Detailed Action
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant's arguments filed on July 8, 2026, with respect to the rejection of claims 1-20 under 35 U.S.C. §101 as the claimed invention being directed to a judicial exception (i.e., abstract idea) without significantly more have been fully considered but they are not persuasive for the reasons noted below. The Examiner acknowledges the cancellation of claim 19, and the addition of claim 21. Claims 1-18, 20 and 21 are pending in the application. No claims are allowed.
IDS
The information disclosure statements (IDS) submitted on April 28, 2026, and August 14, 2026, are being considered by the Examiner.
Explanation of Rejection
Claim rejection – 35 U.S.C. §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 therefore, subject to the conditions and requirements of this title.
In reference to clams 1-18, 20 and 21: the claimed invention is directed to a judicial exception (i.e., Abstract idea) without significantly more.
The requirement for subject matter eligibility test for products and processes requires first, the claimed invention must be to one of the four statutory categories. 35 U.S.C. §101 defines the four categories of invention that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter. The latter three categories define "things" or "products" while the first category defines "actions" (i.e., inventions that consist of a series of steps or acts to be performed).
Second, the claimed invention also must qualify as patent-eligible subject matter, i.e., the claim must not be directed to a judicial exception unless the claim includes additional limitations amounting to significantly more than the exception. The judicial exceptions (also called "judicially recognized exceptions" or simply "exceptions") are subject matter that the courts have found to be outside of, or exceptions to, the four statutory categories of invention, and are limited to abstract ideas, laws of nature and natural phenomena (including products of nature).
In the first step, it is to be determined whether the patent claim under examination is directed to an abstract idea. If so, in the second step of analysis, it is to be determined whether the patent adds to the idea “something more” or "significantly more” that embodies an “inventive concept.”
In the instant case, claim 1 is representative and it is reproduced here with the limitations that are part of the abstract idea in bold:
A system, comprising:
at least processor; and
at least one memory that stores executable instructions that, when executed by at least one processor, facilitate performance of operations, comprising:
determining a first output from an explainable artificial intelligence risk model based on a first input, wherein the first input indicates a first computing configuration, and wherein the first output indicates a first predicted maintenance cost of the first computing configuration during a time period;
determining a second output from the explainable artificial intelligence risk model based on a second input, wherein the second input indicates a second computing configuration that differs from the first computing configuration, and wherein the second output indicates a second predicted maintenance cost of the second computing configuration during the time; and
in response to determining that the second predicted maintenance cost is less than the first predicted maintenance cost, saving an indication of a difference between the second predicted maintenance cost and the first predicted maintenance cost, sending offering data to a user account that is associated with utilizing the first computing configuration, wherein the offering data is indicative of an offer to switch from the first computing configuration to the second computing configuration; and
based on the determining of the first output from the explainable artificial intelligence risk model, based on determining of the second output from the explainable artificial intelligence risk model, and based on receiving acceptance data that is associated with the user account and that is indicative of acceptance of the offer, switching from the first computing configuration to the second computing configuration with respect to the user account, and
reducing a charge to the user account from the first amount that is associated with the user account having access to the first computing configuration a second amount that is associated with the user account having access to the second computing configuration based on the switching from the first computing configuration to the second computing configuration; wherein the explainable artificial intelligence risk model comprises a tree-based model with divergence that implements a splitting criterion with respect to a divergence of two resulting risk distributions of subsets of a risk distribution to produce the second output.
Step 2A:
Prong I: The claim recites the steps of “determining a first output from an explainable artificial intelligence risk model based on a first input, wherein the first input indicates a first computing configuration, and wherein the first output indicates a first predicted maintenance cost of the first computing configuration during a time period”, “determining a second output from the explainable artificial intelligence risk model based on a second input, wherein the second input indicates a second computing configuration that differs from the first computing configuration, and wherein the second output indicates a second predicted maintenance cost of the second computing configuration during the time period”, “determining that the second predicted maintenance cost is less than the first predicted maintenance cost, saving an indication of a difference between the second predicted maintenance cost and the first predicted maintenance cost”, “sending offering data ..associated with utilizing the first computing configuration” , “based on receiving acceptance data …switching from the first computing configuration to the second computing configuration with respect to the user account, and reducing a charge to the user account from the first amount that is associated with the user account having access to the first computing configuration a second amount that is associated with the user account having access to the second computing configuration based on the switching from the first computing configuration to the second computing configuration”. Further, the concept of “tree-based with divergence” is an abstract idea used across several fields, most notably in computer science, data structures and mathematical modeling. These limitations could be carried out as a purely mental process (at least in some relatively simple situations) and/or they could amount to a mathematical calculation (for example, determining a difference between two values is just subtraction). Therefore, the recited method falls in the abstract idea grouping of mental processes and/or mathematical concepts at Prong 1 of the §101 analysis.
Prong II:
This abstract idea is not integrated into a practical application at Prong 2 of the §101 analysis because the claim does not recite sufficient additional elements to integrate the abstract idea into a practical application. The claim recites the system comprising the additional element such " an explainable artificial intelligence risk model” and “a processor, and a memory that stores executable instructions”. However, these are generic components which are not considered to be extra-solution activity.
In fact, the processor, the memory and the artificial intelligence risk models are merely a generic computer processing component that is invoked as a tool to perform the abstract idea, which does not cause the claim as a whole to integrate the abstract idea into a particular practical application or provide significantly more than the recited abstract idea (see MPEP 2106.05(b)).
This limitation merely establishes a field-of-use and broadly recites the “artificial intelligence risk model”, “the processor” and “the memory” are part of the object on which the system operates (that is, the object that simply provides the difference of two values based on predicted values) rather than being a particular machine which implements the system (see MPEP 2106.05(b)).
Further, the claim recites “in response to determining that the second predicted maintenance cost is less than the first predicted maintenance cost, saving an indication of a difference between the second predicted maintenance cost and the first predicted maintenance cost”. However, saving a value is merely insignificant extra-solution activity, just as the steps of outputting or displaying (see MPEP 2106.05(g)). The additional limitation as amended also include “sending offering data to a user account that is associated with utilizing the first computing configuration, wherein the offering data is indicative of an offer to switch from the first computing configuration to the second computing configuration; and based on receiving acceptance data that is associated with the user account and that is indicative of acceptance of the offer, switching from the first computing configuration to the second computing configuration with respect to the user account.
However, “sending offering” and “based on receiving the acceptance data” then “switching from the first computing configuration to the second computing configuration with respect to the user account” are a human thought process, such as preference and the act of choosing to pick one configuration over the other are considered incentives driven with choices by the end user; therefore, it reads on a human thought process and human activity. Further, the tools to carry out these thought processes and/or human activity, such as the computer and the associated acts of sending and receiving are generic and insignificant extra-solution activity.
Finally, the claim is even further amendment to include “reducing a charge to the user account from the first amount that is associated with the user account having access to the first computing configuration a second amount that is associated with the user account having access to the second computing configuration based on the switching from the first computing configuration to the second computing configuration”; however, these activities are a typical human activity and conventional.
The claim does not recite applying the abstract idea with, or by use of, any machine, nor does the claim affect a real-world transformation or reduction of a particular article to a different state or thing. The claim amounts to manipulating data: that the second predicted maintenance cost is less than the first predicted maintenance cost, saving an indication of a difference between the second predicted maintenance cost and the first predicted maintenance cost. The claim does not recite any real-world actions that are taken because of the notification that is “saving the value”. The claim establishes a “an artificial intelligence risk model” as the general field-of-use but does not recite a particular practical application being carried out within that field-of-use. Therefore, the claimed invention does not appear to be limited to the use of the mental process or math in a particular practical application, but instead the claim appears to monopolize the mental process or math itself, in any practical application where it might conceivably be used.
Step 2B:
Finally, at Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the abstract idea for the same reasons as discussed above about Prong 2. Claim 1 is rejected as ineligible under 35 USC §101.
Claims 8 and 16 are analogous to claim 1, except that they are directed to a “method” and “a non-transitory computer-readable medium”.
Dependent claim 2: the instant claim is directed to the association of the respective risk values which merely adds to the insignificant extra-solution activity being recited which is a mental process.
Dependent claim 3: the instant claim is directed to informing or sending a recommendation, which merely adds insignificant extra-solution activity being recited and considered outputting or displaying (see MPEP 2106.05(g)).
Dependent claims 4-7: the instant claims are directed to explaining the attributes of the risk management model output and merely adds to the insignificant extra-solution activity being recited.
Dependent claims 9-14: the instant claims are directed to characterizing the risk model and evaluation of values that are obtained though the risk model which merely adds insignificant extra-solution activity being recited and are considered a human thought or mental process.
Dependent claims 16-18, 20 and 21: the instant claims are directed to the analysis of the risk variables or attributes for the purposes of commercial appeal and adds insignificant extra-solution activity being recited and are considered a human thought or mental process.
Response to Argument
Applicant's arguments filed on July 8, 2026, with respect to the rejection of claims 1-20 under 35 U.S.C. §101 as the claimed invention being directed to a judicial exception (i.e., abstract idea) without significantly more have been fully considered but they are not persuasive for the reasons noted above and further explained below. The Examiner acknowledges the cancellation of claim 19 and the addition of claim 21.
Applicant amended claims 1, 8 and 16 to include the limitation ““…configuration, wherein the explainable artificial intelligence risk model comprises a tree-based model with divergence that implements a splitting criterion with respect to a divergence of two resulting risk distributions of subsets of a risk distribution to produce the second output.
However, “the explainable artificial intelligence risk models” within the context of the AI risk model having “a tree-based model with divergence that implements a splitting criterion …” is abstract idea because the concept of “tree-based with divergence” is abstract idea used across several fields, most notably in computer science, data structure, and mathematical modeling. The claim is not even attempting the modification of AI; it is the generic AI being used to rectify what would have been routine and conventional action taken by human activity. The last added limitation is confirming that it shows a typical human activity of reducing the charge from one amount to a different amount for cost saving purposes. Further, the tools to carry out these thought processes and/or human activity, such as the computer and the associated acts of sending and receiving are generic and insignificant extra-solution activity.
Conclusion
THIS ACTION IS MADE FINAL. Applicants are reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for replying 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 case, however, will the statutory period for replying expire later than SIX MONTHS from the mailing date of this final action.
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/ELIAS DESTA/
Primary Examiner, Art Unit 2857
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