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 Claims
This action is in reply to the response filed on 11-26-2025. Claims 1-25 are currently pending and have been examined. Claims 1, 19, 20, 22 and 25 have been amended.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10-31-2025 IS in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Patent-Ineligible Subject Matter - 35 U.S.C. § 101
Under 35 U.S.C. § 101, “[w]hoever 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.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217–18.
The U.S. Patent and Trademark Office (the “USPTO”) published revised guidance on January 7, 2019, for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the USPTO’s examination procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50.1
The first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 54; see also MPEP §§ 2106.04(II)(A)(1), 2106.04(a). If so, we next determine, in Step 2A, Prong Two, whether the claim as a whole integrates the recited judicial exception into a practical application of that exception, i.e., whether the additional elements recited in the claim beyond the judicial exception, apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Id.; see also MPEP §§ 2106.04(II)(A)(2), 2106.04(d). Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. Id.; see also MPEP § 2106.04(II)(A)(2).
If the claim is determined to be directed to a judicial exception under Step 2A, we next evaluate the additional elements, individually and in combination, in Step 2B, to determine whether they provide an inventive concept, i.e., whether the additional elements or combination of elements amounts to significantly more than the judicial exception itself; only then, is the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56; see also MPEP § 2106.05.
Analysis:
STEP 1
Is the claim(s) directed to a process, machine, manufacture or composition of matter?
Claims 1-25 are all directed to a statutory category (e.g., a process, machine, manufacture, or composition of matter). The answer is YES. Therefore, the issue now is whether it is directed to a judicial exception without significantly more.
STEP 2
Step 2A(i): Does the Claim Recite a Judicial Exception?
Claims 1-25 are directed to AI and/or ML process based method for recommending change in insurance coverage to build a ground truth insurance database. The method involves receiving customer information of an insurance customer by a processor. Determination is made by the processor to check whether insurance change recommendation trigger occurs by routing the customer information into an insurance recommendation machine learning algorithm. Recommendation for insurance policy change for the insurance customer is sent by the processor in response to determining that the insurance change recommendation trigger occurs.
From this we see that the claims do not recite the judicial exceptions of either natural phenomena or laws of nature. The next issue is whether it recites the judicial exception of an abstract idea. To answer this, we next determine whether it recites one of the concepts the Courts have held to be lacking practical application, viz. mathematical concepts2, certain methods of organizing human interactions3, including fundamental economic practices and business activities, or mental processes4.
The practice of insurance policy modification is a mental process. Thus, the invention is an example of a conceptual idea subject to the Supreme Court's "concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity." See Alice, 573 U.S. at 216 (citations omitted). Thus the claims are directed to a certain method of organizing human activity.
Alternately, this is an example of concepts performed by a human as mental steps because the invention as drafted is a process that under its broadest reasonable interpretation covers human actions. That is, other than generic computer components, nothing in the claim element precludes the step from practically being performed by a human. The steps mimic human thought processes or actions, perhaps with paper and pencil. See Planet Bingo, 961 F. Supp. 2d at 851 (“The district court correctly concluded that managing the game of bingo “consists solely of mental steps which can be carried out by a human using pen and paper”). Other than the recitation of generic computer components, the examiner finds that the instant case clearly falls within the “mental processes” grouping of abstract ideas. The examiner further finds that this type of activity represents longstanding conduct that existed well before the advent of computers and the Internet. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson").
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
The 2019 Revised Guidance sets forth a non-exhaustive listing of considerations indicative that an additional element or combination of elements may have integrated a recited judicial exception into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55; see also MPEP § 2106.04(d). In particular, the Guidance describes that an additional element may have integrated the judicial exception into a practical application if, inter alia, the additional element reflects an improvement in the functioning of a computer or an improvement to other technology or technical field. Id. At the same time, the Guidance makes clear that merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra-solution activity to the judicial exception; or only generally linking the use of the judicial exception to a particular technological environment or field are not sufficient to integrate the judicial exception into a practical application. Id.
The Examiner finds each of the limitations of claim 1 recites abstract ideas as Identified in Step 2A(i), supra, and none of the limitations integrate the fundamental economic practice and mental process into a practical application as determined under one or more of the MPEP sections cited above. The claim as a whole merely uses instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea.
Thus, on this record, Applicants have not shown eligibility under the guidance of Manual for Patent Examining Procedure section 2106.05(a) (“Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field”) or section 2106.05(e) (“Other Meaningful Limitations”).
Step 2B – “Inventive Concept” or “Significantly More”
Evaluating representative claim 1 under step 2 of the Alice analysis, the Examiner concludes it lacks an inventive concept that transforms the abstract idea of insurance policy modification into a patent-eligible application of that abstract idea.
As evidence of the conventional nature of the recited computer hardware, the Examiner refers to paragraphs 51, 62-67 and 182, and Figures 1 and 7 of the Disclosure. The Examiner finds the hardware components are well-understood, routine, and conventional. The generic computers described in the Specification are well-understood, routine, and conventional, at least because the Specification describes the computers in a manner that indicates they are sufficiently well-known that the Specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112 ¶ 1(a). See Berkheimer Memo5 § III.A.1. Thus, because the Specification describes the additional elements in general terms, without describing the particulars, the Examiner concludes the claim limitations may be broadly but reasonably construed as reciting conventional computer components and techniques, particularly in light of Applicants’ Specification, as quoted above.6
Dependent claim 2 adds the additional limitation of what the customer information comprises. This is nonfunctional descriptive material because it is a mere arrangement of data. Descriptive material is nonstatutory when claimed as descriptive material per se, 33 F. 3d at 1360, 31 USPQ2d at 1759. See MPEP §2011.05(II).
Dependent claim 3 adds the additional limitation of the customer information comprising an email generated by a computing device of the insurance customer, and upon receipt of the customer information, the insurance recommendation machine learning algorithm analyzing the email, and the insurance recommendation machine learning algorithm determining that the insurance change recommendation trigger has occurred. What the customer information comprises. Analyzing and determining are mental processes because other than generic computer components, nothing in the claim element precludes the step from practically being performed as in the human mind or with paper and pencil. See Planet Bingo, 961 F. Supp. 2d at 851. See also Guidance 84 Fed. Reg. at 52.
Dependent claim 4 adds the additional limitation of the insurance recommendation machine learning algorithm including a natural language processing (NLP) machine learning algorithm, the insurance recommendation machine learning algorithm analyzing the email and the analyzed email information comprising the word or phrase. What the machine-learning algorithm includes and what the analyzed e-mail comprises is also nonfunctional descriptive material. Analyzing is also a mental process.
Dependent claim 5 adds the additional limitation of determining an optimal insurance policy for the insurance customer and comparing the optimal insurance policy to a current insurance policy. These are also mental processes.
Dependent claim 6 adds the additional limitation of receiving the update to the insurance customer profile. This is insignificant extra-solution activity because this is activity incidental to the primary process or product that is merely a nominal or tangential addition to the claim. See 2019 Revised Guidance, 55 n.31; see also MPEP § 2106.05(g). As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Parker vs. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978).
Dependent claim 7 adds the additional limitation of receiving a request for communication, initiating an interaction between a chatbot and the insurance customer, and the interaction between the chatbot and the insurance customer comprising a question and/or answer being sent from the chatbot to an insurance customer computing device, and a question and/or answer being sent from the insurance customer computing device to the chatbot, and information of the insurance customer comprising the interaction between the chatbot and the insurance customer. Receiving is also insignificant extra-solution activity. What the information comprises is also nonfunctional descriptive material.
Dependent claim 8 adds the additional limitation of receiving audio data of a conversation between the insurance customer and an insurance agent, the conversation corresponding to an interaction between the insurance customer and the insurance agent, and the information of the insurance customer comprising the interaction between the insurance customer and the insurance agent. Data reception is also insignificant extra-solution activity. What the information comprises is also nonfunctional descriptive material.
Dependent claims 9 and 10 add the additional limitation of recommending a change. This is also a mental process.
Dependent claim 11 adds the additional limitation of what the event comprises. Is also nonfunctional descriptive material.
Dependent claim 12 adds the additional limitation of the insurance recommendation machine learning algorithm determining that the insurance change recommendation trigger has occurred, the event comprising a child change event, and the trigger comprising recommending increasing life insurance coverage. Determining and recommending are also a mental processes. What the event comprises is also nonfunctional descriptive material.
Dependent claim 14 adds the additional limitation of the recommendation for the insurance policy change being based upon the determined insurance change recommendation trigger, and what the event comprises. This is all is also nonfunctional descriptive material.
Dependent claim 15 adds the additional limitation of what is displayed. This is also nonfunctional descriptive material.
Dependent claims 16 and 21 add the additional limitation of training the insurance recommendation machine learning algorithm and what data comprises. Training is also a mental process. Data composition is also nonfunctional descriptive material.
Dependent claim 17 adds the additional limitation of what the historical event comprises. This is also nonfunctional descriptive material.
Dependent claim 18 adds the additional limitation of receiving an indication. This is also insignificant extra-solution activity.
Dependent claim 20 adds the additional limitation of sending the recommendation for the insurance policy change. This is also insignificant extra-solution activity.
Dependent claim 23 adds the additional limitation of determining and comparing. These are also mental processes.
Dependent claim 24 adds the additional limitation of determining and what the machine-learning algorithm comprises. Determining is also a mental process. Data composition is also nonfunctional descriptive material.
Conclusion of Law
The examiner concludes that the claims do not provide an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception. From these determinations the examiner further notes that the claims do not recite an improvement to the functioning of the computer itself or to any
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other technology or technical field, a particular machine, a particular transformation, or other meaningful limitations. From this the examiner finds the claims are directed to a certain method of organizing human activity without significantly more.
Response to Arguments and amendments
Applicants argue generally that the claims are patent-eligible because the training of the machine-learning improves the accuracy of the machine-learning algorithm.
The alleged improved process, however, is part of the abstract idea discussed above. The invention is still a certain method of organizing human activity i.e., an abstract idea. And any improvement to render more accurate the process of recommending a change in insurance coverage does not make the improvement a technological improvement. Any alleged improvement lies in the abstract idea itself, not to any technological improvement. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287–88 (Fed. Cir. 2018).
As far as machine-learning itself is concerned, training a machine learning algorithm per se is data processing. These recitations are only for generic machine learning. There is nothing specific about these recitations. Applicants do not contend they invented machine learning algorithms in general or any such algorithm in particular. Machine learning algorithms have existed for over 35 years.7 The Specification and drawings do not describe any such algorithm, but only describe using such an algorithm to recommend a change in insurance coverage.
An invocation to use such old technology in the manner it is intended to be used for its ordinary purpose is both generic and conventional. The Specification and drawings do not describe any such algorithm, but only describe using such an algorithm to draw information from various databases and is placing such learning in a computer context, offering no technological implementation details beyond the conceptual idea to use a machine for learning. The Examiner is not persuaded by Applicants’ argument that the claims recite training a machine learning algorithm such that the claims incorporate the alleged abstract ideas into a practical application.
Accordingly, for reasons of record and as set forth above, the examiner maintains the rejection of the claims as being directed to a judicial exception without significantly more, and thereby being directed to non-statutory subject matter under 35 USC §101.
This action is made final. Applicants are reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert R. Niquette whose telephone number is 571-270-3613. The examiner can normally be reached on Monday through Friday, 5:30 AM to 2:00 PM Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Abhishek Vyas, can be reached at 571-270-1836.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT R NIQUETTE/
Primary Examiner, Art Unit 3691
1 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates the revised guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020).
2 See e.g., Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).
3 See e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Systems Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1383 (Fed. Cir. 2017); In re Marco Guldenaar Holding B. V., 2018 WL 6816331 (Fed. Cir. 2018).
4 See e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-1372 (Fed. Cir. 2011); Intellectual Ventures I LLCv. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
5 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), USPTO 3 (2018) (available at https://www.uspto.gov/ sites/default/files/documents/memo-berkheimer-20180419.PDF) (explaining that a specification that describes additional elements “in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well understood, routine, and conventional).
6 Claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
7 See e.g. Proceedings of the ... International Workshop on Machine Learning. (1985). United States: Morgan Kaufmann Publishers.