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 .
Application Status
This Office Action is in response to remarks received 04/07/2026.
Claims 1-59 and 62 are canceled.
Claims 60 and 63 are amended.
Claims 60, 61, and 63 are pending and have been examined.
This action is final, necessitated by amendment.
Withdrawn Objections
The claim objections of 1, 52, and 60 drawn to a minor issue pertaining to inconsistent terminology (e.g., “…model…” and “…algorithm…”) are withdrawn in view of the amendments received.
Claim Objections
Claim 60 is objected to for a minor semantic issue: ‘incorrect use of colon’ on line 12.
Claim Rejections
Claims 60, 61, and 631 remain rejected under 35 U.S.C. § 101 for being directed to an abstract idea without significantly more.
Acknowledgement of Issues Raised by Applicant
Applicant arguments drawn to the 35 U.S.C. §101 rejections have been fully considered but are not persuasive – see “Response to Arguments” section below.
Response to Arguments
With respect to the 35 U.S.C. § 101 rejections, examiner notes Applicant asserts the claims are patent eligible under 35 U.S.C. §101 and Alice/Mayo analysis per the claims providing additional elements that go beyond the judicial exception and either integrate the judicial exception into a practical application2 or amount to significantly more3, as the claims impose meaningful limits on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception4, provide technological improvements5, and go beyond what is well-understood, routine and conventional6. The Examiner respectfully disagrees and maintains the claims are not patent eligible under 35 U.S.C. §101 (analysis continues below).
Examiner’s Response to Applicant Arguments Drawn Towards Step 2A Prong I
With respect to Applicant’s arguments drawn to rationales that the claims are patent eligible per not reciting an abstract idea under step 2A prong I of Alice/Mayo, the Examiner respectfully fails to find the arguments convincing and disagrees for the following reasons:
The Examiner does not contend that artificial intelligence (AI) algorithms, or it’s corresponding steps of training, and inputting are abstract7. However, the mere inclusion of claim limitations drawn to the additional elements does not necessarily preclude the same aforementioned claims from being considered to recite an abstract idea under step 2A prong I of Alice/Mayo analysis – see Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015): ("An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer"). This fact is evident in light of the sequence of steps performed during the revised Alice/Mayo test – see MPEP § 2106.04(II)(A) showing a visual summary of revised step 2A of the Alice/Mayo test.
The examiner respectfully maintains that the claims do not merely involve an exception, but rather include positive recitations of fundamental economic practices, of which includes steps of “…receiving a first[/second] set of data associated with a first[/second] insurance claim denied by the first[/second] payer…”, “…determining a first percentage likelihood that an appeal of an insurance claim to a first payer will result in a paid insurance claim…”, and “determining a second percentage likelihood that an appeal of an insurance claim to a second payer will result in a paid insurance claim”. See MPEP § 2106.04(a)(1), emphasis added: “Examiners should accordingly be careful to distinguish claims that recite an exception (which require further eligibility analysis) and claims that merely involve an exception (which are eligible and do not require further eligibility analysis”.
The examiner respectfully maintains that the claims positively recite fundamental economic practices of mitigating risk, not just mere involvement of the abstract idea (see above item). The examiner respectfully submits one of ordinary skill in the art appreciates that assessing the likelihood of appeals of claim denials from insurance providers reduces the uncertainty of payment from payers (e.g., insurance providers) to healthcare provider(s) for denied claims (i.e., a component of risk mitigation). The outcome of such an assessment is directly tied to financial outcomes extremely pertinent to those healthcare providers (e.g., outcome of receiving payment from insurance providers for accepting potentially appealed insurance claim or not, i.e., revenue-impacting outcomes). This is further evidenced by the fact that the methods are “…of prioritizing denied insurance claims for appeal to … payer[s]” – prioritizing denied insurance claims based on the likelihood of recouping funds from payers is a method of organizing human activity rooted in mitigating financial risk. Additionally, the ‘percentage likelihood determination’ steps carried out are not peripheral aspects of the claimed methods, they are one of the explicit purposes of the subject matter claimed, as indicated in Applicant’s specification – see ¶7 of Applicant’s published specification, underline emphasis added:
¶7 of Applicant’s published specification: “It would be advantageous for providers to have a predictor of claim success prior to filing a claim,[...] The present disclosure is directed to solving these and other problems”.
Examiner’s above stance is even further supported by the fact that the focus of the claims is not on any particular machine learning algorithm, architecture, or technique (e.g., the additional elements addressed in step 2A Prong II). This is evidenced by ¶¶113-114 of Applicant’s published disclosure8, as it states that the hardware implementing the claimed solution may be implemented on any and all hardware/software, including a pre-programmed general-purpose computer, where there is not a specific implementation of the disclosed machine learning models contemplated by the Applicants; the models are only specific insofar as to (a) their inputs and outputs being those sought by Applicant’s disclosure and (b) being retrained (i.e., the machine learning algorithms amount to a black-box):
¶¶113-114 of Applicant’s published specification, emphasis added: “[0113] It should also be understood that the disclosure herein may be more generally implemented with any type of hardware and/or software, and may be a pre-programmed general purpose computing device. […] [0114] It should also be noted that the disclosure is illustrated and discussed herein as having a plurality of modules which perform particular functions. It should be understood that these modules are merely schematically illustrated based on their function for clarity purposes only, and do not necessary represent specific hardware or software. ….”
Accordingly, the examiner respectfully disagrees with Applicant’s stance that the claims do not recite an abstract idea under Alice/Mayo analysis (Step 2A Prong I of Alice/Mayo Test: Yes, the claims recite an abstract idea of mitigating claims denial risk).
Examiner’s Response to Applicant Arguments Drawn Towards Step 2A Prong II
Examiner respectfully disagrees with Applicant’s arguments drawn to step 2A Prong I9 and respectfully maintains the claims recite an abstract idea for the following reasons:
The various mentions of a “…pipeline…” mentioned by Applicant (a) corresponds to an abstract insurance claim pipeline, and not that of a “technological” pipeline, and (b) is not expressly recited in the claims.
The additional elements “training a…artificial intelligence (AI)…”, “…AI…”, and “…database … stored on a memory device…”, “…database…”, “…on a display device…”, “…further training… AI …”, “…on the display device”, “…further trained … AI …” of claim 60 amount to no more than mere instructions to implement the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05 (f), (h)), even when considering the claim’s additional elements both separately and as an ordered combination. Stating an abstract idea while adding the words "apply it" (or an equivalent) is insufficient to impart patent eligibility under Alice. See Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014): "… Stating an abstract idea "while adding the words ‘apply it’ " is not enough for patent eligibility. … Nor is limiting the use of an abstract idea " ‘to a particular technological environment.’ … Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result”.
The claims merely invoke computers as tools to perform an abstract business process (e.g., the recited steps corresponding to mitigating claims denial risk – see MPEP §2106.05(f)(2)). This stance is supported by (a) ¶7 of Applicant specification stating: “It would be advantageous for providers to have a predictor of claim success prior to filing a claim... The present disclosure is directed to solving these and other problems”, (b) ¶113-114 of Applicant’s published specification stating: “It should also be understood that the disclosure herein may be more generally implemented with any type of hardware and/or software, … It should be understood that these modules are merely schematically illustrated based on their function for clarity purposes only, and do not necessary represent specific hardware or software.”, (c) databases on a memory device storing data is conventional to computer technology, and (d) computer devices utilizing displays to display information is conventional to computer technology10. In short, the computer components are merely used as tools to implement the abstract idea and are not improved. Accordingly, even when considered as an ordered combination, the claims’ additional elements are indistinguishable from mere addition of general-purpose computers added to the abstract idea ‘after the fact’ / ‘post-hoc’, which is insufficient to indicate improvements to computer functionality11, or a particular machine12.
In light of the above rationales, the additional elements amount to mere instructions to implement a judicial exception with a computer implementation wholly generic to computer technology and machine learning technology – this does not lend support to a stance that the claims ‘amount to more than a mere drafting effort designed to monopolize the abstract idea itself’, or ‘apply the judicial exception in some meaningful way’ with ‘meaningful limitations’ (MPEP § 2106.05(e)).
Even when considered as an ordered combination, the use of above additional elements (above) is indistinguishable from mere addition of general-purpose computers added to the abstract idea ‘after the fact’ / ‘post-hoc’, which is insufficient to indicate improvements to computer functionality13, or a particular machine.
Examiner notes the Examples (Including Example 42) are not precedential, and the Examples provided in Office Guidance are hypothetical and intended to be illustrative only. Furthermore, Applicant’s analogy between Example 42 and the instant claims is not persuasive, because the applicant’s claimed organization of data does not address the purported improvement of “automatically generating a message whenever updated information is stored, and transmitting the message to all of the users”, which was the basis of overcoming step 2A Prong II in Example 42, in addition to providing a standardized format – example 42 does not apply.
Examiner respectfully submits Applicant’s recitation of “structuring the first set of raw data into a plurality of data subsets, the plurality of data subsets including a subset of data associated with a provider, a subset of data associated with the first payer, a subset of data associated with a patient, and a subset of data associated with the first insurance claim…” is recitation of the abstract idea, and not an additional element. Furthermore, Examiner respectfully disagrees that it “goes beyond generic data gathering”, as there are insufficient details to indicate that it does go beyond “generic data gathering” as argued by Applicant.
The Examiner respectfully disagrees with Applicant’s contentions that the claims reflect a technological solution to a technological problem for the reasons identified above, and respectfully maintains that the instant claims are not analogous to claims 2 and 3 of example 48, as the instant claims do not recite any details drawn to speech signals or temporal features derived from spectrograms resulting in “…an improvement over existing speech-separation methods by providing a particular speech-separation technique that solves the problem of separating speech from different speech sources belonging to the same class, while not requiring prior knowledge of the number of speakers or speaker-specific training…[or] … providing a particular speech separation technique that solves the problem of separating speech from different speech sources belonging to the same class, and also performing well with inter-speaker variability within the same audio class for transcriptions” – claims 2 and 3 of example 48 do not apply to the instant claims.
Applicant’s remarks drawn to the Desjardins decision and corresponding USPTO 12/05/2025 memorandum is not persuasive, as neither the claims nor the Alice/Mayo analyses of Desjardins are analogous to the instant claims for at least the following reasons:
The previous rejection for the instant claims did not assert mathematical concepts as an abstract idea under step 2A Prong I, unlike the Desjardins case. Furthermore, Desjardins does not disclose any commercial interactions, unlike the instant case. I.e., Desjardins does not apply, even at step 2A Prong I of Alice/Mayo analysis. The only notable overlap between Desjardins and the instant claims applicable with respect to step 2A Prong I of Alice/Mayo analysis is that both sets of claims recite an abstract idea.
The eligibility rationale relied upon in Desjardins included a determination that the claims provided a technological solution to a technological problem at step 2A Prong II , where the technological problem of “catastrophic forgetting” in continual learning systems was directly addressed ; the claims of Desjardins reflected a particular training strategy that allows the model to preserve performance on earlier tasks learned, even as it learns new ones . Conversely, the instant claims do not indicate an improvement to any technology or technical field, as previously maintained and explained further below in the 101 rejections – the examiner respectfully maintains the instant claims provide a technical solution to an abstract business problem – see MPEP § 2106.05(a): “[I]t is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology…… Merely adding generic computer components to perform the method is not sufficient…”. Unlike Desjardins, Examiner respectfully fails to see as to how the instant claim limitations provide any particular technological solution to a technological problem, as the instant claims do not reflect any technological solution addressing technological problems concerned with the functioning of a computer or to any other technology or technical field – what is addressed is how a business method of prioritizing denied health insurance claims; see preamble of claim 60). I.e., what is improved is the business method of prioritizing denied insurance claims by merely utilizing computer components generic to computer technology; this is not a technological solution to a technological problem, unlike the technological problem of catastrophic forgetting that the claims of Desjardins addressed and solved. Merely applying generic computer elements in a conventional manner to an abstract idea is not indicative of patent eligibility under Alice/Mayo analysis, even when the abstract process obtains tangible benefits which are generally afforded by merely using the claimed (generic) computer components at a high degree of generality. See the following:
MPEP § 2106.05(b): “Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015) (noting that Alappat’s rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim was superseded by the Supreme Court’s Bilski and Alice Corp. decisions) [...] Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection”.
Ericsson Inc. v. TCL Commce’n Tech. Holdings Ltd., 955 F.3d 1317, 1330 (Fed. Cir. 2020) (“Even assuming this collection of elements led to a more efficient way of controlling resource access, ‘our precedent is clear that merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.’’) (citation omitted); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (same)”.
Customedia Techs. V. Dish Network Corp., 951 F.3d 1359, (Fed. Cir. 2020), emphasis added: “We have held that ‘claiming the improved speed or efficiency inherent with applying the abstract idea on a computer’ was insufficient to render the claims patent eligible as an improvement to computer functionality.”;
Accordingly, for the reasons provided above, as well as in the 101 rejections further below, the Examiner respectfully maintains that the claims do not integrate the judicial exception into a practical application (Step 2A Prong II of Alice/Mayo Test: NO, the additional elements do not integrate the judicial exception into a practical application), as the focus of the claims is not an improvement in computers as tools, but rather on an abstract idea of mitigating claims denial risk that uses computers as tools. Considered both separately and as an ordered combination, the additional elements of the claims do no more than represent computers performing functions that correspond to (,i.e., implement,) the acts of the abstract mitigating claims denial risk within a particular technological environment, and do not provide details such that one of ordinary skill in the art would recognize the claims as reflecting an improvement to the functioning of a computer or any other technology or technical field.
Accordingly, in view of the analysis performed with respect to steps 2A Prong I and 2A Prong II, the examiner respectfully maintains the claims are directed to an abstract idea under step 2A (Step 2A: The claims are directed to an abstract idea of mitigating claims denial risk).
Examiner’s Response to Applicant Arguments Drawn Towards Step 2B
Examiner respectfully disagrees with Applicant’s arguments drawn to step 2B and respectfully maintains the claims do not provide an inventive concept for the following reasons:
The examiner respectfully disagrees with Applicant’s stance that the Office Action only considers the isolated functionalities, not accounting for the particular combination of steps recited, as Examiner still maintains the ordered combination still amounts to post-hoc implementation of the abstract idea recited.
The same reasons identified in the examiner’s step 2A Prong II analysis and subsequent supporting rationales (in the section immediately above) are generally applicable to step 2B of Alice/Mayo analysis and still indicate the additional elements as being merely applied and generally limiting the use of the abstract idea to a particular technological environment, absent of any particular technological solution to a technological problem. See MPEP § 2106.05: “Although the conclusion of whether a claim is eligible at Step 2B requires that all relevant considerations be evaluated, most of these considerations were already evaluated in Step 2A Prong Two.”
The well-understood, routine, and conventional rationale pertains to involvement of the additional elements / components outside the abstract idea – not the abstract idea itself. see TLI Communications LLC v. AV Automotive L.L.C. 823 F.3d 607, 613, 118 USPQ2d 1744, 1748, underline and bold emphasis added: “It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. Rather, the components must involve more than performance of “wellunderstood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294)”. I.e., The details of the abstract idea indicated by Applicant in remarks are an insufficient basis for patent eligibility under the “well-understood, routine, and conventional” rationale – see also the following case law and MPEP cites:
Synopsys, 839 F.3d at 1151:
“a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty” (emphasis omitted).
BSG Tech LLC vs. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018):
“It has been clear since Alice that a Claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept”.
MPEP § 2106.05:
“…An inventive concept "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself." … Instead, an "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp., 573 U.S. at 27-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966).”.
SAP America, Inc. v. Investpic, LLC, No. 17-2081 (Fed. Cir. 2018):
“No matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm. An advance of that nature [i.e., where it lies entirely within the realm of abstract ideas,] is ineligible for patenting…Under the principles developed in interpreting §101, patent law does not protect such claims, without more, no matter how groundbreaking the advance.”
Accordingly, when considered both separately and as an ordered combination, none of the elements of the claims add significantly more to the abstract idea itself (i.e., an inventive concept), as the manner by which the claims’ additional elements are used is indistinguishable from mere addition of general-purpose computers added post-hoc to the abstract idea recited. The claims merely limit the use of the abstract idea to a particular technological environment by merely invoking computers as tools, and do not provide any particular improvement to the functioning of a computer, or to any other technology or technical field14 (MPEP §§ 2106.05 (a), (f), (h), 2106.04(d)(1)). Merely employing computers as tools to automate and/or implement the abstract idea cannot provide significantly more than the judicial exception itself, as indicated by BSG Tech LLC vs. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018); (Step 2B: No, the claims do not amount to significantly more than the judicial exception).
Hence, for the reasons listed above, as well as the reasons provided in 101 rejections further below, the Examiner respectfully maintains the claims do not provide an inventive concept15 under step 2B of Alice/Mayo analysis and maintains the 35 U.S.C. §101 rejections. The claims are not patent eligible under 35 U.S.C. §101, when analyzed under the Alice/Mayo test.
Claim Objections
With respect to independent claim 60, it is objected to for a minor semantic issue: incorrect use of colon. More specifically, the claims recite: “…structuring the first set of raw data into a plurality of data subsets, the plurality of data subsets including a subset of data associated with a provider, a subset of data associated with the first payer, a subset of data associated with a patient, and a subset of data associated with the first insurance claim:”16. The claim does not provide any subsequent listing, leaving examiner to believe a semicolon (;) was meant. 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 60, 61, and 63 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Based upon consideration of all relevant factors with respect to the claims as a whole, the claims are determined to be directed to an abstract idea without significantly more. The rationale for the aforementioned determination of patent ineligibility under 35 USC §101 is explained further below:
The relevant test to determine patent eligibility under 35 U.S.C. §101 is the Alice/Mayo test. The following analysis provided in this section results from the instant application’s claims being examined within the scope of the Alice/Mayo test framework.
With respect Step 1 of Alice/Mayo analysis, the claims are directed to a method, which is a statutory category of invention (Step 1 of Alice/Mayo Test: YES).
When analyzed under step 1 of the Alice/Mayo test17, claims 60, 61, and 63 have been determined to be directed to an abstract idea of mitigating claims denial risk. The rationales for the aforementioned determination are explained further below.
With respect Step 2A Prong I of Alice/Mayo analysis, independent claim 60 recites a method of organizing human activity because the claim recites:
“60. A method of prioritizing denied insurance claims for appeal of a payer, the method comprising:
training a first … model to determine a percentage likelihood that an appeal of an insurance claim to the first payer will result in a paid insurance claim, wherein the first … model is associated with the first payer;
receiving a first set of raw data associated with a first insurance claim denied by the first payer;
structuring the first set of raw data into a plurality of data subsets, the plurality of data subsets including a subset of data associated with a provider, a subset of data associated with the first payer, a subset of data associated with a patient, and a subset of data associated with the first insurance claim[;]
inputting at least a portion of the first set of raw data into the first … model;
using the first … model, determining a first percentage likelihood that an appeal of the first insurance claim to the first payer will result in a first paid claim;
inputting the first percentage likelihood and one or more of the plurality of data subsets into a … [datastore] … as an appeal candidate entry;
ordering appeal candidate entries in the … [datastore] such that appeal candidate entries determined to have a high percentage likelihood of resulting in a paid claim on appeal are prioritized;
displaying the ordered appeal candidate entries …;
receiving, from the first payer, first payer post appeal decision data;
further …[updating,] based on the first payer post appeal decision data, the first … model; and
updating the ordered appeal candidate entries displayed … based on the further … [updated] first Al model.”
Under broadest reasonable interpretation, these are recitations of fundamental economic practices of mitigating claims denial risk, including steps of (A) determining a percent likelihood that an appeal of a denied insurance claim to a first / second payer will result in a paid insurance claim based on relevant portions of sets of data, and (B) receiving post appeal data for making subsequent percent likelihood determinations that an appeal of a denied insurance claim to a first / second payer will result in a paid insurance claim (See MPEP §2106.04(a)(2)(II)). Thus, the independent claims recite an abstract idea (Step 2A Prong I of Alice/Mayo Test: Yes, the claims recite an abstract idea).
This judicial exception recited in independent claim 60 is not integrated into a practical application because, when analyzed under prong II of revised step 2A of the Alice/Mayo test18:
The additional elements “training a…artificial intelligence (AI)…”, “…AI…”, and “…database … stored on a memory device…”, “…database…”, “…on a display device…”, “…further training… AI …”, “…on the display device”, “…further trained … AI …” of claim 60 amount to no more than mere instructions to implement the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05 (f), (h)), even when considering the claim’s additional elements both separately and as an ordered combination. Stating an abstract idea while adding the words "apply it" (or an equivalent) is insufficient to impart patent eligibility under Alice. See Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014): "… Stating an abstract idea "while adding the words ‘apply it’ " is not enough for patent eligibility. … Nor is limiting the use of an abstract idea " ‘to a particular technological environment.’ … Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result”.
The claims merely invoke computers as tools to perform an abstract business process (e.g., the recited steps corresponding to mitigating claims denial risk – see MPEP §2106.05(f)(2)). This stance is supported by (a) ¶7 of Applicant specification stating: “It would be advantageous for providers to have a predictor of claim success prior to filing a claim... The present disclosure is directed to solving these and other problems”, (b) ¶113-114 of Applicant’s published specification stating: “It should also be understood that the disclosure herein may be more generally implemented with any type of hardware and/or software, … It should be understood that these modules are merely schematically illustrated based on their function for clarity purposes only, and do not necessary represent specific hardware or software.”, (c) databases on a memory device storing data is conventional to computer technology, and (d) computer devices utilizing displays to display information is conventional to computer technology19. In short, the computer components are merely used as tools to implement the abstract idea and are not improved. Accordingly, even when considered as an ordered combination, the claims’ additional elements are indistinguishable from mere addition of general-purpose computers added to the abstract idea ‘after the fact’ / ‘post-hoc’, which is insufficient to indicate improvements to computer functionality20, or a particular machine21.
In light of the above rationales provided for step 2A Prong II analysis, the Examiner respectfully submits the focus of the claims is not on an improvement in computers as tools, but rather on an abstract idea that uses computers as tools. Considered both separately and as an ordered combination, the additional elements of the independent claims do not integrate the abstract idea into a practical application, as they do no more than represent computers performing functions that correspond to (,i.e., implement,) the acts of the abstract mitigating claims denial risk within a particular technological environment, and do not provide details such that one of ordinary skill in the art would recognize the claims as reflecting an improvement to the functioning of a computer or any other technology or technical field. (Step 2A Prong II of Alice/Mayo Test: NO, the additional elements do not integrate the judicial exception into a practical application). Accordingly, claim 60 is determined to be directed to an abstract idea.
To further support the stance that the additional elements (i.e., machine learning algorithms) are merely applied, Examiner notes the following:
The following claim limitations:
training a first[/second] machine learning algorithm to determine a percent likelihood
inputting at least a portion of the first[/second] set of data into the first/second machine learning algorithm;
using the first[/second] machine learning algorithm, determining a first[/second] percentage likelihood, (i.e., determining an output responsive to inputs)
further training, …, the first/second AI model.
are merely describing the generic machine learning algorithm being used in a manner customary to the technological environment of machine learning, and merely attempt to limit the use of the abstract idea to a particular technological environment (computer-implemented machine learning), which is insufficient to impart patentability under Alice - see Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014): "Neither stating an abstract idea "while adding the words 'apply it,' [...], nor limiting the use of an abstract idea "'to a particular technological environment'", [...] is enough for patent eligibility. Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result."). See also Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015) ("An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer"). Examiner respectfully submits that the claimed machine learning algorithm functionalities of 1) training, 2) receiving inputted data sets, 3), determining a percent likelihood as output, responsive to input received, and 4) retraining based on new data, are functionalities indistinguishable from typical functionality of generic, commercially available-off-the-shelf (COTS) machine learning algorithms being implemented at a high level of generality.
To further support this stance, Examiner notes the following indicating or otherwise suggesting the aforementioned features of the machine learning algorithms as well-understood, routine and conventional activity in the field of machine learning22:
¶37 of Applicant’s Specification: Generally, machine learning algorithms require training data to identify the features of interest that they are designed to detect and predict an outcome. […]
US 20010011259 A1 (Howard), disclosing it is known that neural network classifiers (e.g., machine learning algorithm) can provide outputs (i.e., classifications) as probabilities (¶92).
US 20080005108 A1 (Ozzie), disclosing machine learning algorithms have inputs, and produce outputs, of which the outputs are typically a probability (¶49).
US 20100082506 A (Avinash), disclosing or otherwise suggesting machine learning typically involves re-training (¶56).
Applicant’s disclosure specifies that the hardware implementing the claimed solution may be a pre-programmed general-purpose computer, and that there is no specific software implementing the claimed method, beyond the result it logically provides (see ¶¶113, 114 of published specification). Examiner respectfully takes the stance this is indicative of the claims using the machine learning algorithms merely as a tool (MPEP §2105.05(f)), rather than improving computer capabilities in a technological environment (MPEP §2106.05(a)), or claiming a particular machine (MPEP §2106.05(b)3). See MPEP §2106.05(f)(1): When determining whether a claim simply recites a judicial exception with the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners may consider the following: (1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished.
As noted in MPEP § 2106.05(a): “Examples that the courts have indicated may not be sufficient to show an improvement to technology include: …iii. Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48;”
As evidenced by the above, the additional elements generally corresponding to machine learning, including the limitations drawn to training and retraining, as well as the details drawn to merely displaying and storing information via display devices and databases (respectively) are not indicative of improvements to the functioning of a computer or to any other technology or technical field under either step 2A Prong II or step 2B, and instead are indicative of the machine learning being merely applied (MPEP § 2106.05(f)) and merely limiting the use of the abstract mitigating claims denial risk concept within a particular technological environment (MPEP § 2106.05(h)). Even though claims involve machine learning display devices, and databases stored on computer memory, nothing in the claims indicate specific steps undertaken computer components being used at a high degree of generality, excepting the abstract idea they are merely used as a tool for. Accordingly, the claimed computer implementation itself is wholly generic, when considered in light of the technological environment of computers and the technical field of machine learning.
When analyzed under step 2B23, claims 1, 52, and 60 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Claims 1, 52, and 60, each when viewed as a whole, do not include additional elements amounting to significantly more, as their additional elements, each viewed both individually and as an ordered combination, amount to no more than mere instructions to implement the abstract steps corresponding to the mitigating claims denial risk concept within a particular technological environment – see MPEP §§ 2106.05 (f), (h) and Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014). Accordingly, when considered both separately and as an ordered combination, none of the elements of the independent claims add significantly more to the abstract idea itself (i.e., an inventive concept), as merely employing computers as tools to automate and/or implement the abstract idea cannot provide significantly more than the judicial exception itself – see BSG Tech LLC vs. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018): “It has been clear since Alice that a Claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept”.
With respect to the dependent claims, they have each been given the full Alice/Mayo analysis, including analyzing the additional elements both individually and as an ordered combination (if any). The dependent claims are also held patent ineligible under 35 U.S.C. § 101 because of the same reasoning as above, and because the claim limitations of the dependent claims fail to establish that the claims are integrated into a practical application or amount to significantly more. The rationales for the aforementioned determinations are explained further below.
With respect to dependent claims 61 and 63, they recite further details of the abstract idea, except for the limitations drawn to AI (e.g, “…AI…”, “…further training…the first AI model…”, “…training (data)…”). The aforementioned additional elements do no more than represent the use of computers as tools to perform the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Accordingly, when considered as a whole, these claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claims 61 and 63 are also not patent eligible.
No Prior Art Rejection
The closest prior art of record is the same as the prior art referenced in the 01/02/2025 Final Rejection (i.e., Rao, Ligon, Chintamaneni, and Sohr).
Conclusion
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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/M.A.M./Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
1 I.e., the subject matter claimed.
2 See pages 5-9 of Remarks.
3 See pages 9-10 of Remarks.
4 See pages 5 of Remarks.
5 See pages 7-8 of Remarks.
6 See pages 9-10 of Remarks.
7 See the 101 rejections below.
8 United States Patent Application Publication No. US-2023/0084146-A1.
9 See Pages 5-9 of Remarks.
10 For items (c) and (d), see MPEP § 2106.05(a): “Examples that the courts have indicated may not be sufficient to show an improvement to technology include:…iii. Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48;”
11 See MPEP §§ 2106.05(f)(2) & 2106.05(a) I.
12 See MPEP §2106.05(b).
13 See MPEP §§ 2106.05(f)(2) & 2106.05(a) I.
14 I.e., a technological solution to a technological problem.
15 I.e., “significantly more” than the judicial exception.
16 See line 12 of claim 1.
17 See MPEP §§ 2106.04 I, II, (d) I.
19 For items (c) and (d), see MPEP § 2106.05(a): “Examples that the courts have indicated may not be sufficient to show an improvement to technology include:…iii. Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48;”
20 See MPEP §§ 2106.05(f)(2) & 2106.05(a) I.
21 See MPEP §2106.05(b).
22 See MPEP §2106.05(f): “For example, because this [Mere Instructions To Apply An Exception] consideration often overlaps with the improvement consideration (see MPEP § 2106.05(a)), the particular machine and particular transformation considerations (see MPEP § 2106.05(b) and (c), respectively), and the well-understood, routine, conventional consideration (see MPEP § 2106.05(d)), evaluation of those other considerations may assist examiners in making a determination of whether an element (or combination of elements) is more than mere instructions to apply an exception”.
23 See MPEP § 2106.05.
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