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 .
This application is a CON of 15/718,992 09/28/2017 ABN
The present claims are similar to the claims of 15/718,992, which were reviewed by the Patent Board. In the Patent Board’s decision filed on 12/13/2022, Examiner’s rejection of claims under 35 U.S.C. 101 was affirmed. Patent Board’s rationale is still relevant for the present application, due to the similarity of the present claims to the parent claims.
Status of Claims
Claim 1-18 are cancelled.
Claim 19-27 are currently pending and rejected.
Claim Rejection – 35 U.S.C. 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Independent claim 19, 20, and 22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The newly added features in the independent claims are not supported by the original specification, which is only 10 pages and 30 paragraphs long. Dependent claims 21 and 23-27 are also rejected under 35 U.S>C. 112(a) based on their dependency of the rejected independent claims. To overcome this rejection, Applicant must point out the exact paragraphs in the specification where the amended limitations are described.
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 therefor, subject to the conditions and requirements of this title.
Claims 19-27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The rationale for this finding is explained below. In the instant case, the claims are directed towards a system and a method for searching an insurance database, grading each insurance provider, displaying result, and generating a claim for benefits upon a death of a person associated with the insurance policy. Searching a life insurance database and displaying result falls within “certain methods of organizing human activity” grouping, thus the claims include an abstract idea. The claims do not include limitations that are “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. Note that the limitations, in the instant claims, are done by the generically recited computer device. The limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. Therefore, claims 19-22 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Step 1: The claims 19-27 are directed to a process, machine, manufacture, or composition matter.
In Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014), the Supreme Court applied a two-step test for determining whether a claim recites patentable subject matter. First, we determine whether the claims at issue are directed to one or more patent-ineligible concepts, i.e., laws of nature, natural phenomenon, and abstract ideas. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296–96 (2012)). If so, we then consider whether the elements of each claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.
Claims 19-21 are system claims (i.e., machine) and claim 22-27 are method claims (i.e., process).
Step 2A: The claims are directed to an abstract idea.
Prong One
The present claims are directed towards a system and a method for an insurance database, grading each insurance provider, displaying result, and generating a claim for benefits upon a death of a person associated with the insurance policy. It is related to managing relationship between user and insurance providers, as such, the claims fall under the grouping of Certain Methods of Organizing Human Activity” in 2019 Revised Patent Subject Eligibility Guidance. Moreover, the recited process can be performed mentally, as such, the claims also fall under the grouping of Mental Processes. The performance of the claims limitations (i.e., storing insurance policies, receiving search request, generate search result, and displaying search result) using generic computer components (i.e., a database, a user interface, a processor, and a display device) does not preclude the claim limitations from being in the certain methods of organizing human activity grouping. The computer components in the claims are merely used as a tool to implement an abstract idea in a computer environment. Accordingly, these claims recite an abstract idea.
The present claims are similar to claim 2 of Example 42 in 2019 Revised Patent Subject Matter Eligibility Guidance. The ineligible claim of the example recites storing information about a patient’s medical records and providing user access to the stored information. The claim of Example 42 is found to recite a concept of “certain methods of organizing human activity”, because it is related to managing relationships or interacts between people (i.e., sharing information among users). Similarly, the present claims recite a concept of storing information in a database and allowing user to access/modify information stored in the database by using conventional search and database technology. Therefore, the present claims fall within the grouping of Certain Methods of Organizing Human activity.
Moreover, the recited steps, categorizing policies to facilitate access & retrieval, purging unclaimed policies over ten years, receiving a user-defined search request, receiving search results, determining an accessibility of assigned policies, determining a number of available options, determining a customer rating, determining a grade for each provider, transforming a non-binary characterization of the grade into a binary characterization, determining a legitimacy status for each provider, determining a financial standing for each insurance provider, switching the legitimacy status if the financial standing is below a minimum threshold, determining an accreditation of each insurance provider, switching the legitimacy status if the insurance provider is not accredited, and moving the policies to a priority position based on determined legitimacy status, can be performed in the human mind. Similar to ineligible claims of Electric Power Group v. Alstom, the present claims essentially recite a process of obtaining data, analyzing data, and displaying result of the analysis, and such process can be performed mentally. Therefore, the present claims fall within the grouping of Mental Processes.
The performance of the claim limitations using generic computer components (e.g., a controller, a processor, a memory, a database, a user interface, a processor, and a display) does not preclude the claim limitation from being in the certain methods of organizing human activity grouping or the mental processes grouping.
Prong Two
Independent claim 19 recites a controller, a processor, a memory, a database, a user interface, a processor, and a display as additional elements. Claim 20 recites a database for storing insurance policies and a user interface that provides the same basic computer functions as in claim 19. Claim 21 additionally recites a display. Claim 22 recites a GUI and a processor for performing all the determining steps. These computer elements appear to be generic computer components in view of paragraph 0016 of Applicant’s specification. The additional elements are claimed to perform basic computer functions, such as categorizing policies to facilitate access & retrieval, purging unclaimed policies over ten years, receiving a user-defined search request, receiving search results, determining an accessibility of assigned policies, determining a number of available options, determining a customer rating, determining a grade for each provider, transforming a non-binary characterization of the grade into a binary characterization, determining a legitimacy status for each provider, determining a financial standing for each insurance provider, switching the legitimacy status if the financial standing is below a minimum threshold, determining an accreditation of each insurance provider, switching the legitimacy status if the insurance provider is not accredited, and moving the policies to a priority position based on determined legitimacy status. The entire claim could be interpreted as a tool for a person to access a database, and make all the determination/generation steps mentally, and view information on a screen.
The present claims and the specification do not elaborate on database or search technology. It is very clear that the present claims are not directed to improve the functioning of the computer itself or directed to a particular machine. Any off-the-shelf general-purpose computer can perform the claimed limitations. The computer components in the claims are merely used as a tool to implement an abstract idea in a computer environment. The present claims and the specification do not recite a particular improved search engine. As such the claimed elements do not improve the functioning of a computer or any other technology or require a particular machine, and the claims definitely do not effect a physical transformation. The present claims are merely applying the abstract concept of searching a life insurance database and displaying result on a computer environment, using conventional search engine as a tool. Therefore, the present claims fail to recite limitations that are indicative of integration into a practical application.
Claims 19-22 have been amended to include a limitation, “transform the non-binary characterization of the grade into a binary characterization to determine legitimacy status for each insurance provider”. Examiner points out that “transforming” a non-binary grade (e.g., score from 1 to 100) to a binary characterization (i.e., legitimate or illegitimate) can be easily performed mentally. For example, a score of 60 could be set as the threshold, so any policy having a grade of 60 or above is considered legitimate and any policy having a grade below 60 is considered illegitimate. As such, the transforming step is merely comparing the grade score to a predetermined threshold number. Such non-binary to binary transformation is routinely done in daily life – for example, school teacher converting students’ grades from numeric score to pass/no pass. Even if this process is automated by a computer, this feature does not improve computer function, because it can be easily programmed using existing computer coding. For example, to convert a score to pass/no pass in Microsoft Excel, we can use a simple formula =IF(score_cell>=threshold, “pass”, “not pass”). Examiner also points out that Applicant’s specification does not provide any detail with regards to this data transformation. Thus, it is presumed that such data transformation process is well within the general knowledge of one skilled in the art. Therefore, the addition of this limitation does not improve computer function or integrate the abstract concept into a practical application.
Claim 23 recites accessing policy data structure, encoding the step of calculating the grade and transforming the grade into a binary characterization as program modules, executing the program modules, and sending result to a display. These functions are well-understood, routine, and conventional under MPEP 2106.05(d).
Claim 24 recites prioritizing the search result by executing a sorting algorithm on the search results. This is a built-in feature in most if not all search engines.
Claim 25 recites determining the non-binary grade wherein the non-binary grade is stored as a floating-point variable within a volatile memory segment, receiving the floating-point variable and transforms it into a binary legitimacy status, and perform a real-time override of Boolean flag based on immediate binary factors. The specification does not provide any support of this limitation. This feature appears to be simply converting a grading score into a binary characterization (i.e., legitimate or illegitimate) on a computer.
Claim 26 recites configuring database with a specific data structure to define and store policy categories. The specification nor the claim specify what “specific data structure” is being used. Simply categorizing insurance policies as “currently assigned”, “expired”, “standard insurance policies for purchase” or “custom insurance policies for purchase” can be easily done with existing database software. Purging old files to keep storage size manageable and to speed up searching speed is a standard database practice. Such practice was also used in physical document storage in many cases prior to the digital era.
Claim 27 recites receiving a user defined search request, comparing received search information against identification fields stored in the database to generate a dataset of relevant assigned policies, receiving verification information from the user, and determining if the user is an authorized person for the assigned policy dataset. These are standard search engine feature and identification verification feature.
The recitation of these features is not sufficient to indicate improvement in computer function, thus failing to integrate the abstract concept into a practical application.
Step 2B: The claims do not recite additional elements that amount to significantly more than the abstract idea.
As discussed earlier, independent claim 19 recites a controller, a processor, a memory, a database, a user interface, a processor, and a display as additional elements. Claim 20 recites a database for storing insurance policies and a user interface that provides the same basic computer functions as in claim 19. Claim 21 additionally recites a display. Claim 22 recites a GUI and a processor. The additional elements are claimed to perform basic computer functions, such as categorizing policies to facilitate access & retrieval, purging unclaimed policies over ten years, receiving a user-defined search request, receiving search results, determining an accessibility of assigned policies, determining a number of available options, determining a customer rating, determining a grade for each provider, transforming a non-binary characterization of the grade into a binary characterization, determining a legitimacy status for each provider, determining a financial standing for each insurance provider, switching the legitimacy status if the financial standing is below a minimum threshold, determining an accreditation of each insurance provider, switching the legitimacy status if the insurance provider is not accredited, and moving the policies to a priority position based on determined legitimacy status. According to MPEP 2106.05(d), “performing repetitive calculations”, “receiving, processing, and storing data”, “electronically scanning or extracting data from a physical document”, “electronic recordkeeping”, and “receiving or transmitting data over a network, e.g., using the Internet to gather data” are considered well-understood, routine, and conventional functions of computer. Searching and displaying results are also well-understand and conventional, as they are many available search engines that can easily perform the claimed limitations. The focus of the present claims is not on improving the functioning of computer but on certain abstract concept that uses computer as a tool.
MPEP 2106.05(d) states “receiving or transmitting data over a network”, “electronic recordkeeping”, and “storing and retrieving information in memory” are well-understood, routine, and conventional computer functions. Thus, a database configured to store life insurance policies including legitimacy status of each life insurance provider is merely performing basic database function. Varanasi et al. (Pub. No.: US 2012/0284058) teaches an insurance system comprising a customizable and search-capable interface for searching insurance products offered by various insurance providers and displaying search results (see paragraph 0031-0032 for example). One skill in the art would also immediately recognize that receiving user-defined searches and generating search results from the database are basic functions of off-the-shelf search engines, and that displaying search result is a basic computer display function. Although the cited references, do not teach a legitimacy status for each life insurance provider based on accessibility of the assigned life insurance policies provided by the insurance provider (i.e., legitimacy status depends on whether the insurance policies providers can provide a thorough list of their life insurance policies), the limitation does not require any inventive computer function. It is merely applying mental process on computer. There is no improvement to the functioning of computer itself. Therefore, the present claims do not recite significantly more than an abstract concept.
Searching data in a database, performing analysis, and generating result of the search and analysis, as recited in the claims, are well-understood, routine, and conventional functions for computer processor. The step of “generating a legitimacy status for each life insurance provider based on the accessibility of the assigned life insurance policies provided by the insurance provider” is merely searching the database to find out whether the insurance provider has submitted information related to the life insurance policies to the database. Ryan et al. (Patent No.: US 6,684,189) is a prior art filed more than two decades ago which teaches a central database storing data regarding different carrier’s life insurance policies, and the data is verified with each of the carrier (see column 8 line 51-58). In other words, Ryan teaches determining the legitimacy status of each insurance provider. Ryan also teaches a computer system providing searching function for searching life insurance policies that match search criteria throughout the reference. As such, it is very clear that the processor and its functions, as recited in the amended claims, are well-understood, routine, and conventional. The present claims and the specification do not recite a particular improved search engine. The claimed elements do not improve the functioning of a computer or any other technology or require a particular machine, and the claims definitely do not effect a physical transformation. The present claims are merely applying the abstract concept of searching a life insurance database and displaying result on a computer environment, using conventional search engine as a tool.
Since the claimed invention does not require a particular machine (i.e., runs on general purpose computer), does not effect a physical transformation, and is not related to medical treatment, the claimed limitations must either provide some improvements of computer function or apply the abstract idea in some meaningful way beyond generally implementing the abstract idea on a computer environment.
The limitation, “identify the user as an authorized person for the at least one assigned life insurance policy based on the verification information received from the user” is a conventional feature that can be performed mentally. The limitation does not explicitly disclose how user identity is identified, but one skilled in the art would know that identity can be verified by matching user’s provided information (such as name, policy number, social security number, etc.) against insurance policy record.
The limitations, “provide a menu of options for the at least one assigned life insurance policies at the display device if the user is identified as an authorized person, wherein the menu of options includes at least one of: viewing, at the display device, the assigned life insurance policy of the plurality of life insurance policies; modifying at least one parameter of the assigned life insurance policy; generating a claim for benefits from the assigned life insurance policy; receive a user-selected option from the menu of options, wherein the processor is configured to. based on the user-selected option: display the assigned life insurance policy on the display device; modify the at least one parameter of the assigned life insurance policy; notify the life insurance provider of a death of the person associated with the at least one assigned life insurance policy; or generate a claim for benefits for the assigned life insurance policy”, are standard limitations in any online insurance. Joao (Patent No.: US 7,305,347) discloses many of the limitations. For example, Joao teaches a menu-driven graphical user interface for managing and viewing insurance policies (see column 20 line 29-65, column 26 line 25-53, for example). Joao also teaches allowing user to change, modify, upgrade or downgrade their insurance benefits (see column 19 line 54-64 and column 26 line 38 through column 27 line 5). The prior art also teaches allowing user to submit life insurance claim online via webpage (see column 13 line 56-62, column 19 line 54-64, column 24 line 3-27). The added limitations are well-understood, routine, and conventional, and they do not improve the functioning of computer itself or apply the abstract idea in some meaningful way beyond generally implementing the abstract idea on a computer environment. Therefore, the added limitations fail to suggest integration into a practical application in Step 2A prong 2, and fail to recite inventive concept in Step 2B.
Simply implementing the abstract idea on a generic computer or merely using a computer as a tool to perform an abstract idea cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Therefore, the present claims do not amount to significantly more than the abstract idea. Accordingly, the present claims are not eligible for patent.
Examiner also points out that the present claims are similar to the claims of 15/718,992, which were reviewed by the Patent Board. In the Patent Board’s decision filed on 12/13/2022, Examiner’s rejection of claims under 35 U.S.C. 101 was affirmed. Patent Board’s rationale still applies to the present claims, due to the similarity of the present claims to the parent claims.
Prior Art Cited but not Applied
Schoos et al. (Pub. No.: US 2014/0324481) is cited because the reference teaches searchable insurance databases
Evanitsky (Pub. No.: US 2009/0265191) is cited because the reference teaches generating an insurance legitimacy report (see paragraph 0031).
None of the cited references teach “determine if a list of policies provided by each provider meets at least one requirement that must be completed by the providers to indicate that the list of policies is thorough and accurate, wherein the at least one requirement includes an accessibility of the assigned policies provided by each provider; generate a legitimacy status for each provider based on the accessibility of the assigned policies provided by the provider”, as recited in the independent claims. No prior art rejection is cited in this Office Action.
Response to Remarks
In the response filed on 07/10/2025, Applicant amended claims 19, 20, and 22 by adding different features. Applicant's arguments have been fully considered but they are not persuasive.
Claim 19
Applicant added the following limitations to claim 19:
automatically categorize the polices to facilitate optimized access and retrieval of the policies (note: automating data processing is merely utilizing existing computer functions);
purge from the database policies that are unclaimed for a period of ten years to enhance retrieval speed of active policies from the database by the processor (note: removing old files to keep storage size manageable and to speed up searching speed is a standard database practice; such practice was also used in physical document storage in many cases prior to the digital era);
automatically transform the non-binary characterization of the grade into a binary characterization to determine legitimacy status for each insurance provider by comparing the grade to a threshold value stored in the memory and generating, from the grade, a computer-readable binary data signal for use in automated prioritization of search results (note: the specification does not provide any detail with regards to this limitation; Examiner interprets that the claimed invention merely grades each insurance provider legitimate or illegitimate by performing certain grading/calculation process, which could be performed mentally);
switch the legitimacy status of the insurance provider to illegitimate if the financial standing is below a minimum level such that the computer-readable binary data signal reads illegitimate regardless of the grade if the financial standing is below the minimum level (note: this is merely a rule related to business not technology);
switch the legitimacy status of the insurance provider to illegitimate if the insurance provider is not accredited such that the computer-readable binary data signal reads illegitimate regardless of the grade if the insurance is not accredited (note: this is merely a rule related to business not technology);
output the computer-readable binary data signal as a computer-ready flag after determining the financial standing and the accreditation, wherein the computer-ready flag is configured to interface directly with a search result reordering function and provide streamlined processing of the search results and policies (note: outputting result of grading/calculation is a basic computer function; also according to Electric Power Group v. Alstom, receiving data, analyzing data, and presenting result of the analysis is not sufficient to integrate an abstract concept into practical application).
The recitation of these features is not sufficient to indicate improvement in computer function, thus failing to integrate the abstract concept into a practical application. Simply implementing the abstract idea on a generic computer or merely using a computer as a tool to perform an abstract idea cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Therefore, the present claims do not amount to significantly more than the abstract idea. Accordingly, the present claims are not eligible for patent.
Independent claim 20 and 22 are amended with similar limitations, thus they fail to overcome rejection under 35 U.S.C. 101 for the same reasons.
Claim 23 recites accessing policy data structure, encoding the step of calculating the grade and transforming the grade into a binary characterization as program modules, executing the program modules, and sending result to a display. These functions are well-understood, routine, and conventional under MPEP 2106.05(d).
Claim 24 recites prioritizing the search result by executing a sorting algorithm on the search results. This is a built-in feature in most if not all search engines.
Claim 25 recites determining the non-binary grade wherein the non-binary grade is stored as a floating-point variable within a volatile memory segment, receiving the floating-point variable and transforms it into a binary legitimacy status, and perform a real-time override of Boolean flag based on immediate binary factors. The specification does not provide any support of this limitation. This feature appears to be simply converting a grading score into a binary characterization (i.e., legitimate or illegitimate) on a computer.
Claim 26 recites configuring database with a specific data structure to define and store policy categories. The specification nor the claim specify what “specific data structure” is being used. Simply categorizing insurance policies as “currently assigned”, “expired”, “standard insurance policies for purchase” or “custom insurance policies for purchase” can be easily done with existing database software. Purging old files to keep storage size manageable and to speed up searching speed is a standard database practice. Such practice was also used in physical document storage in many cases prior to the digital era.
Claim 27 recites receiving a user defined search request, comparing received search information against identification fields stored in the database to generate a dataset of relevant assigned policies, receiving verification information from the user, and determining if the user is an authorized person for the assigned policy dataset. These are standard search engine feature and identification verification feature.
The recitation of these features is not sufficient to indicate improvement in computer function, thus failing to integrate the abstract concept into a practical application. Simply implementing the abstract idea on a generic computer or merely using a computer as a tool to perform an abstract idea cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Therefore, the present claims do not amount to significantly more than the abstract idea. Accordingly, the present claims are not eligible for patent.
Response to Arguments
Step 2A Prong One
Applicant argued that Examiner incorrectly asserts that the claimed limitations merely recite steps a human could perform mentally, while ignoring the disclosed technological means for processing, managing, and updating complex insurance information in computer technology beyond the capabilities of a human. Applicant further argued that “data processing, transforming signals, updating the signals, and outputting a computer-ready flag that is configured to interface directly with a search result reordering function and provide streamlined processing of the search results and policies” are not capable of being practically performed in human mind. Examiner disagrees and points out that these limitations are merely extra-solution utilizing existing computer functionalities. Human mind is capable of assessing insurance information to determine whether an insurance policy is legitimate or illegitimate. The specification does not mention transforming signal or updating signal. These steps are clearly not important and amount to implementing a mental concept on computer. Moreover, sorting and outputting results can be done by writing sorted results on paper.
Applicant argued that the claimed limitations provide a technical solution that increases the retrieval and processing speed for insurance policy systems. Examiner disagrees and points out that the recited features (such as storing and retrieving data from database, performing search, analyzing data, grading insurance policies by performing calculation on accessed data, sorting and displaying results, etc.) are well-understood, routine, and conventional computer functions, according to MPEP 2106.05(d).
Applicant argued that claim 19 describes a system including a specialized database and a specialized processor. Examiner disagrees and points out that neither the specification nor the claims suggest that the claimed database and the processor are specialized. As discussed earlier, the claimed functions are well-understood, routine, and conventional computer functions, according to MPEP 2106.05(d).
Applicant further argued that the claimed limitations are rooted in computer technology to improve a process of retrieval and presenting insurance policy on a computer. However, Applicant did not provide any explanation how the claimed limitations actually improve data retrieval and presentation of insurance policy. According to MPEP 2106.05(d), “performing repetitive calculations”, “receiving, processing, and storing data”, “electronically scanning or extracting data from a physical document”, “electronic recordkeeping”, and “receiving or transmitting data over a network, e.g., using the Internet to gather data” are considered well-understood, routine, and conventional functions of computer.
Step 2A Prong Two
Applicant argued that the claimed features directly address significant technical problems prevalent in the management and accessibility of life insurance policies within multi-provider system. Applicant argued that the existing systems frequently include policy data that is inaccurate, illegitimate, or not validated. Examiner points out that what Applicant described is not a technical problem but a problem of the data itself. Examiner reminds that “an improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287-88, 127 USPQ2d 1688, 1693-94 (Fed. Cir. 2018). Examiner also points out that the present claims do not transform different datastructure into a common structure, and as such, the present claims do not improve data management and accessibility in a multi-sources system.
Applicant argued that claim 19 “recites a processor configured to automatically transform the non-binary characterization of the grade into a binary characterization to determine the legitimacy status for each insurance provider by comparing the grade to a threshold value stored in the memory and generating, from the grade, a computer-readable binary data signal for use in automated prioritization of search result”. Applicant also argued that the processor performs a specific technical conversion that makes the data directly usable and manipulatable by other automated functions of the system. Examiner points out that this feature is not described in the specification. The so-called transformation of non-binary characterization of the grade into a binary characterization is merely comparing the grade of an insurance policy against a threshold number to determine whether the insurance policy is “legitimate” or “illegitimate”. Examiner points out that “transforming” a non-binary grade (e.g., score from 1 to 100) to a binary characterization (i.e., legitimate or illegitimate) can be easily performed mentally. For example, a score of 60 could be set as the threshold, so any policy having a grade of 60 or above is considered legitimate and any policy having a grade below 60 is considered illegitimate. As such, the transforming step is merely comparing the grade score to a predetermined threshold number. Such non-binary to binary transformation is routinely done in daily life – for example, school teacher converting students’ grades from numeric score to pass/no pass. Even if this process is automated by a computer, this feature does not improve computer function, because it can be easily programmed using existing computer coding. For example, to convert a score to pass/no pass in Microsoft Excel, we can use a simple formula =IF(score_cell>=threshold, “pass”, “not pass”). Examiner also points out that Applicant’s specification does not provide any detail with regards to this data transformation. Thus, it is presumed that such data transformation process is well within the general knowledge of one skilled in the art. Moreover, the specification does not disclose generating signal for use in automated prioritization of search result. This limitation merely amounts to implementing the abstract concept of determining the legitimacy status of insurance policies in a computer environment.
Applicant argued that because the legitimacy status is provided as a binary characterization, the legitimacy status can be updated in real-time more quickly and based on computer-readable data. Examiner disagrees and points out that the specification does not disclose any technological benefit with regards to this feature. Examiner also reiterates that the so-called transformation of non-binary characterization of the grade into a binary characterization is merely comparing the grade of an insurance policy against a threshold number to determine whether the insurance policy is “legitimate” or “illegitimate”. The specification does not disclose transforming insurance legitimacy information into “0” and “1” to save speed and to increase speed. Even if the specification supports this feature, this is a well-known feature in the computer art. Applicant also argued that the processor “updates in real-time the legitimacy status based on factors such as financial standing and accreditation, and switches between the two binary options instead of having to recalculate the grade or other factors”. Examiner points out this feature is merely a business rule which overrides the calculated grade of the insurance policies. This feature is not related to technology and does not improve computer function in any way.
Applicant further argued the processor outputs the computer-readable binary data signal as a computer-ready flag after determining the financial standing and the accreditation. Examiner again points out that this feature is not supported by the specification. It is unclear what the limitation actually means other than implementing a mental process in a computer environment.
Step 2B
Applicant argued that combination of features recited in the claims integrate any abstract concept into a practical application through specific, non-conventional computer functionalities that results in a technical improvement. Examiner points out that this is an argument under Step 2A Prong Two, which Examiner has already addressed. Applicant also repeated the same arguments in the earlier section. Examiner reiterates the so-called transformation of non-binary characterization of the grade into a binary characterization (i.e., “legitimate” or “illegitimate”) is a well-known concept practiced well before the existence of computer. The recitation of this feature does not improve computer function. Examiner also points out that the specification and the claims do not specify any specific datastructure that will lead to improvement in storage efficiency or retrieval speed. The specification also does not disclose anything related to signal or flag. Applicant’s arguments that the claimed features provide improved computer functionalities are unpersuasive.
Simply implementing the abstract idea on a generic computer or merely using a computer as a tool to perform an abstract idea cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Therefore, the present claims do not amount to significantly more than the abstract idea. Accordingly, the present claims are not eligible for patent.
For these reasons, Examiner maintains the ground of rejection under 35 U.S.C. 101.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/HAO FU/Primary Examiner, Art Unit 3697
JAN-2026