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
This Final office action is in response to the application filed on September 29, 2023, the amendments to the claims filed on April 16, 2025, the Request for Continued Examination filed on September 29, 2025, and the amendments to the claims filed on January 15, 2026.
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 21-39 and 41 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 21-39 and 41are directed to a system, method, or product which are/is one of the statutory categories of invention. (Step 1: YES).
The Examiner has identified independent method Claim 33 as the claim that represents the claimed invention for analysis and is similar to independent system Claim 21 and product Claim 38. Claim 33 recites the limitations of training a machine learning (ML) model to correlate aspects of appearance and voice with health-related characteristics using a database of image, video, and/or audio information associated with individuals having known health-related characteristics; receiving, from a user device, image data and audio data representing an appearance and voice of an applicant; inputting the image data and the audio data of the applicant into the ML model, wherein the ML model outputs identified health-related characteristics for the applicant based upon the input of the image data and the audio data; generating a list of identified health-related characteristics of the applicant output by the ML model; generating one or more terms for a health-related service to be provided to the applicant based on the list of the identified health-related characteristics; and causing the user device to present the generated one or more terms to and the generated list to the applicant.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity/mental processes. Generating a list of the health-related characteristics of the applicant recites a fundamental economic practice. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice/concepts performed in the human mind, then it falls within the “Certain Methods of Organizing Human Activity”/“Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. The at least one memory, at least one processor, database, user device, and computer system of Claim 21, database and user device in Claim 33, and at least one memory, at least one processor, database, and mobile device of the applicant in Claim 38 is just applying generic computer components to the recited abstract limitations. The machine-learning model in Claims 21, 33, and 38 appears to be just software. Claims 21 and 38 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims are abstract)
This judicial exception is not integrated into a practical application. In particular, the claims only recite at least one memory, at least one processor, database, user device, and computer system of Claim 21, database and user device in Claim 33, and at least one memory, at least one processor, database, and mobile device of the applicant in Claim 38. The computer hardware is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore claims 21, 33, and 38 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. See Applicant’s specification para. [0029, 0069, 0070] about implementation using general purpose or special purpose computing devices and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. In addition, performing the judicial exception steps using ML merely confines the use of the abstract idea to a particular technological environment and thus fails to add an inventive concept to the claims. See MPEP 2105(h). Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Thus claims 21, 33, and 38 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 22-32, 34-37, 39 and 41 further define the abstract idea that is present in their respective independent claims 21, 33, and 38 and thus correspond to Certain Methods of Organizing Human Activity/Mental Processes and hence are abstract for the reasons presented above. Claims 22, 27-30, 34, and 39 further details of the data stored in the database, the ML model, and type of neural network; Claims 23, 23, and 41 further define the type of insurance; Claims 24-26, 31, 32, and 37 further define the health-related characteristics. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the claims 22-32, 34-37, 39, and 41 are directed to an abstract idea. Thus, the claims 21-39 and 41 are not patent-eligible.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-39 and 41 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,828949. Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations of one another where the elements of the current claims are found entirely within claims 1-20 of the ‘949 patent.
Response to Arguments
Applicant's arguments filed January 15, 2026 have been fully considered but they are not persuasive.
Applicant’s arguments regarding the 35 USC 101 rejection of record (Remarks, pages 7-11) are acknowledged, however they are not persuasive. Specifically, applicant argues that the claims are not directed to an abstract idea under step 2A (Remarks, pages 7-9). However, the claims are clearly focused on the combination of those abstract-idea processes. The advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions. They are therefore directed to an abstract idea.
Specifically, applicant argues that the limitations of the claims are integrated into a practical application/improvement in technology (Remarks, pages 8-9). The claims only recite at least one memory, at least one processor, database, user device, and computer system of Claim 21, database and user device in Claim 33, and at least one memory, at least one processor, database, and mobile device of the applicant in Claim 38. The computer hardware is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. These additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Applicant’s arguments that the claims are directed to significantly more (Remarks, pages 9-11) are acknowledged, however they are not persuasive. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more to the exception. The additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component, which cannot provide an inventive concept. See MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more.
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 LINDSAY M MAGUIRE whose telephone number is (571)272-6039. The examiner can normally be reached Monday to Friday 8:30 to 5:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached on (571) 270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Lindsay Maguire
2/6/26
/LINDSAY M MAGUIRE/Primary Examiner, Art Unit 3619