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 .
Status of Claims
This action is in reply to the RCE filed on 12/9/2025, wherein:
Claims 1, 10, and 16 have been amended;
Claims 2-9, 11-15, and 17-20 remain as original or previously presented; and
Claims 1-20 are currently pending and have been examined.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite a system, non-transitory computer-readable storage medium, and method for determining an impact of or a physical asset of a financial asset which is considered a judicial exception because it falls under Certain Methods of Organizing Human Activity such as commercial or legal interactions, including business relations. This judicial exception is not integrated into a practical application as discussed below and the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
This rejection follows the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed Reg 4, January 7, 2019, pp. 50-57 (“2019 PEG”)(MPEP 2106).
Analysis
Step 1 (Statutory Categories) – 2019 PEG pg. 53 (See MPEP 2106.03)
Claims 1-20 are directed to the statutory category of a process, machine, or manufacture.
Step 2A, Prong 1 (Do the claims recite an abstract idea?) – 2019 PEG pg. 54 (See MPEP 2106.04(a)-(c))
For independent claims 1, 10, and 16, the claims recite an abstract idea of: conducting and recording insurance claim transactions. The steps of independent claim 1 recite the abstract idea (in bold below) of: A computer-implemented method comprising: receiving, by a computer system, a financial asset input indicating financial instruments from or regarding a user having an online financial services account; using, by the computer system, the financial asset input to locate and extract physical asset data or impact data based on the financial asset input; determining, by the computer system, physical assets or impacts of financial instruments based on the physical asset data or the impact data, wherein the determining includes applying machine learning using a combination of at least two of: a long short-term memory (LSTM) network, bidirectional encoder representations from transformers (BERT), natural language processing (NLP), or an artificial intelligence (AI) based knowledge tree, wherein the machine learning uses a trained machine learning model in a closed loop system that periodically updates the machine learning model via feedback obtained from outputs produced by the model in response to inputs to refine the model and generate an improved version of the model; composing, by the computer system, an investment asset dashboard for the user based on the physical assets or the impacts, the investment asset dashboard including physical location information for the physical assets; displaying, on a graphical user interface in communication with the computer system, the investment asset dashboard; and providing, by the computer system, automated push notifications to the user on a periodic basis selected by the user from the interface, wherein the push notifications include a qualitative message regarding at least one of the physical assets or the impacts of the financial instruments. Independent claims 10 and 16 recites similar steps that recite the abstract idea. Independent claims 1, 10, and 16, as drafted, are a process that, under the broadest reasonable interpretation, covers Certain Methods of Organizing Human Activity, since they recite commercial or legal interactions, including business relations. If the claim limitations, under the broadest reasonable interpretation, covers methods of organizing human activity but for the recitation of additional elements including generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Other than reciting the abstract idea, the independent claims recite additional elements including generic computer components such as “a computer system, machine learning, a long short-term memory (LSTM) network, bidirectional encoder representations from transformers (BERT), natural language processing (NLP), an artificial intelligence (AI) based knowledge tree, a trained machine learning model, an investment asset dashboard, a graphical user interface in communication with the computer system; a computing system comprising a data storage system comprising instructions executed by one or more processors; and a non-transitory computer-readable storage medium including instructions executed by one or more computers”, and nothing in the claims precludes the steps from being performed as a method of organizing human activity. Accordingly, the independent claims recite an abstract idea.
Dependent claims 2-9, 11-15, and 17-20 recite similar limitations as independent claims 1, 10, and 16; and when analyzed as a whole are held to be patent ineligible under 35 U.S.C 101 because the additional recited limitations only refine the abstract idea further. Other than reciting the abstract idea, the dependent claims recite similar additional elements including generic computer components as the independent claims, such as “the computer system, the graphical user interface, machine learning, the investment asset dashboard, a text notification, an email notification, the data storage system comprising instructions executed by one or more processors, a trained machine learning model, the non-transitory computer-readable storage medium including instructions executed by computers”. If a claim limitation, under its broadest reasonable interpretation, covers commercial or legal interactions, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas.
Step 2A, Prong 2 (Does the claim recite additional elements that integrate the judicial exception into a practical application?) – 2019 PEG pg. 54 (See MPEP 2106.04(d)-(c))
This judicial exception is not integrated into a practical application. In particular, independent claims 1, 10, and 16 only recite the additional elements of “a computer system, machine learning, a long short-term memory (LSTM) network, bidirectional encoder representations from transformers (BERT), natural language processing (NLP), an artificial intelligence (AI) based knowledge tree, a trained machine learning model, an investment asset dashboard, a graphical user interface in communication with the computer system; a computing system comprising a data storage system comprising instructions executed by one or more processors; and a non-transitory computer-readable storage medium including instructions executed by one or more computers”. A plain reading of the Figures and associated descriptions in the specification reveals that generic processors may be used to execute the claimed steps. The additional elements are recited at a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to no more than mere instructions to apply the exception using generic computer components (See MPEP 2106.05(f)) and limits the judicial exception to a particular environment (See MPEP 2106.05(h)). Mere instructions to apply an exception using a generic computer component and limiting the judicial exception to a particular environment doesn’t integrate the abstract idea into a practical application in Step 2A. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Hence, independent claims 1, 10, and 16 are directed to an abstract idea.
Dependent claims 2-9, 11-15, and 17-20, recite similar additional elements as the independent claims including generic computer components, such as “the computer system, the graphical user interface, machine learning, the investment asset dashboard, a text notification, an email notification, the data storage system comprising instructions executed by one or more processors, a trained machine learning model, the non-transitory computer-readable storage medium including instructions executed by computers”. The judicial exception is not integrated into a practical application because the additional elements in the dependent claims are also recited at a high-level of generality such that it amounts to more no more than mere instructions to apply the exception using generic computer components. Therefore, the additional elements do not integrate the abstract idea into a practical application because they also do not impose any meaningful limits on practicing the abstract idea. Also, the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement of the functioning of a computer system itself; the claims do not effect a transformation or reduction of a particular article to a different state or thing; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Step 2B (Does the claim recite additional elements that amount to significantly more than the judicial exception?) – 2019 PEG pg. 56 (See MPEP 2106.05)
Independent claims 1, 10, and 16 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the recited additional elements amount to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)) and limits the judicial exception to the particular environment of computers (See MPEP 2106.05(h)). The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the function of the elements when each is taken alone. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept in Step 2B.
In addition, the dependent claims 2-9, 11-15, and 17-20 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of the dependent claims to perform the claimed limitations, amounts to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)). Similar to the independent claims, mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Also, for the same reasoning as the independent claims, the additional elements of the limitations of the dependent claims, when considered individually and as an ordered combination, together do not offer significantly more than the sum of the functions of the elements when each is taken alone and the dependent claims as a whole, do not amount to significantly more than the abstract idea itself. For these reasons, the dependent claims also are not patent eligible.
Response to Arguments
Applicant’s arguments with respect to claims 1-20 have been fully considered by the Examiner. Applicant’s arguments and amended claims have been considered with respect to the rejections pursuant to 35 U.S.C. 103, and the previous rejections are withdrawn as further detailed in the nonfinal office action above.
Applicant’s arguments with respect to the rejection of claims 1-20 under 35 USC 101 have been fully considered by the Examiner. However, the Examiner does not find the Applicant’s arguments persuasive, and therefore the rejections of claims 1-20 under 35 USC 101 are maintained.
The Applicant argues that under Prong 1 of Step 2A of the 2019 PEG, that the claims recite subject matter for “using a trained machine learning model in a closed loop system that periodically updates the trained machine learning model via feedback obtained from outputs produced by the model in response to inputs to refine the model and generate an improved version of the model” integrates any alleged abstract idea into a practical application by providing a specific technical improvement consistent with the October 2019 Patent Eligibility Guidance Update. Applicant further argues on pages 8 and 9 of their Remarks that the specific technical solution addresses a well-recognized problem in machine learning of degradation over time as market conditions and data patterns evolve by providing a feedback loop to improve training data by using results obtained from the model to improve the model. Applicant further argues that the claims represent a particular technical solution and are patent eligible for similar reason as Example 39 of the USPTO August 4, 2025 memorandum. Applicant additionally argues on page 9 of their remarks that the specific combination of two advanced machine learning techniques to determine physical assets and impacts and populate an investment dashboard with physical location information for assets along with automated push messages improves how users interact and understand their financial holdings and addresses a technical problem for providing knowledge of these consideration with respect to financial instruments. Applicant further cites Ex parte Desjardins on pages 9 and 10 of their remarks and state similarly the claims reflect the improvements to the existing technological field and are patent eligible.
Examiner respectfully disagrees with Applicant’s argument that the claimed amended independent limitations are indicative of integration into a practical application under Prong 2 of Step 2A of the PEG. Using a computer and a trained machine learning model to: receive financial asset information, locate and extract related physical asset or impact information by applying a combination of two machine learning models that are periodically updated using a closed loop feedback system, composing an investment asset dashboard displayed on a GUI, and providing an automated push notification to the user; is nothing more than executing instructions to apply the exception to a computer. This is interpreted by the Examiner as using a computer as a tool to perform an abstract idea (See MPEP 2106.05(f)). The additional elements of “a computer system, machine learning, a long short-term memory (LSTM) network, bidirectional encoder representations from transformers (BERT), natural language processing (NLP), an artificial intelligence (AI) based knowledge tree, a trained machine learning model, an investment asset dashboard, a graphical user interface in communication with the computer system; a computing system comprising a data storage system comprising instructions executed by one or more processors; and a non-transitory computer-readable storage medium including instructions executed by one or more computers” are recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components (See MPEP 2106.05(f)). There is no improvement to the claimed computer elements, or to any other technology or technical field. The only improvements identified in the specification are generic speed and efficiency improvements inherent in applying the use of a computer to any task. Therefore, the claimed limitations do not meet the criteria or considerations as indicative of integration into a practical application.
Examiner respectfully disagrees with Applicant’s argument that the claims are patent eligible for similar reasons as Example 39. Applicant’s claims are unlike Example 39 which held that the claims are directed to the technical field of training an analytics model and predicting labels using the trained analytics model which do not recite subject matter which falls within the groupings of abstract ideas defined by the 2019 PEG. As explained further in the office action above, Applicant’s claims fall within the ”Certain Methods of Organizing Human Activity”. In regards to Applicant’s arguments regarding the utilization of machine learning algorithms and the feedback loop, Applicant’s claims are similar to claim 2 of Example 47 which included receiving continuous training data, using the computer to discretize the continuous training data to generate input data, training the artificial neural network using the input data, and detecting anomalies using the trained artificial neural network; which represented mere instructions to implement an abstract idea on a computer. Furthermore, the Federal Circuit in Recentive Analytics, Inc., v. Fox Corp., Appeal No. 2023-2437 (Fed. Cir. Apr. 18, 2025), held 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’s arguments that the claims provide an improvement in technology similar to Ex Parte Desjardins is also not persuasive because Applicant’s claims are not similar to Desjardins. Unlike Desjardins, Applicant’s claims do not provide for an improved retrained machine learning model utilizing feedback data with changed parameters that provided for an improvement to the machine learning model itself. Applicant’s claims represent mere instructions to implement an abstract idea on a computer and do not provide for a technological improvement to the computer or for an improvement to any other technology. Therefore, the rejections of the claims pursuant to 35 USC 101 are maintained.
Subject Matter Overcoming 35 USC §102/§103
Claims 1-20 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 101 set forth in this Office Action.
The following is an examiner’s statement of reasons for subject matter of independent clams 1, 10, and 16 overcoming the prior art rejections under 35 USC §102/§103.
The closest prior art of record is US 2023/0068433 to Puls (hereinafter referred to as Puls), US 2022/0237700 to Sreenivasan (hereinafter referred to as Sreenivasan), and US 2022/0414773 to Alen (hereinafter referred to as Alen). Allowable subject matter is indicated because none of the prior art of record, alone or in combination, appears to teach or fairly suggest or render obvious the combination set forth in independent claims 1, 10, and 16. For independent claim 1, the prior art of Puls, Sreenivasan, and Alen specifically do not disclose: “using, by the computer system, the financial asset input to locate and extract physical asset data or impact data based on the financial asset input; determining, by the computer system, physical assets or impacts of financial instruments based on the physical asset data or the impact data, wherein the determining includes applying machine learning using a combination of at least two of: a long short-term memory (LSTM) network, bidirectional encoder representations from transformers (BERT), natural language processing (NLP), or and an artificial intelligence (A)-based knowledge tree, wherein the machine learning uses a trained machine learning model in a closed loop system that periodically updates the machine learning model via feedback; obtained from outputs produced by the model in response to inputs to refine the model and generate an improved version of the model; composing, by the computer system, an investment asset dashboard for the user based on the physical assets or the impacts, the investment asset dashboard including physical location information for the physical assets; displaying, on a graphical user interface in communication with the computer system, the investment asset dashboard; and providing, by the computer system, automated push notifications to the user on a periodic basis selected by the user from the interface, wherein the push notifications include a qualitative message regarding at least one of the physical assets or the impacts of the financial instruments.” Similar reasoning and rationale apply to the other independent claims 10, and 16. Dependent claims 2-9, 11-15, and 17-20 are allowable over the prior art by virtue of their dependency on an allowed claim.
Conclusion
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/PAUL S SCHWARZENBERG/Primary Examiner, Art Unit 3695 6/8/2026
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