base mortality table by raising each mortality probability of said plurality of mortality probabilities to a power of a function of said personalized adjusting factor, and wherein said gait-personalized mortality table comprises mortality probabilities that structurally embody the individual's measured gait characteristics”; and “….. wherein said specific data record is identified by matching underwriting criteria associated with said plans to the mortality probabilities within said gait- personalized mortality table”.); and displaying certain results of the collection and analysis (e.g., “outputting an identifier for a specific data record from a database of plans …..”) 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 is not indicative of integration into a practical application. See also, MPEP §2106.05 (h).
(2) Applicant argues inventive concept (i.e., 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)). Applicant argues the claimed invention is not “well-understood, routine, or conventional”.
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 9/14/22 does not provide any indication that the claimed invention incorporates anything other than generic, off-the-shelf computer components, see at least paragraphs [0071] [0072] [0073]. Furthermore, the prosecution history of the instant application provides Briggs, US Pat. No. 10,580,077 operating in a similar environment, suggesting performing tasks such as (a) data receipt/ transmission (e.g., “receiving”, “accessing”, “outputting”, etc. step(s) as claimed); and (b) data processing (e.g., “calculating”, “determining”, “generating”, “modifying”, “raising”, “matching”, etc. step(s) as claimed) are well understood, routine and conventional. See Briggs, abstract, col. 2, lines 40 - 57; col. 3, lines 22+ - col. 4, line 38; col. 5, lines 16 - 32; col. 6, lines 26 - 67. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant such as (a) data receipt/ transmission (e.g., “receiving”, “accessing”, “outputting”, etc. step(s) as claimed); and (b) data processing (e.g., “calculating”, “determining”, “generating”, “modifying”, “raising”, “matching”, 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). 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 inventive concept in the claim, and thus the claim is ineligible.
Dependent claims 7 - 11 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
(3) Applicant argues the claimed invention is similar to Enfish.
Enfish v. Microsoft Corp. et al., No. 2015-1244 Fed. Cir. May 12, 2016 relates to an invention directed to a “self-referential” database. pg. 2 In contrast to a standard “relational model”, the “self-referential model” was found to have two unique features: (a) ”the self-referential model can store all entity types in a single table.” (b) “the self-referential model can define the table’s columns by rows in that same table.” pg. 6.
The court in Enfish concluded that the claims at issue were not directed to an “abstract idea” within the meaning of Alice. pg. 12.
In coming to it’s conclusion, the court in Enfish distinguished between two categories of claims. The first category of claims provides an “improvement to computer functionality” and/or “improvement in computer capabilities”. pg. 11. The second category of claims are directed to a “process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. pg. 11. In the second category claims are directed to “economic or other tasks for which the computer is used in it’s ordinary capacity.” pg. 12.
The court in Enfish found that the claimed invention was not abstract because it considered the claimed invention to fit within the first category of claims because it achieved “improvements” such as: (a) “allows for faster searching of data than would be possible with the relational model.” (b) “the self-referential model allows for more effective storage of data other than structured text, such as images and unstructured text.” (c) “the self-referential model allows more flexibility in configured the database.” pg. 7.
In contrast to the claims in Enfish that were not considered an “abstract idea” within the meaning of Alice, applicant’s claimed invention is similar to the second category of claims which the court in Enfish considers to embrace an “abstract idea”.
In the instant case: The claims recite, “receiving, at a processor, data from a plurality of physiological assessments performed by a specific individual, said assessments comprising at least one cognitive test and at least one walking test providing gait characteristics measured from video data, wherein said physiological assessments are of a type that measures a physiological state predictive of at least one of frailty, disability, or mortality; accessing a base mortality table comprising a plurality of mortality probabilities; calculating, by said processor, a statistical shift for said individual based on said received data; determining, by said processor, a personalized adjusting factor based on said calculated statistical shift; generating a gait-personalized mortality table, wherein said generating comprises modifying said base mortality table by raising each mortality probability of said plurality of mortality probabilities to a power of a function of said personalized adjusting factor, and wherein said gait-personalized mortality table comprises mortality probabilities that structurally embody the individual's measured gait characteristics; and outputting an identifier for a specific data record from a database of plans, wherein said specific data record is identified by matching underwriting criteria associated with said plans to the mortality probabilities within said gait-personalized mortality table.” Some of the steps are performed exclusively by a generic computer (i.e., "a processor”, etc.) with respect to claims 6 - 12.
The steps or acts for which a generic computer is involved can be characterized as well-understood, routine and conventional activities. In particular, the steps pertain to routine: (a) data receipt and transmission (e.g., “receiving, at a processor, data from a plurality of physiological assessments performed by a specific individual, said plurality of physiological assessments comprising at least one cognitive test and at least one walking test providing gait characteristics measured from video data, wherein said plurality of physiological assessments are of a type that measures a physiological state predictive of at least one of frailty, disability, or mortality; accessing a base mortality table comprising a plurality of mortality probabilities”; and “outputting an identifier for a specific data record from a database of plans …..”); and (b) data processing (e.g., Regarding claims 6 - 11 “calculating, by said processor, a statistical shift for said individual by: determining an average age for an actuarial event from said base mortality table; determining a percentile-specific age for said actuarial event based on said received said plurality of physiological assessments; and calculating said statistical shift based on a difference between said percentile-specific age and said average age;
determining, by said processor, a personalized adjusting factor based on said calculated statistical shift; generating a gait-personalized mortality table, wherein said generating comprises modifying said base mortality table by raising each mortality probability of said plurality of mortality probabilities to a power of a function of said personalized adjusting factor, and wherein said gait-personalized mortality table comprises mortality probabilities that structurally embody the individual's measured gait characteristics”; and “….. wherein said specific data record is identified by matching underwriting criteria associated with said plans to the mortality probabilities within said gait- personalized mortality table”. Regarding claim 12 “calculating, by said processor, a statistical shift for said individual based on said received data; determining, by said processor, a personalized adjusting factor based on said calculated statistical shift; generating a gait-personalized mortality table, wherein said generating comprises modifying said base mortality table by raising each mortality probability of said plurality of mortality probabilities to a power of a function of said personalized adjusting factor, and wherein said gait-personalized mortality table comprises mortality probabilities that structurally embody the individual's measured gait characteristics”; and “….. wherein said specific data record is identified by matching underwriting criteria associated with said plans to the mortality probabilities within said gait- personalized mortality table”.). Thus, the claim limitations are directed to “economic or other tasks for which the computer is used in it’s ordinary capacity.”
Some limitations involve organizing human activities, because they are calculations and computations processing (e.g., “calculating, by said processor, a statistical shift for said individual …..”; “determining, by said processor, a personalized adjusting factor based on said calculated statistical shift”; “….. raising each mortality probability of said plurality of mortality probabilities to a power of a function of said personalized adjusting factor, and wherein said gait-personalized mortality table comprises mortality probabilities that structurally embody the individual's measured gait characteristics.”) that may be performed using the mental activity of a human operator. Thus, the claim limitations are directed to a “process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.”
In summary, the rationale of Enfish differ from applicant’s claimed invention in many respects. First, Enfish was directed “self-referential” database that had unique features. In contrast, the components of applicant’s claimed invention are generic (e.g., “processor”). As noted above, the examiner disputes whether there is a database mentioned in applicant’s specification as filed 09/14/22, furthermore applicant’s claimed invention is silent regarding any specialized database performing any special or unique functions. Second, unlike in Enfish, the specification does not describe any benefits of using the particular components of the claimed system.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure and relates to personalization of actuarial tables.
US 10679294 B1
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.
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SARA CHANDLER HAMILTON
Primary Examiner
Art Unit 3695
/SARA C HAMILTON/Primary Examiner, Art Unit 3695
Prosecution Insights