DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This office action is in response to applicant's communication of October 6, 2025. The rejections are stated below. Claims 2-9, 11-14, 16, 18, and 20-22 are pending and have been examined.
Response to Amendment/Arguments
2. Applicant’s arguments concerning 35 U.S.C. 101 have been considered but are not persuasive. Claim 2 recites a system that performs the following functions: receiving consumer data, storing data, receiving additional data from other sources, converting data formats, using a predictive model to generate a risk score and a mortality score, comparing those scores to thresholds, and automatically generating an insurance policy offer if the thresholds are met. This is a method of evaluating an individual for insurance by gathering and analyzing data to reach a decision. This is a fundamental economic practice, specifically insurance underwriting. The Federal Circuit has consistently held that such processes are abstract ideas. See, e.g., Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1280 (Fed. Cir. 2012) (holding that managing a life insurance policy was an abstract idea); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (stating that “tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting)” is an abstract idea). Applicant’s reliance on the 2019 Guidance categories does not compel a different result. Even under that guidance, the claimed process falls within the “certain methods of organizing human activity” grouping as a “fundamental economic practice.” Applicant attempts to distinguish Bancorp by arguing claim 2 does not recite “managing.” Claim 2 recites a process of assessing risk to make an insurance underwriting decision, which is a fundamental economic practice analogous to the claims in Bancorp. Applicant’s citation to the August 2025 Memorandum does not alter this analysis. The claims recite the exception, the process of insurance risk assessment rather than merely involving it in a larger eligible invention. The additional elements, whether considered individually or in ordered combination, do not provide an inventive concept. The claim recites an application processing apparatus, a communication device, a database, a processor, an issuance system that perform basic computer functions of receiving, storing, converting, processing with a model, comparing, and outputting. The use of a predictive model, even one trained via machine learning on specific types of data, is a tool applied to execute the abstract idea. The claim does not recite an improvement to the functioning of the computer or to the machine learning technique itself. The format conversion and use of a transaction indicator for data mapping are routine data processing steps used to prepare information for analysis. The “score based matrix” is a nonspecific mechanism for evaluating scores against thresholds. The ultimate output is an automated insurance policy offer which is the commercial outcome of the abstract process.
Applicant invokes Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), to argue that whether claim elements are well understood, routine, and conventional is a question of fact. The applicant further states the Office action did not cite prior art teaching the claimed features. The rejection under 35 U.S.C. 101 is not based on a finding that the claim elements are well understood, routine, and conventional in the industry. The rejection is based on the application of the Alice framework. At Alice step two, the inquiry is whether the additional elements transform the nature of the claim into a patent eligible application. The Supreme Court in Alice did not require prior art citations to establish that implementing an abstract idea on a generic computer is insufficient. Alice, 573 U.S. at 225. The Court concluded that the claims at issue did “no more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer.” Id.
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.
3. Claims 2-9, 11-14, 16, 18, and 20-22 are rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea of predicting insurance risk and offering insurance without significantly more.
The Examiner has identified independent system Claim 2 as the claim that represents the claimed invention for analysis.
Claim 2 recites a system which is one of the four statutory categories of invention (Step 1: YES).
Claim 2 recites a … comprising:
an … that receives, from a … input data, in a first format, describing a consumer 2) assigns a transaction indicator to the input data, and 3) stores the … in …;
a … that 1) receives first additional data, being in a second format, related to the consumer; 2) generates a … on a …: 3) populates on the … at least some of the input data obtained from the … and at least some of the first additional data; and 4) assigns the transaction indicator to the first additional data;
a … for storing second additional data relating to the consumer;
a… having … to:
obtain, from the …, the second additional data upon the input data being inputted into a predictive model, the second additional data being in a third format;
map the input data to first additional data based on the transaction indicator;
convert the input data from the first format to a fourth format, the first additional data from the second format to the fourth format, and the second additional data from the third format to the fourth format, wherein the first format, the second format, and the third format are different than the fourth format;
generate, using the … constructed via … by
analyzing one or more of medical data, insurance data, and motor vehicle history data, a risk score associated with the consumer based on one or more of the converted input data and the converted first additional data;
generate, using the …, a mortality score associated with the consumer based on the converted second additional data;
determine that the risk score exceeds a first threshold score, and the mortality score exceeds a second threshold score; and
in response to the risk score exceeding the first threshold score and the mortality score exceeding the second threshold score, … generate without relying on further action from an underwriter, a …, wherein the … includes an indication that the consumer is eligible to receive an automated insurance policy offer,
wherein the … utilizes a score-based matrix to determine if the risk score exceeds the first threshold score, and the mortality score exceeds the second threshold score;
an … that receives, from the …, the … prediction notice, and …delivers the automated insurance policy offer based on the … prediction notice”. These limitations describe an abstract idea of predicting insurance risk and offering insurance and corresponds to Certain Methods of Organizing Human Activity (fundamental economic principles including insurance and hedging). Accordingly, the claim 2 recites an abstract idea (Step 2A: Prong 1: YES).
4. The claim also recites as additional elements such as “a predicting assessment system”, “application processing apparatus”, “first user interface”, “electronic file storage”, “communication device”, “scheduler window on the first user interface”, “third party database”, “processor having program instructions configured”, “trained”, “digital”, “issuance system”, and “automated” which do no more than implement the abstract idea and/or provide a particular technological environment. Therefore, claim 2 recites an abstract idea without a practical application (Step 2A - Prong 2: NO).
5. Further, as the additional elements of claim 2 do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field. Thus, claim 2 is not patent eligible (Step 2B: NO).
6. Claim 3 recites “wherein the risk score and the mortality score are predictive of a risk associated with the consumer” which further define the abstract idea.
7. Claim 4 recites “wherein the second threshold score is dependent on the risk score” which further define the abstract idea.
8. Claim 5 recites “wherein the second additional data includes a social security number of the consumer” which further define the abstract idea.
9. Claim 6 recites “further comprising if at least certain business rules are not met, generating a request for lab work data associated with the consumer” which further define the abstract idea.
10. Claim 7 recites “further comprising if the risk score does not at least meet the first threshold score, generating a request for consumer lab work data” which further define the abstract idea.
11. Claim 8 recites “further comprising if the mortality score does not at least meet the second threshold score, generating a request for consumer lab work data” which further define the abstract idea.
12. Claim 9 recites “wherein the risk score and the mortality score are predictive of a risk associated with the consumer” which further define the abstract idea.
13. Claim 11 recites “wherein the … prediction notice includes an indication that the consumer is low risk and eligible to receive an automated insurance policy offer”. The claim includes “digital” as an additional element. However, the additional element does no more than link the judicial exception to a particular technological environment. The additional element does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a).
14. Claim 12 recites “wherein the … assigns a transaction indicator to the input data and tele-interview … assigns the transaction indicator to the first additional data”. The claim includes “application processing apparatus” and “electronic device” as additional elements. However, the additional elements do no more than link the judicial exception to a particular technological environment. The additional element does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a).
15. Claim 13 recites “wherein the … maps the input data to the first additional data and the second additional data based on the transaction indicator”. The claim includes “processor” as an additional element. However, the additional element does no more than link the judicial exception to a particular technological environment. The additional element does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a).
16. Claim 14 recites “wherein the … prediction notice includes an indication that the consumer is low risk and eligible to receive an … insurance policy offer without further action from an underwriter”. The claim includes “digital” and “automated” as additional elements. However, the additional elements do no more than link the judicial exception to a particular technological environment. The additional element does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a).
17. Claim 16 recites “wherein the … stores the first additional data in the …”. The claim includes “communication device and electronic” as additional elements. However, the additional elements do no more than link the judicial exception to a particular technological environment. The additional element does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a).
18. Claim 17 recites “wherein the … to generate a … on the … and … populate on the … at least some of the input data and at least some of the first additional data”. The claim includes “communication device”, “configured”, “scheduler window on the first user interface“ as additional elements. However, the additional elements do no more than link the judicial exception to a particular technological environment. The additional element does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a).
19. Claim 18 recites “wherein the … is populated with at least some of the input data and some of the first additional data based on a unique identifier associated with consumer, the unique identifier being received by the …”. The claim includes “scheduler window” and “communication device” as additional elements. However, the additional elements do no more than link the judicial exception to a particular technological environment. The additional element does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a).
20. Claim 20 recites “obtain a file that defines a data structure indicative of a set of variables indicative of one or more of the input data, the additional data, or the second additional data, in which the data structure defines names and corresponding values of the variables; and provide the variables to the prediction model as inputs to generate one or more of the risk score or the mortality score” which further define the abstract idea.
21. Claim 21 recites “wherein to obtain a file that defines a data structure indicative of a set of variables comprises to obtain a file that defines a set of variables having a size that varies as a function of one or more conditions represented in the input data, the additional data, or the second additional data to increase a level of predictiveness of the prediction model” which further define the abstract idea.
22. Claim 22 recites “where to obtain a file that defines a data structure indicative of a set of variable comprises to obtain a file that defines a set of variables having at least 1,000 variables” which further define the abstract idea.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any 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 KEVIN T POE whose telephone number is (571)272-9789. The examiner can normally be reached on Monday-Friday 9:30am through 6pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Donlon can be reached on 571-270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.T.P/Examiner, Art Unit 3692 /KEVIN T POE/
/RYAN D DONLON/Supervisory Patent Examiner, Art Unit 3692 March 19, 2026