DETAILED ACTION
Status of Claims
1. This office action is in response to filing dated 7/14/2025.
2. Claims 1-3, 5-15, 17-20 are pending.
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 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 1-3, 5-15, 17-20
Claims 1-3, 5-15, 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Claims 1-14 are directed to a method; claims 15-19 are directed to system; claim 20 is directed to a computer program product – each of which is one of the statutory categories of inventions.
Step 2A: A claim is eligible at revised Step 2A unless it recites a judicial exception and the exception is not integrated into a practical application of the application.
Prong 1: Prong One of Step 2A evaluates whether the claim recites a judicial exception (an abstract idea enumerated in the 2019 PEG, a law of nature, or a natural phenomenon).
Groupings of Abstract Ideas:
I. MATHEMATICAL CONCEPTS
A. Mathematical Relationships
B. Mathematical Formulas or Equations
C. Mathematical Calculations
II. CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY
A. Fundamental Economic Practices or Principles (including hedging, insurance, mitigating risk)
B. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)
C. Managing Personal Behavior or Relationships or Interactions between People (including social activities, teaching, and following rules or instructions)
III. MENTAL PROCESSES.
Concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
See MPEP 2106.04 (a) (2) Abstract Idea Groupings [R-10.2019]
Independent claim 1, 15 and 20 are directed to – processing historical claim and remittance information to extract prior authorization data; performing a probabilistic analysis on the prior authorization data for a procedure to generate a first metric and a second metric, the first metric comprising a percentage of claims including the procedure in which prior authorization is applied for and the second metric comprising a percentage of claims including the procedure in which prior authorization was not applied for and were denied payment for not applying for prior authorization; determining whether the first metric satisfies a first authorization threshold and the second metric satisfies a second authorization threshold, the first and second thresholds being associated with a prior authorization rule corresponding to the procedure; and generating a recommendation on whether to obtain prior authorization before performing the procedure based on whether the first metric satisfies the first authorization threshold and the second metric satisfies the second authorization threshold; generating, a precision metric for the prior authorization rule, wherein: the precision metric is given by a first quotient where a number of true positive events for the prior authorization rule is the dividend and a sum of true positive events plus false positive events for the prior authorization rule is the divisor when the prior authorization rule specifies that prior authorization is required; and the precision metric is given by a second quotient where a number of true negative events for the prior authorization rule is the dividend and a sum of true negative events plus false positive events for the prior authorization rule is the divisor when the prior authorization rule specifies that prior authorization is not required; determining, that the precision metric satisfies a precision metric threshold and modifying the prior authorization rule – that constitutes Mathematical Concepts and/or Mental Process and/or Certain Methods of Organizing Human Activity.
The dependent claims further limit the abstract idea to – receiving a prior authorization inquiry and communicating a response to the provider in response; the recommendation comprises a recommendation to delay the procedure until prior authorization is authorized by a payer; determining prior authorization rules based on the first and second metric; determining whether the precision metric satisfies a threshold and generating a recommendation for modifying the prior authorization rule when the precision metric satisfies the precision metric threshold; receiving prior authorization rule from a payor; modifying the prior authorization rule comprises a recommendation for modifying the prior authorization rule; modifying the prior authorization rule responsive to receiving the request from payor to modify the prior authorization rule; filtering the historical claims and remittance information to remove information leaving a subset of information; performing a first and second statistical hypothesis test on the plurality of features having greatest impact on the first and second metric – that also constitute Mathematical Concepts and/or Mental Process and or Certain Methods of Organizing Human Activity.
Hence under Prong One of Step 2A, claims 1-29 recite a judicial exception.
Prong 2: Prong Two of Step 2A evaluates whether the claim recites additional elements that integrate the judicial exception into a practical application of the exception.
Limitations that are indicative of integration into a practical application include:
Improvements to the functioning of a computer or to any other technology or technical field – see MPEP 2106.05(a)
Applying the judicial exception with, or by use of, a particular machine – see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing – see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception – see MPEP 2106.05(e)
Limitations that are not indicative of integration into a practical application include:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea – see MPEP 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception – see MPEP 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Additional elements recited by the claims, beyond the abstract idea, include: one or more processors; one or more non-transitory computer readable storage media. Examiner finds that any additional element(s), beyond the judicial exception, has been recited at a high level of generality such that the claim limitations amount to no more than mere instructions to apply the exception using generic components (see MPEP 2106.05(f)) or insignificant data gathering activities (see MPEP 2106.05(g)).
The combination of additional elements does not purport to improve the functioning of a computer or effect an improvement in any other technology or technical field. Instead, the additional elements do no more than use the computer as a tool and/or link the use of the judicial exception to a particular technological environment or field of use. The focus of the claims is not on improvement in computers, but on certain independently abstract ideas – performing probabilistic analysis on prior authorization data, generating metrics relating to prior authorization data; generating a recommendation on whether to obtain prior authorization based on whether the metrics satisfy authorization threshold; generating a precision metric based on ratios of true positive with false positive and true negative with false negative and determining whether the precision metric satisfies the precision metric threshold prior of the prior authorization rule – that merely uses generic computers as tools. Steps that do no more than spell out what it means to “apply it on a computer” cannot confer patent eligibility. Indeed, nothing in claim 1 improves the functioning of the computer, makes it operate more efficiently, or solves any technological problem. See Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384-85 (Fed. Cir. 2019). Therefore, the additional elements, individually or in combination, do not integrate the judicial exception into a practical application.
Hence, the claims are ineligible under Step 2A.
Step 2B: In Step 2B, the evaluation consists of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception.
As discussed in Prong Two, the additional elements in the claims amount to no more than mere instructions to apply the exception using generic components, which is insufficient to provide an inventive concept.
When considered individually or as an ordered combination, the additional elements fail to transform the abstract idea of – performing probabilistic analysis on prior authorization data, generating metrics relating to prior authorization data; generating a recommendation on whether to obtain prior authorization based on whether the metrics satisfy authorization threshold; generating a precision metric based on ratios of true positive with false positive and true negative with false negative and determining whether the precision metric satisfies the precision metric threshold prior of the prior authorization rule – into significantly more.
See MPEP 2106.05(f) Mere Instructions To Apply An Exception [R-10.2019].
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.
Hence, the claims are ineligible under Step 2B.
Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to a judicial exception without significantly more.
Prior Art
Relevant Prior Art not relied upon but made of record:
US20120185270 Apparatus and method for processing prior authorizations for prescription drugs
US20160180036 Apparatus and method for processing prior authorizations for prescription drugs
US20170046492 Decision tree data processing system
US20140372141 Diverse methods of facilitating a request for prior authorization with a common user experience
US11488027 Targeted data retrieval and decision-tree-guided data evaluation
Response to Arguments
Applicant's arguments filed 7/14/2025 have been fully considered but they are not persuasive.
101
Applicant argues that claim 1 is directed to a technical improvement as stated in para [0040] by reducing the number of rejected claims.
Examiner finds this unpersuasive because any potential reduction of processing load is a) speculative, b) merely reflects an effect or result and c) does not provide a meaningful limitation because it merely applies an abstract idea – probabilistic analysis of prior authorization data – to achieve a desired result. See MPEP 2106.05(f) (1) (cautioning against claims “so result focused, so functional, as to effectively cover any solution to an identified problem”), (3) (“describes “the effect or result dissociated from any method by which maintaining the state is accomplished” and does not provide a meaningful limitation because it merely states that the abstract idea should be applied to achieve a desired result”).
Applicant cites Ex parte Guay, App. No. 16/948,938 to argue that the present claims are analogous.
Examiner respectfully disagrees because first, Ex parte Guay is non-precedential, and secondly, the invention of Guay is completely different from the present claims. The claims of Guay recited a specific manner of reducing latency by sending records of high priority up to bandwidth capacity to second server and sending remaining records over a second communication link thereby reducing latency for latency sensitive information – which the PTAB found to integrate the abstract idea into a practical application. In contrast, neither the specification nor the claims describe features comparable to sending priority records up to bandwidth capacity and sending less urgent records over less constrained fiber optic links. As discussed above, the alleged reduction of number of transmissions in the Applicant’s invention is merely a result which, depending the volume of transactions, may result in either a decrease or even an increase in the number of transmissions. Any increase or decrease is purely speculative and therefore not sufficient to amount to a technical improvement.
The combination of additional elements in claims the claims does not recite (i) an improvement to the functionality of a computer or other technology or technical field; (ii) a “particular machine” to apply or use the judicial exception; (iii) a particular transformation of an article to a different thing or state; or (iv) any other meaningful limitation. See MPEP 2106.05 (a)-(c), (e)-(h). Hence, the additional elements, individually or in combination, do not integrate the abstract idea into a practical application or provide significantly more. See MPEP 2106.05(f) (“Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more.”).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ARUNAVA CHAKRAVARTI whose telephone number is (571)270-1646. The examiner can normally be reached 9 AM - 5 PM ET.
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/ARUNAVA CHAKRAVARTI/Primary Examiner, Art Unit 3692