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 .
DETAILED ACTION
Status of the Claims
The following office action in response to the amendments filed on 3/12/2026.
Claims 1 and 14 are currently amended.
Claims 11-13 were previously cancelled.
Therefore, claims 1-10 and 14-23 are pending and addressed below.
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 1-10 and 14-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1-10 and 14-23 are directed to an apparatus, a storage media, thus a statutory category of invention (Step 1: YES).
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more. The claim recites the limitations of “…receiving first claim data; in response to receiving the first claim data: identifying, based on the first claim data, a first record in the first data source; generating a new record, that represents a claim, in the second data source that is different than the first data source, wherein the new record includes an identifier of the first record in the first data source; including a first portion of the first claim data in the new record; after including the first portion in the new record, receiving second claim data that comprises one or more documents; in response to receiving the second claim data, updating the new record with the one or more documents; identifying a third record in the third data source that is different than the first and second data sources; determining, based on the third record and the new record, whether any more documents are required for the new record;
after determining that no more documents are required for the new record, determining whether to fulfill the claim”. These recited limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of fundamental economic principles or practices (including insurance, i.e. processing and fulfilling the claim data) but for the recitation of generic computer components. If a claim limitation, under its broadest reasonable interpretation, covers concepts of fundamental economic principles or practices but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The additional limitations (besides those that recite the abstract idea) include the presence in the claimed apparatus of one or more processors and a claims management system that are all recited at a high level of generality to perform the functions of “…coupling … to the data sources; receiving …first claim data; identifying …a first record in the first data source; generating … a new record that represents a claim; receiving …second claim data; updating …the new record with the one or more documents; identifying… a third record…;
determining…. whether any more documents are required for the new record; and determining …whether to fulfill the claim”, such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a particular application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception or amount to an inventive concept. As discussed above with respect to integration of the abstract idea into a practical application, the additional limitations of the one or more hardware processors and the claims management system that are all recited at a high level of generality to perform the functions of “…coupling … to the data sources; receiving …first claim data; identifying …a first record in the first data source; generating … a new record that represents a claim; receiving …second claim data; updating …the new record with the one or more documents; identifying… a third record…; determining…. whether any more documents are required for the new record; and determining …whether to fulfill the claim”, above amounts to mere instructions to apply the exception using the generic computer component. When viewing the additional elements either individually or as an ordered combination, the claim as a whole does not amount to significantly more than the judicial exception because the claim does not include improvements to another technology or technical field, improvements to the function of the computer itself, and does not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. In effect, the additional limitations add the words “apply it” (or an equivalent) to the judicial exception, or mere instructions to implement an abstract idea on a computer. Mere instructions to apply an exception using the generic computer component cannot provide an inventive concept. Thus, the claim is not patent eligible.
Independent claim 14 recite limitations substantially similar to claim 1. Thus, the claims are rejected based on the same reasoning as above in claim 1. Thus, the claims are not eligible.
Dependent claims 2-12 and 15-23 are dependent on claims 1 and 14. Therefore, claims 2-12 and 15-23 are directed to the same abstract idea of claims 1 and 14. Claims 2-12 and 15-23 further recite the limitations that merely refer back to further details of the abstract idea. Thus, claims 2-12 and 15-23 further recite the limitations that do not integrate the abstract idea into a particular application because it does not impose any meaningful limits on practicing the abstract idea. Claims 2-12 and 15-23 recite the limitations do not amount to "significantly more" than the abstract idea because the claims do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, the dependent claims 2-12 and 15-23 are not patent-eligible.
Response to Arguments
Previous Claim objection
The previous claim objection of claim 10 has been withdrawn in the light of Applicant’s amendments.
Previous Claim rejections – 35 USC § 101
The updated rejections of claims 1-10 and 14-23 in view of Alice have been provided in the light of Applicant’s amendments.
Applicant's arguments filed 3/12/2026 have been fully considered but they are not persuasive.
Argument 1: Applicant argued that: “…In particular, the claims are directed to a claims management system that orchestrates structured, cross-data source record creation, linkage, and requirements resolution across heterogeneous data sources, which integrates any alleged judicial exception into a practical application at Step 2A, Prong Two. The rejection relies on an impermissible over-generalization of the claims to "processing and fulfilling claim data," and overlooks the claim-recited technical architecture, ordered operations, and resulting improvement to computer functionality disclosed in the specification and reflected in the claims as amended…the claims present the kind of technological improvement that the USPTO identifies as eligible at Step 2A, Prong Two…” (Please see the remarks on pages 8-11).
Answer 1: The Examiner respectfully disagrees.
As the Office has explained above that the claim recites the limitations of “…receiving first claim data; in response to receiving the first claim data: identifying, based on the first claim data, a first record in the first data source; generating a new record, that represents a claim, in the second data source that is different than the first data source, wherein the new record includes an identifier of the first record in the first data source; including a first portion of the first claim data in the new record; after including the first portion in the new record, receiving second claim data that comprises one or more documents; in response to receiving the second claim data, updating the new record with the one or more documents; identifying a third record in the third data source that is different than the first and second data sources; determining, based on the third record and the new record, whether any more documents are required for the new record; after determining that no more documents are required for the new record, determining whether to fulfill the claim”. These recited limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of fundamental economic principles or practices (including insurance, i.e. processing and fulfilling the claim data) but for the recitation of generic computer components. If a claim limitation, under its broadest reasonable interpretation, covers concepts of fundamental economic principles or practices but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The additional limitations (besides those that recite the abstract idea) include the presence in the claimed apparatus of one or more processors and a claims management system that are all recited at a high level of generality to perform the functions of “…coupling … to the data sources; receiving …first claim data; identifying …a first record in the first data source; generating … a new record that represents a claim; receiving …second claim data; updating …the new record with the one or more documents; identifying… a third record…; determining…. whether any more documents are required for the new record; and determining …whether to fulfill the claim”, such that it amounts no more than mere instructions to apply the exception using a generic computer component. Thus, the claim performs the functions of nothing more than “coupling/connecting to the data source, receiving data, identifying the records in the data sources, generating and updating the new record, and determining whether to fullfill the claim”. Accordingly, these additional elements do not integrate the abstract idea into a particular application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. Thus, the claims do not present the kind of technological improvement that identifies as eligible at Step 2A, Prong Two…” (Please see the remarks on pages 8-11).
In addition, the MPEP 2106.04(a) states that: “…Examiners should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above. If the identified limitation(s) falls within at least one of the groupings of abstract ideas, it is reasonable to conclude that the claim recites an abstract idea in Step 2A Prong One”. Thus, according to the MPEP 2106.04(a), Examiner (1) identifying the specific limitation(s) (…receiving first claim data; in response to receiving the first claim data: identifying, based on the first claim data, a first record in the first data source; generating a new record, that represents a claim, in the second data source that is different than the first data source, wherein the new record includes an identifier of the first record in the first data source; including a first portion of the first claim data in the new record; after including the first portion in the new record, receiving second claim data that comprises one or more documents; in response to receiving the second claim data, updating the new record with the one or more documents; identifying a third record in the third data source that is different than the first and second data sources; determining, based on the third record and the new record, whether any more documents are required for the new record; after determining that no more documents are required for the new record, determining whether to fulfill the claim) falls within the subject matter groupings of abstract ideas of “Certain Methods Of Organizing Human Activity: fundamental economic principles or practices (including insurance, i.e. processing and fulfilling the claim data) in the Applicant’s claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) (…receiving first claim data; in response to receiving the first claim data: identifying, based on the first claim data, a first record in the first data source; generating a new record, that represents a claim, in the second data source that is different than the first data source, wherein the new record includes an identifier of the first record in the first data source; including a first portion of the first claim data in the new record; after including the first portion in the new record, receiving second claim data that comprises one or more documents; in response to receiving the second claim data, updating the new record with the one or more documents; identifying a third record in the third data source that is different than the first and second data sources; determining, based on the third record and the new record, whether any more documents are required for the new record; after determining that no more documents are required for the new record, determining whether to fulfill the claim) fall within at least one of the groupings of abstract ideas listed above. If the identified limitation(s) falls within at least one of the groupings of abstract ideas, it is reasonable to conclude that the claim recites an abstract idea in Step 2A Prong One”.
Therefore, according to the MPEP 2106.04(a), “the rejection does not rely on an impermissible over-generalization of the claims to "processing and fulfilling claim data," and overlooks the claim-recited technical architecture, ordered operations, and resulting improvement to computer functionality disclosed in the specification and reflected in the claims as amended”, it is reasonable to conclude that the Applicant’s claim recites an abstract idea in Step 2A Prong One. Thus, Applicant’s arguments are not persuasive.
Argument 2: Applicant argued that: “…Even if the analysis were to proceed to Step 2B, the claims recite significantly more than any alleged abstract idea…” (Please see the remarks on page 11).
Answer 2: The Examiner respectfully disagrees.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception or amount to an inventive concept. As discussed above with respect to integration of the abstract idea into a practical application, the additional limitations of the one or more hardware processors and the claims management system that are all recited at a high level of generality to perform the functions of “…coupling … to the data sources; receiving …first claim data; identifying …a first record in the first data source; generating … a new record that represents a claim; receiving …second claim data; updating …the new record with the one or more documents; identifying… a third record…; determining…. whether any more documents are required for the new record; and determining …whether to fulfill the claim”, above amounts to mere instructions to apply the exception using the generic computer component. Thus, the claim performs the functions of nothing more than “coupling/connecting to the data source, receiving data, identifying the records in the data sources, generating and updating the new record, and determining whether to fullfill the claim”. When viewing the additional elements either individually or as an ordered combination, the claim as a whole does not amount to significantly more than the judicial exception because the claim does not include improvements to another technology or technical field, improvements to the function of the computer itself, and does not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. In effect, the additional limitations add the words “apply it” (or an equivalent) to the judicial exception, or mere instructions to implement an abstract idea on a computer. Mere instructions to apply an exception using the generic computer component cannot provide an inventive concept. Thus, the claim is not patent eligible.
Furthermore, the one or more hardware processors and the claims management system that are all recited at a high level of generality to perform the functions of “…coupling … to the data sources; receiving …first claim data; identifying …a first record in the first data source; generating … a new record that represents a claim; receiving …second claim data; updating …the new record with the one or more documents; identifying… a third record…; determining…. whether any more documents are required for the new record; and determining …whether to fulfill the claim”, which does not include improvements to another technology or technical field, improvements to the function of the computer itself, and does not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. Rather, these are improvements to a business/financial solution of processing the claim data.
Merely automating the process of managing and processing the claim data using the claims management system to try to make the process faster or more efficient does not integrate the abstract idea into a practical application. See Customedia Techs. V. Dish Network Corp., 951 F.3d 1359, (Fed. Cir. 2020) (“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.”) (citation omitted); 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).
Thus, the claim does not recite significantly more than any alleged abstract idea. Thus, Applicant’s arguments are not persuasive.
Argument 3: Applicant argued that: “…The Office Action does not cite any evidence demonstrating that this multi-data source, identifier-linked, dynamically updated, and cross-checked record-generation pipeline was well-understood, routine, or conventional at the relevant time. To the contrary, the specification describes the deficiencies of prior systems and the corresponding architectural solution that the present claims implement. When viewed individually and as an ordered combination, these additional elements transform any alleged abstract concept into a patent-eligible application by imposing non-conventional, non-generic computer functionality that improves the operation of claims processing technology itself…” (Please see the remarks on page 11).
Answer 3: The Examiner respectfully disagrees.
The 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) (Advanced training module: https://www.uspto.gov/patent/laws-and-regulations/examination-policy/training-materials-subject-matter-eligibility) on page 22 and page 37 clearly states that:
“Prong Two Excludes The “WURC” Consideration
As noted on the preceding slide, there is no evaluation of well-understood, routine, conventional (“WURC”) activity in Prong Two.
Examiners should give weight to all of the claimed additional elements in Prong Two, even if those elements represent well-understood, routine, conventional (WURC) activity.
Because Step 2A excludes consideration of WURC, a claim that includes WURC elements may still integrate an exception into a practical application.
Do not evaluate WURC unless the analysis proceeds to Step 2B.”…
“…Eligibility At Step 2B
Revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same.
However, if an examiner had previously concluded under revised Step 2A that an additional element was insignificant extra-solution activity, they should reevaluate that conclusion in Step 2B
If such reevaluation indicates that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that an inventive concept is present and that the claim is thus eligible.
For example, when evaluating a claim reciting an abstract idea such as a mathematical equation and a series of data gathering steps that collect a necessary input for the equation, an examiner might consider the data gathering steps to be insignificant extra-solution activity in revised Step 2A, and therefore find that the judicial exception is not integrated into a practical application. However, when the examiner reconsiders the data gathering steps in Step 2B, the examiner could determine that the combination of steps gather data in an unconventional way and, therefore, provide an “inventive concept,” rendering the claim eligible at Step 2B.”
Regarding the 2019 PEG Guidelines, the Office had not previously concluded under Step 2A that an additional element of the Applicant’s claim was insignificant extra-solution activity. Thus, the Applicant’s claims do not to be reevaluated under WURC. Thus, Applicant’s claims are not applicable to be reevaluated under WURC and the Berkheimer analysis is not required. Therefore, “the Office Action does not need to cite any evidence demonstrating that this multi-data source, identifier-linked, dynamically updated, and cross-checked record-generation pipeline was well-understood, routine, or conventional at the relevant time” (Please see the remark on page 11). Thus, Applicant’s arguments are not persuasive.
For the above reasons, it is believed that Appellant's arguments have been fully considered but they are not persuasive and the rejections should be sustained.
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 extension fee 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 Tien C. Nguyen whose telephone number is 571-270-5108. The examiner can normally be reached on Monday-Thursday (6am-2pm EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
Bennett Sigmond can be reached on 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-270-6108.
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/TIEN C NGUYEN/ Primary Examiner, Art Unit 3694
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