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 action is in response to the amendment filed 11/7/2025. Applicant has amended claims 1, 3-4, 9-11, 13, 15-16, 18-20, cancelled claims 2, 12, 17 and added new claims 21-23. Non-elected claims 3, 6-7, 10, 13 and 18 are withdrawn. Accordingly, claims 1, 4-5, 8-9, 11, 14-16 and 19-23 are pending for examination.
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, 4-5, 8-9, 11, 14-16 and 19-23 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.
Claims 1, 11, 16 and 20 recite the abstract idea of “making prediction and identifying action likely to be performed based on information in a loss report associated with loss event and performing the action before the claim data is assigned”, which is grouped under “Certain Methods of Organizing Human Activity” such as “fundamental economic principles or practices”- insurance/mitigating risk (MPEP 2016.04(a)).
Specifically, claims 1, 11, 16 and 20 recite “generating….and at a time during a …. associated with a loss event, a preliminary prediction of a destination for claim data associated with the loss event”, “the preliminary prediction is generated by a…. routing model based on information in a loss report, associated with the loss event, at the time, and the preliminary prediction is characterized by a confidence level”, “a claim router is also …routing model, following completion of the … to generate a final prediction indicating the destination for the claim data”, “the preliminary prediction corresponds with a … instance of the final prediction that the claim route would produce, using the …routing model, based on the information in the loss report at the time”, “determining…that the confidence level is above a predefined threshold”, “identifying…an action that: is likely to be performed by a worker associated with the destination and is likely to be performed following assignment of the claim data to the destination”, “causing…and by displaying a prompt for the action …reporting…used by the representative, performance of the action ….and before the claim data is assigned to the destination, wherein performance of the action…reduces a likelihood of at least one of: a second ….following assignment of the claim data to the destination or performance of the action by the worker in associated with the second …”
Accordingly, claim 1, 11, 16 and 20 recite an abstract idea.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP 2106.04II), the additional elements of claims 1, 11, 16 and 20 such as “by one or more processors”, “during communication session between a representative and a caller”, “communication session”, “via a tool”, “memory storing computer-executable instructions that when executed by the one or more processors, cause the computing system to perform (claim 11)”, “one or more non-transitory computer-readable media storing computer-executable instructions (claim 16)” and “means for…via a processor based on a computer-executable instructions stored in memory (claim 20)” represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular technological environment or field of use. With respect to “generated by a machine learning model”, the claims lack detail regarding how the preliminary prediction is “generated” (MPEP 2106.05(f)(1)) other than it is “by a machine learning (routing) model”. 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 35 U.S.C. 101. Therefore, as Applicant has neither placed a restriction on how “generating” is performed nor describe how the functions are accomplished the limitations do not integrate the abstract idea into a practical application as they are no more than “apply it” (MPEP 2106.05(f)(1)). With respect to “simulated”, the claims lack detail regarding how “simulating” is performed (MPEP 2106.05(f)(1)). 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.
When analyzed under step 2B (MPEP 2106.04II), because the additional elements do no more than represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use, they do not provide an improvement to computer functionality, or an improvement to another technology or technical field and, therefore, do not amount to significantly more than the judicial exception itself (MPEP 2106.05(I)(A)(f)&(h)).
Hence, claims 1, 11, 16 and 20 are not patent eligible.
Depending claims 4-5, 8-9, 14-15, 19 and 21-23 further recite “…is trained based on a training data set associated with assignments of previous claim data to destinations based on corresponding loss reports, to identify features that are predictive of final destinations that processed the previous claim data (claim 4)”, “taking a recorded statement from the … (claim 5)”, “…the loss report based on ….via the reporting…during the … (claim 8),” “the representative performs the action, based on the prompt…..and before the claim data is assigned to the destination (claim 9)”, “at least one of : taking a recorded statement from the …, requesting a document from the …. or a jurisdiction action associated with a jurisdiction in which the loss event occurred (claim 14), “the representative or the worker proactively performs the action during the ... and before the claim data is assigned to the destination, based on the prompt (claims 15, 19)”, “wherein the …routing model is executed by the claim router, to generate the preliminary prediction, during the ….(claim 21)”, “wherein the claim router is ….execute a first instance of the …routing model, and the preliminary prediction is generated using a second instance of the … routing model that is separate from the first instance executed by the claim router (claim 22)” and “wherein reduction of the likelihood of the second…based on performance of the action during the ….the would otherwise be used during an attempt to engage in the second… (claim 23) which is grouped under “Certain Methods of Organizing Human Activity” such as “fundamental economic principles or practices”- insurance/mitigating risk (MPEP 2016.04(a)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP 2106.04II), the additional elements of claims 4-5, 8-9, 14-15, 19 and 21-23, such as “(during) communication session” (claims 8, 9, 19, 23), “caller (claims 5, 14)”, “by the one or more processors (claim 8), “input provided via the reporting tool (claim 8)” represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular technological environment or field of use. With respect to “machine learning model… is trained/executed (claims 4, 21, 22)” and “reduces usage of computing resources (claim 23)”, the claims lack detail regarding how “generating”, “executing” and “reducing” are performed (MPEP 2106.05(f)(1)). 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.
When analyzed under step 2B (MPEP 2106.04II), because the additional elements do no more than represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use, they do not provide an improvement to computer functionality, or an improvement to another technology or technical field and, therefore, do not amount to significantly more than the judicial exception itself (MPEP 2106.05(I)(A)(f)&(h)).
Hence, depending claims 4-5, 8-9, 14-15, 19 and 21-23 are not patent eligible.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 11, 16 and 20 recite “a claim router is also configured to...” which renders the claims indefinite. More specifically, the term “also” means “in addition to” and since there is no clear antecedent for “claim router” and the claims have not already introduced another claim router or element that is “configured to” use the machine learning routing model. The claim is structurally confusing. This raises questions to the intended metes and bounds of the claimed invention. Depending claims 4-5, 8-9, 14-15, 19 and 21-23 inherit the same rejections under 35 U.S.C. 112, second paragraph.
Claim 20 limitations “means for generating…, “means for determining…”, “means for identifying …” and “mean for causing…” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function, MPEP2181 III. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 1, 4-5, 8-9, 11, 14-16 and 19-23 have been searched and reviewed. No prior art has been found that discloses, either expressly or inherently, all of the limitations of the claimed invention. Even though Hilborn (US 2009/0240531 A1) discloses generating, by one or more processors, and during a communication session between a representative and a caller associated with a loss event, a preliminary prediction of a destination for claim data associated with the loss event, identifying, by the one or more processors, an action likely to be performed by a worker associated with the destination following assignment of the claim data to the destination, causing, by the one or more processors, and by displaying a prompt for the action performance of an action during the communication session and before the claim data is assigned to the destination, see at least claims 1, 24 of Hillborn and paragraphs 0068, 0038, 0061, 0040, 0054 and Fig 2, the rest of limitations recited in the independent claims 1, 11, 16 and 20 considered as a whole, is not taught by the prior arts found in examiner’s search. Therefore, no rejection under 102/103 is made.
Related But Not Relied Upon
Relevant prior art cited but not applied: Westerberg el al. (US 2009/0177499 A1), directed to routing and determining insurance claim losses.
Response to Arguments
Applicant's arguments filed 11/7/2025 have been fully considered but they are not persuasive.
Applicant argues that Claim 20 limitations “means for generating…, “means for determining…”, “means for identifying …” and “mean for causing…” are not indefinite. The Examiner disagrees. The claims use “means for”, which triggers a strong presumption of means-plus-function treatment under 35. U.S.C 112(f). The added language – “via a processor based on computer-executable instructions stored in memory”- does not provide sufficient structure to overcome that presumption. “Generating”, “identifying” and “causing” are purely functional. A “processor” + “instructions in memory” is considered generic computing structure, not a specific algorithm or structure. Since specific algorithm is not identified in the spec that tied to these functions, the claims are indefinite under 112(b).
Applicant argues that the claims are statutory under 35. U.S.C. 101 because 1) the claims are not directed to abstract idea 2) the amended claim 1 recites “at a time during a communication session between a representative and a caller” 3 the amended claim 1 recites that the performance of action reduces likelihood of a second communication session and performance of action 3) the amended claim 1 recites “a machine learning model”. The examiner disagrees. Claims 1, 11, 16 and 20 recite the abstract idea of “making prediction and identifying action likely to be performed based on information in a loss report associated with loss event and performing the action before the claim data is assigned”, which is grouped under “Certain Methods of Organizing Human Activity” such as “fundamental economic principles or practices”- insurance/mitigating risk (MPEP 2016.04(a)). The additional element of “during communication session between a representative and a caller” represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular technological environment or field of use. With respect to “performance of action reduces likelihood of a second communication session and performance of action”, the claims lack details regarding how the desired result (reduces likelihood) is achieved. Therefore, these functionalities are no more than “apply it” (MPEP 2106.05(f)(1)) and do not provide a practical application. Further, as the additional elements do not provide a practical application, they do not improve computer functionality and do not improve another technology or technical field. With respect to “generated by a machine learning model”, the claims lack detail regarding how the preliminary prediction is “generated” (MPEP 2106.05(f)(1)) other than it is “by a machine learning (routing) model”. 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 35 U.S.C. 101. Therefore, as Applicant has neither placed a restriction on how “generating” is performed nor describe how the functions are accomplished the limitations do not integrate the abstract idea into a practical application as they are no more than “apply it” (MPEP 2106.05(f)(1)).
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.
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/CHIA-YI LIU/Primary Examiner, Art Unit 3692
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