DETAILED ACTION
Response to Amendment
This Office Action is responsive to Applicant’s arguments and request for reconsideration of application 17/976,271 (10/28/22) filed on 11/24/25.
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 - 28 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 1 - 28 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
1: Statutory Category
Applicant’s claimed invention, as described in independent claim 1, is/are directed to a process (i.e. a machine learning method).
2(A): The claim(s) are directed to a judicial exception (i.e., an abstract idea).
PRONG 1: The claim(s) recite a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claim as a whole recites a method of organizing human activity. The claimed invention involves receiving a text description of an item; processing the text description using a first machine learning model configured to generate an item classifier that classifies the item being described by the text description; processing the text description using a second machine learning model configured to generate an item identifier that identifies at least one candidate matching item; automatically populating with the item classifier generated by the first machine learning model and the item identifier generated by the second machine learning model; and electronically processing claims using the item classifier and the item identifier automatically populated, which is a fundamental economic principles or practices (processing claims); commercial or legal interactions (processing claims); and managing personal behavior or relationships or interactions between people (receiving, processing, automatically populating, etc.).
The mere nominal recitation of “a processor”, “a database in communication with the processor” and “one or more user interface screens of a user interface of a claims processing software application” 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 a text description of an item; processing the text description using a first machine learning model configured to generate an item classifier that classifies the item being described by the text description; processing the text description using a second machine learning model configured to generate an item identifier that identifies at least one candidate matching item; automatically populating with the item classifier generated by the first machine learning model and the item identifier generated by the second machine learning model; and electronically processing claims using the item classifier and the item identifier automatically populated.
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 but for the recitation of generic computer components. That is, other than reciting “a processor” “a database in communication with the processor” and “one or more user interface screens of a user interface of a claims processing software application”, nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “a processor” language, the claim encompasses the user manually receiving a text description of an item; processing the text description using a first machine learning model configured to generate an item classifier that classifies the item being described by the text description; processing the text description using a second machine learning model configured to generate an item identifier that identifies at least one candidate matching item; automatically populating with the item classifier generated by the first machine learning model and the item identifier generated by the second machine learning model; and electronically processing claims using the item classifier and the item identifier automatically populated. NOTE: (a) The claim is exclusively from the perspective of “a processor” and “one or more user interface screens of a user interface of a claims processing software application”. (b) Although the claim refers to “a database in communication with the processor”, the claim is not from the perspective of the “database” and the “database” does not perform any of the positively recited steps or acts required of the claimed invention. The “database” merely interacts with the machine (i.e., “a processor” and “one or more user interface screens of a user interface of a claims processing software application”) from whose perspective the invention is claimed.
The mere nominal recitation of “a processor”, “a database in communication with the processor” and “one or more user interface screens of a user interface of a claims processing software application” does not take the claim limitation out of the mental processes grouping. This/these limitation(s) recite a mental process. Thus, the claim recites an abstract idea.
PRONG 2: The judicial exception (i.e., an abstract idea) is not integrated into a practical application.
The claim recites the combination of additional elements of “a processor” and “a claims processing software application” (including “one or more user interface screens of a user interface” thereof) performing each of the steps or acts and the “candidate matching item” coming “from a database in communication with the processor”. The additional element(s) is/ are recited at a high level of generality (i.e., as a generic computer performing the generic computer functions of (a) data receipt/ transmission (e.g., “receiving”, etc. step(s) as claimed); and (b) data processing (e.g., “processing”, “automatically populating”, 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 data regarding a text description of an item), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The “processor” and “claims processing software application” (including “one or more user interface screens of a user interface” thereof) is also recited at a high level of generality, and merely automates the step(s). The “processor” and “claims processing software application” (including “one or more user interface screens of a user interface” thereof) limitations are no more than mere instructions to apply the exception using generic computer components. Accordingly, the additional element(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limitations on practicing the abstract idea. The claim is directed to an abstract idea.
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 10/28/22 does not provide any indication that the “processor”, “database in communication with the processor” and “claims processing software application” (including “one or more user interface screens of a user interface” thereof) are anything other than generic, off-the-shelf computer components. Furthermore, the prosecution history of the instant application provides Maurer and Sawal operating in a similar environment, suggesting performing tasks such as (a) data receipt/ transmission (e.g., “receiving”, etc. step(s) as claimed); and (b) data processing (e.g., “processing”, “automatically populating”, etc. step(s) as claimed) are well understood, routine and conventional. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant such as (a) data receipt/ transmission (e.g., “receiving”, etc. step(s) as claimed); and (b) data processing (e.g., “processing”, “automatically populating”, 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 2 - 13 and 27 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims). Therefore, independent machine learning system claim 14 is/are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as method claims. The component(s) (e.g., “database”, “processor”) described in independent machine learning system claim 14, add nothing of substance to the underlying abstract idea. At best, the product(s) (machine learning system) recited in the claim(s) are merely providing an environment to implement the abstract idea.
Dependent claims 15 - 26 and 28 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Response to Arguments
Objections
Withdrawn in light of applicant’s arguments and/ or amendments.
101
Applicant's arguments have been fully considered but they are not persuasive.
(1)Applicant argues the claimed invention is not directed to an abstract idea that is not integrated into a practical application.
Applicant appears to suggest 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; and (b) provides a technical solution to a technical problem. The Examiner disagrees.
Applicant’s arguments which appear to suggest 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.
Insurance (e.g., processing claims) 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 (e.g., speed, accuracy). The interpretation of the claimed invention as using of a computer as a tool or applicant arguing benefits of automation itself is consistent with language in the claimed invention (as represented by independent claims 1 and 14) and applicant specification filed 10/28/22.
For example, independent claims 1 and 14 recite, “processing the text description using a first machine learning model executed by the processor and configured to generate an item classifier that classifies the item being described by the text description;” and “processing the text description using a second machine learning model executed by the processor and configured to generate an item identifier that identifies at least one candidate matching item from a database in communication with the processor;”
For example, independent claims 1 and 14 recite, “automatically populating by the processor one or more user interface screens of a user interface of a claims processing software application with the item classifier generated by the first machine learning model and the item identifier generated by the second machine learning model;”
For example, applicant’s specification as filed 10/28/22 recites:
(a) “The system electronically processes an insurance claim by the claims processing software application using the information automatically populated into the user interface, thereby greatly increasing the speed and accuracy by which insurance claims data can be processed by the claims processing software application.” See para. [0006] of applicant’s specification as filed 10/28/22.
(b) “Advantageously, such automatic classification by machine learning greatly increases the speed and accuracy with which data can be obtained and processed by insurance claims processing software applications.” See para. [0015] of applicant’s specification as filed 10/28/22.;
(c) “Advantageously, by automatically populating the user interface screens of the claims processing software, the system greatly increases the speed and accuracy with which the claims processing software can access and process pricing information in connection with claims processing.” See para. [0016] of applicant’s specification as filed 10/28/22.
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).
Applicant’s arguments which appear to suggest the claimed invention applies the judicial exception with, or by use of, a particular machine (e.g., “Independent Claims 1 and 14 each recite two distinct machine learning models that are not generic machine learning components, but rather, are specially trained and configured machine learning models which perform the functions that are recited in the independent claims.” See pg. 9 of applicant’s arguments/ remarks as filed 11/24/25.) suggests the applicant believes the technical aspects of the invention are substantial. There exists alternative perspectives however.
When determining whether a machine recited in a claim provides significantly more, several factors are relevant such as the particularity or generality of the elements of the machine or apparatus; whether the machine or apparatus implements the steps of the method; and whether it’s involvement is extra-solution activity or a field of use.
First, when looking at the particularity or generality of a machine or apparatus the degree to which the machine in the claim can be specifically identified (not any and all machines) is important. In the instant case most or all of the steps or acts are performed by a general purpose computer (i.e., “a processor”, “a database in communication with the processor” and “one or more user interface screens of a user interface of a claims processing software application”) that applies the judicial exception by use of conventional computer functions. This does not qualify as a particular machine. This rationale also applies to any suggestion that there is a particular machine because the machine is programmed (i.e., “customized models that were specifically configured (or, "built" as noted in the specification) to perform the claimed functions.” See pg. 11 of applicant’s arguments/ remarks as filed 11/24/25.).
Second, although the claim invention recites computers or other machinery (i.e., “a processor”, “a database in communication with the processor” and “one or more user interface screens of a user interface of a claims processing software application”), the computers or other machinery are used “merely as a tool to perform an existing process”. This does not amount to significantly more than a judicial exception.
Third, the claimed system does not impose meaningful limitations on the claim. The claimed system is limited to (a) “data gathering” (e.g., “receiving at a processor a text description of an item;”.); (b) “selecting a particular data source or type of data to be manipulated” (e.g., “processing the text description using a first machine learning model executed by the processor and configured to generate an item classifier that classifies the item being described by the text description; processing the text description using a second machine learning model executed by the processor and configured to generate an item identifier that identifies at least one candidate matching item from a database in communication with the processor;” and “electronically processing claims by the claims processing software application using the item classifier and the item identifier automatically populated into the user interface by the processor.”); and (c) “insignificant application” (e.g., “automatically populating by the processor one or more user interface screens of a user interface of a claims processing software application with the item classifier generated by the first machine learning model and the item identifier generated by the second machine learning model;”). Thus, the associated limitations cannot make an otherwise nonstatutory claim statutory.
See also, MPEP §2106.05(b).
Collecting information (e.g., “receiving at a processor a text description of an item;”); analyzing it (e.g., “processing the text description using a first machine learning model executed by the processor and configured to generate an item classifier that classifies the item being described by the text description; processing the text description using a second machine learning model executed by the processor and configured to generate an item identifier that identifies at least one candidate matching item from a database in communication with the processor”; and “electronically processing claims by the claims processing software application using the item classifier and the item identifier automatically populated into the user interface by the processor.”); and displaying certain results of the collection and analysis (e.g., “automatically populating by the processor one or more user interface screens of a user interface of a claims processing software application with the item classifier generated by the first machine learning model and the item identifier generated by the second machine learning model;”) 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 machine learning.
Applicant argues the claimed invention involves specially-configured machine learning models, then suggests along the lines of Aon Re, Inc. v. Zesty.Ai, Inc., the claimed invention is eligible. As noted above, the Examiner disagrees with the “specially-configured machine learning models” line of reasoning.
The facts associated with the claimed invention are more aligned with Example 47, claim 2 from the July 2024 Subject Matter Eligibility Examples which were found to be ineligible.
For example, the claimed invention refers to the steps or acts being performed “at a processor”, “executed by the processor” and “by the processor”. This language is very similar to the “at a computer” and “by the computer” language recited in Example 47, claim 2. In Example 47, claim 2 this language was considered to be recited at a high level of generality i.e., as a generic computer performing generic computer functions.
For example, the claimed invention refers to “using a first machine learning model”; “using a second machine learning model”; and “automatically populating by the processor one or more user interface screens of a user interface of a claims processing software application with the item classifier generated by the first machine learning model and the item identifier generated by the second machine learning model”. This language is very similar to the “using the trained ANN” and “outputting the anomaly data from the trained ANN” recited in Example 47, claim 2. In Example 47, claim 2 this language was determined not to provide any details about how the trained artificial neural network (ANN) operates and merely provided a generic output.
Adding insignificant extra-solution activity to the judicial exception is not indicative of integration into a practical application. See also, MPEP §2106.05 (g).
Mere instructions to implement an abstract idea on a computer, merely using a computer as a tool to perform an abstract idea or an equivalent of an “apply it” rational are not indicative of integration into a practical application. See also, MPEP §2106.05 (f).
Generally linking the use of the judicial exception to a particular technological environment or field of use is not indicative of integration into a practical application. See also, MPEP §2106.05 (h).
Furthermore, the processing of a text description, using machine learning model(s), to generate an item classifier and to generate an item identifier is not an improvement to machine-learning itself, but the application of machine learning to insurance (processing claims).
The court in Recentive Analytics concluded, “patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied are patent ineligible under § 101.” See pg. 18 of Recentive Analytics. See Recentive Analytics, Inc. v. Fox Corp. United States Cour of Appeals for the Federal Circuit. 2023-2437.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure and relates to machine learning, price list determinations and/ or claims processing.
US 20020072944
US 11928737
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARA C HAMILTON whose telephone number is (571)272-1186. The examiner can normally be reached Monday-Thursday, 8-5, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Tran can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SARA CHANDLER HAMILTON
Primary Examiner
Art Unit 3695
/SARA C HAMILTON/ Primary Examiner, Art Unit 3695