DETAILED ACTION
Acknowledgements
This action is in response to Applicant’s filing on Apr. 13, 2026, and is made Final. This action is being examined by James H. Miller, who is in the eastern time zone (EST), and who can be reached by email at James.Miller1@uspto.gov or by telephone at (469) 295-9082.
Interviews
Interviews are “indispensable to advance the prosecution of a patent application.” MPEP § 713. Accordingly, the following Examiner’s guidance and suggested workflow maximizes this benefit to Applicant by: (1) avoiding back and forth telephone calls for scheduling, (2) permitting Examiner out-of-office notifications to the Applicant when sending the agenda, and (3) permitting real-time document collaboration and screen sharing.
Interviews are available by telephone or, preferably, by video conferencing using the USPTO’s web-based collaboration platform. Applicants are strongly encouraged to schedule via the USPTO Automated Interview Request (AIR) portal at http://www.uspto.gov/interviewpractice. If an interview is needed more quickly than permitted by the AIR scheduling tool, note this in the AIR remarks for consideration. The Examiner routinely considers such urgent requests when practicable.
An agenda submitted when filing the AIR is strongly encouraged, because Examiners use agendas when determining whether to grant an interview. The AIR has character limits, so send the agenda contemporaneously to James.Miller1@uspto.gov and reference the AIR.
After-Final Interviews Requests are granted only at the Examiner’s discretion and only if disposal or clarification for appeal may be accomplished with only nominal further consideration. MPEP § 713.09. An advance agenda explaining how the interview advances prosecution—e.g., through targeted arguments, identified Examiner error, or proposed claim amendments—is strongly suggested.
For GRANTED requests, expect an email within two (2) business days confirming a date/time slot and collaboration tool access instructions. For DENIED requests, the record will include an explanation for the denial.
The examiner is generally available for interviews, Monday through Friday, 10:00 a.m. to 4:00 p.m. ET.
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 .
Claim Status
The status of claims is as follows:
Claims 1–19 remain pending and examined with Claims 1 and 19 in independent form.
Claims 1 and 19 are presently amended.
No Claims are presently cancelled or added.
Response to Amendment
Applicant's Amendment has been reviewed against Applicant’s Specification filed Aug. 23, 2023, [“Applicant’s Specification”] and accepted for examination.
Response to Arguments
Drawings
Applicant argues Fig. 10 which was denied entry last round has support. Examiner agrees. But for the reasons below, the drawings remain objected to because Examiner is unable to identify in the Drawings any of the multiple reference signs mentioned in specification. Non-Final Act. at 4 (“Elements 105, 12, 3, 31,332, 34, 341, 342, 343, 34i, 35, 351, 352, 353, and 35i, identified in the specification, ¶¶ 58, 60, 64, 65, 67, 68, 69, 70, and 71, are not identified by the drawings.”).
35 U.S.C. § 101 Argument
Applicant argues that “Paragraph [0013] clearly indicates that the goal of the invention is in improving the automation possibilities at a point-of-sale machine which are fast and efficient in technical terms. … The point is exactly to AVOID human interaction and possible human errors by introducing the automated UW machine ([0039]; "electronically triggered without any human interaction"; see also [0055]).” Applicant’s Reply at 16.
Examiner respectfully disagrees. The computer is not improved as Applicant admits. Rather, the “human” is improved by using the computer as a tool to “AVOID … possible human errors.”
Applicant argues the amendments to Claims 1 and 19 are no longer directed to an abstract idea because it now recites “provid[ing] a robotic process automation by electronically processing measured parameter values,” “automatically triggering an auto-mated underwriting process,” and a “risk shape pattern comprising [a] measured, digital value pattern of health status parameters.” Applicant’s Reply at 16.
Examiner respectfully disagrees. The amendments describe the abstract underwriting evaluation itself, the automation of that evaluation, and the type/format of data. Automating or digitizing a fundamental economic practice does not remove it from the organizing human activity and mental process exceptions. Underwriting remains a fundamental economic practice and reciting that it is performed “robotically” or on a “digital” measured value adds only non-limiting functional labels and field of use language. MPEP § 2106.05(h). The claims recite automated risk-transfer underwriting and applying risk-transfer structure (an insurance policy), which are basic commercial acts.
Applicant argues the added “dynamically adapt” limitation clarifies that the system reduces/increases linking rules and questions until a minimal set captures a predefined percentage (>= 65%) of the processed data, forming a dynamic, optimized decision tree structure. Applicant’s Rely at 16–17.
Examiner respectfully disagrees. This limitation recites a desired result of a minimized rule/question set achieving a 65% coverage without reciting any technological mechanism, convergence algorithm, or modification to the decision tree operation for how the computer achieves it. The specification teaches this as a “design tradeoff”. Spec. ¶¶ 3, 5, which is not an improvement to the functioning of a computer. MPEP § 2106.05(a).
Applicant argues the claimed system solves the technical problem of point of sale underwriting where no expert is available and computing power is limited, and that the optimized capture of 90-90% of the applicants reduces CPU time by a factor of 1000. Applicant’s Reply at 17–18.
Examiner respectfully disagrees. The specification teaches that the reduction in “CPU time” and optimized capture come from asking fewer questions and referring more of the complex (5-10%) of the cases for manual review. Spec. ¶¶ 19, 46. This narrows the scope of the abstract analysis rather than improving the processor, memory, or functioning of the computer itself. Faster execution of an abstract process on a generic computer, achieved by doing less analytical work, is not a technological improvement. MPEP § 2106.05(a). The point of sale “limiting computing power” is attorney argument and not commensurate with the scope of the claims and/or describes an environment. MPEP § 2106.05(h).
Applicant argues the mental process characterization is incorrect because the human method is inadequate to address the point of sale problem so a computer is required. Applicant’s Reply at 18.
Examiner respectfully disagrees. The inadequacy of a manual process does not confer eligibility, and a claim can be directed to an abstract idea even where a human performs it poorly. Here, generic components automate the same risk evaluation quicker. The specification contrasts automated with manual underwriting and identifies reduced human error and faster completion, which are benefits of automating the business process and does not improve the functioning of a computer. Spec. ¶¶ 39, 55. The specification undercuts Applicant’s argument because automated UW “is representative of the … classification problem … traditionally performed by trained individuals Spec. ¶ 8. “[T]he underwriter's subjective judgment will almost always play a role in this process.” Spec. ¶ 11. Thus, the specification admits the underlying task is a human evaluation/judgment. The inadequacy of humans at scale and speed does not covert a “judgment” into a non-abstract technical process.
Applicant argues Desjardins and cautions against equating machine learning with an unpatentable algorithm and treating remaining limitations as generic without adequate explanation, as the Examiner did here. Applicant’s Reply at 19.
Examiner respectfully disagrees. Desjardins is distinguishable because there the claims reflected specific improvements to how the machine learning model itself operated and improved the computer by “us[ing] less of their storage capacity” (p. 9). Here, neither the amended claims nor the specification discloses any improvement to the operation of the decision tree/CART engine (the specification calls it (generic) computer-implemented, deterministic, decision tree process” (Spec. ¶ 16) and identifies known CART techniques. Spec. ¶ 48 (“the historical medical event dataset can e.g. be assessed using data mining techniques such as Classification and Regression Trees to determine the relevance of each X gathered, as a predictor.”). This is using known ML (CART) techniques with any improvement in the ML model itself. Recentive Analytics, Inc. v. Fox Corp., 134 F.4th 1205, 1216 (Fed. Cir. 2025) (holding “that patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101”).
Applicant argues the Examiner improperly characterized the claimed technical features as conventional and that amended claims and Claim 6’s triage details show more than applying know CART to underwriting. Applicant’s Reply at 18, 20–21. Applicant further argues Claim 6 is separately eligible because it recites a concrete threefold rule-based triage (heart disease, cancer, or diabetes first flag, two or more consecutive weeks off work second flag, and admission to a hospital in the past third flag) and machine generation and transmission of an output signal. Thus, Claim 6 must be performed by a machine and is not a mental process. Applicant’s Reply at 20–21.
Examiner respectfully disagrees. The amended claims recite CART, which is acknowledged by the specification as a known data mining technique. Spec. ¶ 48. Claim 6 adds specific underwriting questions and accept/reject decision logic (rules), but that added detail is abstract and merely recites rules a human underwriter can and traditionally performs—not an improved in the computer but rather using the computer as a tool. MPEP § 2106.05(f). The specification describes the three fold triage as an example of a simplified decision tree. Spec. ¶ 21 (“just an example of an embodiment variant of a typical simplified health decision tree.”). Machine execution of a manual process plus an output signal is the classic “apply it” scenario and not a basis for eligibility. MPEP § 2106.05(f). The Claim 6 abstract decision rules cannot supply the inventive concept or practical application. The WRC finding is supported by Applicant’s own specification statements and by NPL showing CART/decision trees performed by hand.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: Elements 105, 12, 3, 31,332, 34, 341, 342, 343, 34i, 35, 351, 352, 353, and 35i.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
Under the broadest reasonable interpretation, the following claim terms are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. MPEP § 2111.
risk-transfer structure is an insurance policy because it shifts specific risks from one party to another in exchange for a premium.
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 1–19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
Analysis
Step 1: Claims 1–19 are directed to a statutory category. Claims 1–18 recite a “system” and are therefore, directed to the statutory category of a “machine.” Claim 19 recites a “method” and is therefore, directed to the statutory category of a "process.”
Representative Claim
Claim 1 is representative [“Rep. Claim 1”] of the subject matter under examination. Normal font is used for limitations that recite the judicial exception. Bold font is used to indicate additional elements evaluated under Step 2A, Prong Two (practical application) and Step 2B (significantly more). Underline font is used, as needed, in further describing the judicial exception. Each limitation is identified by a letter designator for use as a shorthand notation when analyzing/referencing each limitation. Rep. Claim 1 recites:
[A] 1. An optimized digital, automated underwriting (UW) system with a decision-tree-based electronic signal processing engine, providing a robotic process automation by electronically processing measured parameter values associated with an applicant and automatically triggering an automated underwriting process based on the electronic signal processing of the measured parameter values, comprising: processing circuitry configured to
[B] implement the decision-tree-based electronic signal processing engine that uses a minimized decision-tree structure to automate the assessment of an applicant's risk shape profile used for an automated risk-transfer underwriting for the coverage of possible damages impacted by the occurrence of one or more medical events to an applicant,
[C] wherein the coverage is provided by applying a risk-transfer structure of the digital automated UW system to the applicant,
[D] wherein user-specific medical parameter data sets are captured and/or measured by associated capturing or measuring devices via data interfaces of the digital automated UW system, and
[E] wherein each captured medical parameter data set is processed by the electronic signal processing engine, the electronic signal processing engine transmitting an output signal generated upon processing the medical parameter data set by decision-tree-based structure, and
[F] [wherein] … the output signal automatically triggering or blocking an automated application of the risk-transfer structure upon electronic signal transfer to the digital automated UW system,
[G] extract risk shape pattern at least based on occurrence frequency and impact severity measured based on measured occurrences of the medical events of a historical database,
[G1] the risk shape pattern comprising measured, digital value pattern of health status parameters associated with an applicant's health status at a certain time,
[H] wherein to validate the historical database mirroring real-world within given boundary conditions, the medical event datasets of the historical database are assessed using Classification and Regression Trees as data mining techniques to determine the relevance of each medical event dataset as a predictor[,]
[I] cluster and link together medical events of the historical database having a similar risk shape pattern, wherein similarity of risk shape pattern is detected if the risk shape pattern of said medical events are detected to be within a defined maximal topological distance within a parameter space given by a medical parameter datasets of a medical event,
[J] a cluster of medical events of the historical database having similar risk shape pattern for all medical events of the same cluster comprising related and/or unrelated medical events, wherein unrelated medical events at least comprise medical events with unrelated clinical pictures and/or unrelated medical causes,
[K] provide the linking of medical events of said historical database to a same cluster by a set of linking rules and/or linking questions forming the decision-tree-based data processing structure of the decision-tree-based electronic signal processing engine,
[L] wherein a decision distribution given by outputted decisions is provided by applying the decision-tree-based data processing structure of the decision-tree-based electronic signal processing engine represents the frequency of medical events measured to be within the same cluster of risk shape pattern, upon detecting newly occurring medical events not clusterable by the decision-tree-based electronic signal processing engine due to a missing similarity to existing risk shapes,
[M] generate and add additional linking rules and/or linking questions dedicated to capture and cluster the newly occurring medical events to the set of linking rules and/or linking questions, and
[N] dynamically adapt for the realization of the decision-tree data processing structure, the number of linking rules and/or linking questions of the set by reducing and/or increasing the number of linking rules and/or linking questions until a minimal set of linking rules and/or linking questions capture a predefined percentage of processed medical parameter data set with an output signal that automatically triggers the automated application of the risk-transfer structure of the digital automated UW system, wherein the predefined percentage is equal or above 65% of the processed medical parameter data set.
Claims are directed to an abstract idea exception.
Step 2A, Prong One: Rep. Claim 1 recites “[a]n optimized digital, automated underwriting (UW) system” in the preamble, Limitation A, and its substantive Limitations B–N recite the steps of evaluating an applicant’s risk profile and applying a risk transfer structure (i.e., an insurance policy) to determine and price coverage. Underwriting is the evaluation, classification, and pricing of insurable risk and the determination of coverage eligibility and is a fundamental economic practice under the organizing human activity exception because “underwriting (UW)” “describes concepts relating to the economy and commerce,” and includes “hedging, insurance, and mitigating risks.” MPEP § 2106.04(a)(2)(II)(A). Limitations B–N are the required steps to perform “underwriting” and therefore, recite the same exception. Id.
Alternatively1, Limitations B–N, as drafted, recite the abstract idea exception of mental processes that under the broadest reasonable interpretation, cover performance in the human mind or with pen and paper, but for the recitation of the generic computer components indicated in bold. MPEP § 2106.04(a)(2)(III).
Claims recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include:
• a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016);
. . .
• a claim to collecting and comparing known information (claim 1), which are steps that can be practically performed in the human mind, Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067, 100 USPQ2d 1492, 1500 (Fed. Cir. 2011).
MPEP § 2106.04(a)(2)(III)(A). For example, but for the generic computer components claim language, here, Limitations B–N, recite collecting information (Limitations D, E, G, G1) and analyzing it (Limitations B, C, F, H, I, J, K, L, M, N), where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind. For example, Limitations B and C are mental processes that are practically performed in the human mind or with pen and paper because it requires mere “observation, evaluation, judgment, and/or opinion” to “use a minimized decision-tree structure” and “apply[ ] a risk-transfer structure [for coverage]” (i.e., an insurance policy, as interpreted). NPL Leskovec is prior art and additional evidence of a human’s ability to use or implement a decision-tree structure without the aid of a computer. NPL Leskovec, Ch. 7 at pp. 253–254 (clustering/grouping performable by “eyeballing” small data); see also NPL Step by Step CART, pp. 2, 6–17 (decision tree CART performed “by hand from scratch”). Limitation H is a mental process that is practically performed in the human mind or with pen and paper because it also requires mere “observation, evaluation, judgment, and opinion” to assess medical event datasets using Classification and Regression Trees (CART). NPL Step by Step CART (cited on PTO-892) is prior art and additional evidence of a human’s ability to assess data using a CART without the aid of a computer. NPL Step by Step CART, pp. 2 (“We will mention a step by step CART decision tree example by hand from scratch.”). The specification confirms the CART step is a known data-mining technique, not an improvement to the functioning of a computer. Spec. ¶ 48. Limitations I and J are a mental process that are practically performed in the human mind or with pen and paper because it requires mere “observation, evaluation, judgment, and/or opinion” to cluster and link together medial events having a similar risk shape pattern under the conditions specified for maximal topological distance. The specification confirms this is the claimed operations. Spec. ¶ 41 (“Medical events of a historical event database having a similar risk shape pattern are clustered and linked together, wherein similarity of risk shape pattern is given if the risk shape pattern of said medical events are detected to be within a defined maximal topological distance within a parameter space”); see also Spec. ¶ 17 (defining “risk” as a “technical measure and [sic] providing a technically reproduceable measuring value,” i.e., ordinary numeric values.) Further, collecting and comparing known information are steps that can be practically performed in the human mind under Classen. All of the claimed parameters merely require judgment to perform the claimed actions. See, Leskovec, Jure, Anand Rajaraman, and Jeffrey David Ullman. "Mining of Massive Datasets.," Ch. 7. P 253, (2019) [NPL Leskovec”] (“Clustering is the process of examining a collection of “points,” and grouping the points into “clusters” according to some distance measure. The goal is that points in the same cluster have a small distance from one another, while points in different clusters are at a large distance from one another.”). This is the same grouping by distance recited by Rep. Claim 1. NPL Leskovec confirms that this grouping judgment is performable by a person without a computer, for a set of points characterized by measured parameters (e.g., height and weight), “we can see just by looking at the diagram that the [points] fall into three clusters … With small amounts of data, any clustering algorithm will establish the correct clusters, and simply plotting the points and “eyeballing” the plot will suffice as well.” NPL Leskovec, p. 254. The underlying distance measure is basic arithmetic and may be performed with pen and paper (e.g., “The common Euclidean distance (square root of the sums of the squares of the differences between the coordinates”), NPL Leskovec, p. 254 (Example 7.1), and NPL Leskovec computes similar similarity/distance measures by hand in worked examples. NPL Leskovec, pp. 82, 85. Grouping items by a similar/distance judgement and comparing that similarity to a threshold is therefore evaluation/judgment ordinarily performed in the human mind or with pen and paper, i.e., a mental process. Rep. Claim 1 imposes no data set size requirement and under BRI, the claimed clustering reads on a small-scale hand performed case NPL Leskovec describes as capable of being “eyeball[ed].” NPL Leskovec, p. 254. Thus, practically performed in the mind is satisfied because the claims do not require any computation of large datasets beyond what NPL Leskovec teaches can be performed by hand. Limitations K, L, M, and N are mental process that is practically performed in the human mind or with pen and paper because it also requires mere “observation, evaluation, judgment, and opinion” to link medical events to a same cluster in the manner claimed, detecting newly occurring medial events not clusterable in any known way, adding additional linking rules and questions, adapting the number of linking rules and questions until a predefined percentage of data is collected. “The use of a physical aid (e.g., pencil and paper or a slide rule) to help perform a mental step (e.g., a mathematical calculation) does not negate the mental nature of the limitation, but simply accounts for variations in memory capacity from one person to another” or a multi-step mental process. MPEP § 2106.04(a)(2)(III)(B).
The amended limitations “providing a robotic process automation by electronically processing measured parameter values … and automatically triggering an auto-mated underwriting process,” and “the risk shape pattern comprising [a] measured, digital value pattern of health status parameters” recite the abstract underwriting evaluation itself, the automation of describe the abstract underwriting evaluation itself, the automation of that evaluation, and the type/format of data. Reciting that the abstract analysis is automated, performed electronically, or performed on digital/measured data does not remove the claim from the organizing human activity and mental process exceptions. The specification confirms this understanding. Spec. ¶ 38 (“automated underwriting” means a general-purpose computer).
If a claim limitation under BRI, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract idea exception. MPEP § 2106.04(a)(2)(III). Accordingly, the pending claims recite the combination of these abstract idea exceptions.
Step 2A, Prong Two: The additional elements identified in Rep. Claim 1, considered individually and as an ordered combination, do not integrate the abstract idea exception into a practical application. MPEP § 2106.04(d).
The additional elements are limited to the computer components and indicated in bold, supra. The additional elements are: an “optimized digital, automated underwriting (UW) system [general-purpose computer]; a decision-tree-based electronic signal processing engine [software executed on the general-purpose computer]; electronically processing/electric signal processing [use of a general purpose computer]; processing circuitry [generic processor]; associated capturing or measuring devices; data interfaces; “generat[ing]” and “transmission of an output signal” that “automatically triggering or blocking an automated application of the risk-transfer structure; and a historical database [generic data storage].
The additional elements do not improve the functioning of a computer or other technology. MPEP § 2106.05(a).
A claim improves technology only when it recites a specific improvement to the way a computer itself operates, not merely the application of an existing process using a computer. MPEP § 2106.05(a) (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)). Here, the abstract idea exception was previously performed manually. Spec. ¶¶ 39, 54 (“[m]annual business-related insurance underwriting takes much longer to complete and involves the intrinsic chance of human errors” and “is a tedious and labor-intensive process” involving “over 2500 questions” and “that takes many weeks to complete.”). Because the process can be performed manually, the computer is not being improved and is merely being used as a tool to perform the pre-existing manual process. Applying a pre-existing manual process using generic computer components is not an improvement to computer technology.
The specification confirms this characterization by describing the advantages of the claimed system in terms of business outcomes (improved timeliness, reduced human error, and faster completion go f the underwriting process), rather than in terms of any specific technical improvement to a processor, memory, data structure, or network. Spec. ¶ 55 (“Timeliness of the underwriting process can be improved significantly; instances of human error can be reduced … The current underwriting completion time frame of weeks can be reduced significantly with the assistance of the present inventive automated decision-making system 1.”); see also Spec. ¶ 39. The asserted efficiency gains are not improvements to a computer but result from performing less analytical work by capturing “90 to 95% of all underwrite applications” (Spec. ¶ 16), using only “2-5 simple further questions per main disorder” and “approximately 100 to 200 rules” rather than the “20,000 rules and even more” of prior art systems (Spec. ¶ 19), which the specification frames as reducing “data processing time and CPU time by a factor of 1000 and more” (Spec. ¶ 16). Reducing the amount of data processed and narrowing the number of applications evaluated is merely a change to the coverage/accuracy trade-off which the specification teaches is an inherent “design tradeoff … always present no matter what.” Spec. ¶ 5. Faster or less economic computationally resource intensive execution of an abstract process, achieved by doing less analytical work on a generic computer is not a technological improvement to the functioning of a computer. MPEP § 2106.05(a).
To the extent the claimed solution is asserted to provide a technical solution to a point of sale problem, that asserted solution is not commensurate with the scope of the claims and is an improvement to the abstract idea itself rather than in the functioning of any computer. The specification teaches the point-of-sale problem as a commercial/business problem, (Spec. ¶¶ 2, 13, 15) and identifies the “dynamically adapt[ing]” of the number of linking rules/questions to a coverage percentage as a desired result rather than a particular technical mechanism, reciting no specific algorithm, convergence criteria, or improvement in the decision tree/CART methodology. Spec. ¶¶ 16, 43, 48. Under MPEP § 2106.05(a), the claim must recite the improvement with sufficient specificity to reflect how the improvement is achieved, rather than claiming the desired outcome using generic components.
The additional elements do not apply the abstract idea with a particular machine. MPEP § 2106.05(b).
Although the claims recite specific hardware components (i.e., automated UW system, decision tree based electronic signal processing engine, processing circuitry, capturing measuring devices, data interfaces, and a historical database), these components are recited at a high functional level and perform only their generic functions of receiving, transmitting, storing, and processing data. A machine is “particular” only when it imposes a meaningful limit on the claim’s scope. MPEP § 2106.05(b). Here, any general-purpose computer with associated measuring devices, data interfaces, and a database would satisfy the claim’s hardware requirements, which confirms that the hardware components are generic rather than “particular.” MPEP § 2106.05(b). The specification describes each computer component using broad, open-ended language (e.g., “any external data source or real-world link, such as a database table or linked measuring or sensory devices, can be used to supply engine parameters.”) Spec. ¶ 7.
The additional elements are mere instructions to apply the abstract idea exception, MPEP § 2106.05(f); (2) generally link the judicial exception to a particular technological environment, MPEP § 2106.05(h); and/or (3) are insignificant extra solution activity; MPEP § 2106.05(g).
The “capturing or measuring devices” and “data interfaces” that capture/measure the medical parameter data sets, and that the data that is retrieved from the “historical databases,” are insignificant extra solution data gathering activities. MPEP § 2106.05(g). The “generat[ing]” and “transmission of an output signal” that “automatically triggering or blocking an automated application of the risk-transfer structure” is generic post-solution transmission of the underwriting decision. MPEP § 2106.05(f)(3), (g).
Regarding the remaining additional elements, Applicant’s Specification does not otherwise describe them with specificity beyond exemplary language and instead describes them as a general-purpose computer, as a part of a general-purpose computer, or as any known and exemplary (generic) computer component known in the prior art. The specification’s own broad, exemplary characterization confirms that these components are not described in a manner that would impose any specific technical limitation that would integrate the abstract idea into a practical application. The specification’s failure to describe these components in any detail beyond exemplary language is itself an admission that the components are so well known to those of ordinary skill in the art that no explanation is needed under 35 U.S.C. § 112(a). See, Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 1984) (citing In re Myers, 410 F.2d 420, 424 (CCPA 1969) (“[T]he specification need not disclose what is well known in the art”). E.g., Spec. ¶ 7 (“any external data source or real-world link, such as a database table or linked measuring or sensory devices, can be used to supply engine parameters, even by adapting them in real-time based on the real-world link.”); ¶ 16 (“a [generic] computer-implemented processing-efficient process of developing an automatable person-level cost modelling structure”); ¶ 16 (“a [generic] computer-implemented, deterministic, decision-tree-based process”); ¶ 21 (“any positive answer to this threefold rule-based triage-process, or indeed any other health question, can automatically trigger reflex rules and/or linking questions contained within process”); ¶ 38 (“The term "automated underwriting", as used herein, is understood as the process where electronic means, as e.g. [general] computer means”); ¶ 46 (“The IDC integration can be provided by a communication plugin of the automated UW system 1 allowing a seamless integration of the UW system 1 into any third party web-sides or the like.”); ¶ 48 (“the historical medical event dataset can e.g. be assessed using data mining techniques such as Classification and Regression Trees”); ¶ 54 (In the mostly manual prior art processes, underwriting is a tedious and labor intensive process on behalf of both the applicant and the underwriter. An applicant must fill out a highly personal questionnaire that delves into almost all aspects of their life which can be up to or even over 2500 questions, an imposing amount of paperwork that can turn applicants off pursuing risk-transfer cover. Further in the prior art, in addition to being tedious on behalf of the applicant, the questionnaires typically must be closely examined by a team of skilled underwriters who must follow guidelines mixed with intuition to arrive at a decision, resulting in a process that takes many weeks to complete. The mixture of guidelines and intuition is a known problem in the risk-transfer industry. There is a need to improve the quantitative methods that make up a technical basis of the underwriting process in order to maintain the relevancy of the industry. The inventive automated UW system 1 with the disclosed inventive efficient, automated UW process and automated pricing process based on the linking and clustering of medical events with similar risk shape patterns, does not show these technical problems.”); see also “Response to § 101 Argument” point heading, supra.
The generic processor, here, performs calculations (functions) and executes instructions that are programmed by software directed to the abstract idea. Spec. ¶¶ 38, 16. This is a computer doing what it is designed to do—performing directions it is given to follow, and whose directions are directed to the abstract idea.
Limitation A describes the engine and processing circuitry configured to perform the steps of the claimed invention, which merely invokes computers or other machinery in its ordinary capacity to receive, store, or transmit data. MPEP § 2106.05(f)(2). The claim’s processing circuitry configured to implement a decision tree based electronic signal processing engine” merely invokes computers in their ordinary capacity to receive, store, or transmit data. MPEP § 2106.05(f)(2). Limitations B–N describe the engine and processing circuitry, performing the steps of the claimed invention. The remaining functional clauses of Rep. Claim 1 recite the abstract idea exception itself on a general-purpose computer. Performing the steps of the abstract idea exception using a computer, merely adds a general-purpose computer after the fact to an abstract idea exception without imposing any meaningful technical limitations. MPEP § 2106.05(f)(2). Alternatively, the claim generically recites an effect of the abstract idea without specifying how the computer achieves that effect in any technically meaningful way. MPEP § 2106.05(f)(3).
Therefore, the claim as a whole, considering the additional elements individually and as an ordered combination, amounts to no more than mere instructions to apply the abstract idea using generic computer components and is not a practical application. MPEP § 2106.05(f). The additional elements do not integrate the abstract idea exception into a practical application because they do not impose any meaningful limits on the abstract idea exception. Accordingly, Rep. Claim 1 is directed to an abstract idea.
Independent Claim 19 is not substantially different than Rep. Claim 1, recites the same abstract idea as Rep. Claim 1, and contains no additional elements not otherwise analyzed for Rep. Claim 1. Therefore, Independent Claim 19 is also directed to the same abstract idea.
The claims do not provide an inventive concept.
Step 2B: Rep. Claim 1 fails Step 2B because the claim as a whole, even when considering the additional elements individually and in combination, does not amount to significantly more than the abstract idea. MPEP § 2106.05. The additional elements (i.e., an “optimized digital, automated underwriting (UW) system [general-purpose computer]; a decision-tree-based electronic signal processing engine [software executed on the general-purpose computer]; electronically processing/electric signal processing [use of a general purpose computer]; processing circuitry [generic processor]; associated capturing or measuring devices; data interfaces; “generat[ing]” and “transmission of an output signal” that “automatically triggering or blocking an automated application of the risk-transfer structure; and a historical database [generic data storage].), are each well-understood, routine, and conventional (“WRC”) computer components and functions in the relevant field, as evidenced by Applicant’s own disclosure2. Further, Applicant’s Specification discloses that these components operate in no particular order and are implemented using generic, off-the-shelf computing technology. Spec. ¶¶ 7, 16, 38, 46, 48 (describing each component using exemplary language as generic or known computing equipment and networks).
(1) an “optimized digital, automated underwriting (UW) system; electronically processing/electric signal processing; processing circuitry; associated capturing or measuring devices; and data interfaces are WRC in the financial technology field. Spec. ¶¶ 7, 38, 40, 44.
(2) a decision-tree-based electronic signal processing engine are WRC. Spec. ¶¶ 16, 43, 48.
(3) “generat[ing]” and “transmission of an output signal” that “automatically triggering or blocking an automated application of the risk-transfer structure are WRC electronic signaling/transmission functions. Spec. ¶ 19, 40, 44.
(4) historical database for storing and retrieving clustered medical event data is WRC. Spec. ¶ 7, 48.
The combination is also WRC at the high level of generality recited:
The combination of the additional elements is likewise WRC. A combination of individually well-understood, routine, and conventional elements does not provide an inventive concept unless the combination itself produces an unconventional result or is applied in an unconventional manner. MPEP § 2106.05(d)(2). Here, the combination performs each step in exactly the manner described as conventional throughout Applicant’s own Specification. There is no indication that the combination of these elements operates in an unconventional manner or produces a result that is other than what would be expected from the generic application of these individual components.
Unlike BASCOM, where the claims recited a specific non-conventional arrangement of installing a filtering tool at a specific network location (an ISP server) rather than on individual end-user devices, Rep. Claim 1 does not recite how the elements are combined in a non-conventional way. The claims recite each element at a high level of generality without specifying the particular arrangement or order that constitutes the alleged improvement. At the high level of generality recited, the combination is WRC. Any BASCOM argument fails because nothing in Applicant’s Specification describes a non-conventional ordered arrangement of components that is then recited in the claims. Rep. Claim 1 recites only abstract steps without incorporating any specific technical details for how these elements are performed. A non-conventional arrangement that is described but not claimed cannot supply the inventive concept at Step 2B. Because the claims here recite only generic components performing generic functions at a high level of generality, the claim cannot be an improvement to the computer or another technology. MPEP § 2106.05(f). No inventive concept is present under Step 2B. MPEP § 2106.05(d).
Accordingly, the additional elements of Rep. Claim 1 have been recognized, based on Applicant’s own disclosure, as WRC activity in the field. MPEP § 2106.05(d). These elements do no more than “apply” the recited abstract idea(s) using known computer and computer-related components. See also Step 2A, Prong Two, supra.
Under the 2019 PEG, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B. Reevaluated under Step 2B, the “capturing or measuring devices” and “data interfaces” that capture/measure the medical parameter data sets, and “historical databases” from which data is retrieved and “generat[ing]” and “transmission of an output signal” that “automatically triggering or blocking an automated application of the risk-transfer structure is generic post-solution transmission of the underwriting decision, are found to be no more than well-understood, routine, and conventional post-solution activity in the field of electronic transaction processing and do not provide an inventive concept. As discussed above, these limitations merely recite generic capturing/measuring devices and data interfaces gathering medial parameter data set, a generic historical database storing and supplying clustered medical event data, and the electronic signal processing engine transmitting an output signal that triggers or blocks the automated risk transfer application. Applicant’s Specification describes these operations as occurring within a conventional automated underwriting computing environment and does not indicate that these functions are performed in an unconventional manner. Spec. ¶¶ 7, 40, 44, 48. Moreover, neither the Specification nor the record identifies Limitations xx as providing any improvement to the functioning of the computer itself, to the underlying network or storage technology, or to the machine-learning model; moreover, neither the specification nor the record identifies these limitations as providing any improvement of the functioning of a computer or to the underlying storage or signal processing technology; nor has Applicant provided any evidence that such operations were not well-understood, routine, and conventional in the field at the time of the invention. Spec. ¶¶ 7, 40, 44, 48. In view of this disclosure and the absence of contrary evidence, and consistent with MPEP § 2106.05(d) and USPTO guidance interpreting Berkheimer, these limitations are found to be well-understood, routine, and conventional post-solution activity in the field of electronic transaction processing data gathering and post solution activity in the field of automated underwriting and do not supply an inventive concept.
Independent Claim 19 is a method claim reciting steps that perform the same abstract processing and generic computer operations recited in Rep. Claim 1. Independent Claim 19 adds no additional elements beyond those of Rep. Claim 1 that would amount to significantly more than the abstract idea. Therefore, Independent Claim 19 also does not recite an inventive concept under Step 2B.
Dependent Claims Not Significantly More
The dependent claims have been given the full two-part analysis including analyzing the additional limitations both individually and in combination with the elements of the independent claims. Each dependent claim incorporates all the limitations of its parent Independent Claim and therefore recites the same abstract idea. The additional limitations recited in the dependent claims do not integrate the abstract idea exception into a practical application under Step 2A, Prong Two, and do not amount to significantly more than the abstract idea under Step 2B, for the following reasons:
Dependent Claims 2, 3, and 5 merely narrow the abstract idea itself by reciting numerical or descriptive values without reciting any additional elements. These are improvements to the abstract idea itself and not to the functioning of a computer. An inventive concept or practical application cannot be furnished by an abstract idea exception itself. MPEP §§ 2106.05(I), 2106.04(d)(III).
Regarding Dependent Claim 4, adopting the number of rules recites a mathematical refinement of the classification scheme performed by a generic engine. The specification describes it in a results orientated way without identifying any specific algorithm or convergence criterion. Spec. ¶¶ 20, 16. This is mere instructions to apply the exception and does not amount to significantly more. MEP § 2106.05(f).
Dependent Claim 6, 7, 8, and 9 add specific underwriting questions and accept/reject decision logic (rules), but that added detail is abstract and merely recites rules a human underwriter can and traditionally performs—not an improved in the computer but rather using the computer as a tool. MPEP § 2106.05(f). The specification describes the three fold triage as an example of a simplified decision tree. Spec. ¶ 21 (“just an example of an embodiment variant of a typical simplified health decision tree.”). Machine execution of a manual process plus an output signal is the classic “apply it” scenario and not a basis for eligibility. MPEP § 2106.05(f). The Claim 6, 7, 8, and 9’s abstract decision rules cannot supply the inventive concept or practical application. The WRC finding is supported by Applicant’s own specification statements and by NPL showing CART/decision trees performed by hand.
Dependent Claim 10 recites an additional element that is a generic communication data interface (realized supporting IDC integration) that the specification teaches allows “Seamless integration of the UW system 1 into any third party wen-sides [sic] or the like.” Spec. ¶ 46. Linking the abstract idea to a particular technological environment (third party web interfaces) via a generic plugin does not impose a meaningful limit. MPEP §§ 2106.05(g), (g).
Dependent Claims 11, 12, 13, 14, 15, 16, 17, and 18 recite the additional elements of a “machine learning based process”. The specification teaches these techniques are known off the shelf data mining tools and describes the forecasting steps as mathematical/actuarial operations without any specific technical mechanism. Spec. ¶¶ 24, 16, 48. Forecasting future damage/cost, standardizing cost values, and allocating payments are themselves fundamental economic/mathematical practices. Performing them on a generic computer using known ML techniques is mere apply it with a computer and is WRC. No improvement to ML algorithm is described by the specification. Recentive Analytics, Inc. v. Fox Corp., 134 F.4th 1205, 1216 (Fed. Cir. 2025) (holding “that patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101”)
Combined Consideration. Considered in any combination, the dependent claims' additional limitations merely add further commercial-transaction sub-steps or narrow the type of commercial instrument involved, data-gathering, risk-classification, and forecasting steps, or narrow values of the abstract underwriting process. None of these limitations recites a particular machine, a non-conventional ordered arrangement of components in the sense of BASCOM, or any specific technical mechanism for performing the recited steps. The specification describes each additional element in generic exemplary terms. Spec. ¶¶ 7, 21, 22, 24, 46, 48. Accordingly, none of Dependent Claims 2–18 integrates the abstract idea into a practical application under Step 2A, Prong Two, and none amounts to significantly more than the abstract idea under Step 2B.
Conclusion
Claims 1–19 are therefore drawn to ineligible subject matter as they are directed to an abstract idea without significantly more. The analysis above applies to all statutory categories of invention. As such, the presentment of Rep. Claim 1 otherwise styled as another statutory category is subject to the same analysis.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES H MILLER whose telephone number is (469)295-9082. The examiner can normally be reached M-F: 10- 4 PM (EST).
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, Bennett M Sigmond can be reached at (303) 297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
/JAMES H MILLER/Primary Examiner, Art Unit 3694
1 “It should be noted that these groupings are not mutually exclusive, i.e., some claims recite limitations that fall within more than one grouping or sub-grouping. … Accordingly, examiners should identify at least one abstract idea grouping, but preferably identify all groupings to the extent possible, if a claim limitation(s) is determined to fall within multiple groupings and proceed with the analysis in Step 2A Prong Two.” MPEP § 2106.04(a).
2 See Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), 3-4, https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-20180419.PDF (April, 18, 2018) (That additional elements are well-understood, routine, or conventional may be supported by various forms of evidence, including "[a] citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).").
Prosecution Insights