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 .
Response to Arguments
2. The Amendment filed on August 10, 2026 has been entered. The examiner acknowledges the amendments to claims 1, 12, 13, and 18.
Rejections under 35 U.S.C. § 101: Applicant argues the independent claims do not recite abstract ideas. Results of the examination of the claims under 35 U.S.C. § 101, as detailed later in this analysis, indicate otherwise.
Given the abstract ideas presented in the claims, eligibility was next examined in the context of a practical application. The previous Office Action examined paths to a practical application and these were discussed during the aforementioned interview of July 15, 2026, as stated in the Applicant’s remarks.
The amended claims accurately reflected the development of the machine learning model (MLM) as a potential path to eligibility, given what was disclosed in the specification. Since the specification did not disclose the training of the MLM, or what the algorithm used as inputs and how the inputs interact with other variables to generate a prediction and the output of the model (i.e., anticipated result, prediction, future state), it is unclear what the machine learning model was “learning.” A basic disclosure of the algorithm function is needed to support the concept of machine learning, where an algorithm maps inputs to the predicted outputs, in the face of changing conditions, as opposed to a conventional computer simply responding to a change in input and following programmed instructions. Also needed is a comparison of the model output with the real world results, and a statement of the use of the results to retrain, adjust or improve the parameters of the MLM in order to support the claim of training a MLM. In the absence of this information, the Examiner concludes that the invention fails to achieve a practical application and the rejections under 35 U.S.C. § 101 will not be withdrawn.
Claim Rejections – 35 U.S.C. § 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, 17-22 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter. The claims, 1-3, 5-15, 17-22 are directed to a judicial exception (i.e., law of nature, natural phenomenon, abstract idea) without providing significantly more.
Step 1
Step 1 of the subject matter eligibility analysis per MPEP § 2106.03, required the claims to be a process, machine, manufacture or a composition of matter. Claims 1-3, 5-15, 17-22 are directed to a process (method), machine (system), and product/article of manufacture, which are statutory categories of invention.
Step 2A
Claims 1-3, 5-15, 17-22 are directed to abstract ideas, as explained below.
Prong one of the Step 2A analysis requires identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and determining whether the identified limitation(s) falls within at least one of the groupings of abstract ideas of mathematical concepts, mental processes, and certain methods of organizing human activity.
Step 2A-Prong 1
The claims recite the following limitations that are directed to abstract ideas, which can be summarized as being directed to a method, the abstract idea, of analyzing the risk of a decision and actions taken, the resulting impact it has upon an organization, and developing mitigations to potential negative impact events or consequences of that decision.
Claim 13 discloses An enterprise risk relationship document method of an enterprise, comprising:
receiving, a risk relationship document request associated with a particular risk relationship identifier; (economic principles or practices, calculating costs, hedging insurance, mitigating risk; managing personal behavior or relationships or interactions with people, following rules or instructions; mental processes, observation, evaluation, judgement, opinion),
responsive to the risk relationship document request, retrieving information from a risk relationship data store, wherein the risk relationship data store contains records associated with a plurality of risk relationships between the enterprise and parties, and, for each risk relationship, a risk relationship identifier, a party identifier, a communication address, and at least one risk relationship parameter; (economic principles or practices, calculating costs, hedging insurance, mitigating risk; managing personal behavior or relationships or interactions with people, following rules or instructions; mental processes, observation, evaluation, judgement, opinion),
creating a risk relationship document associated with all of: (i) proof of insurance, (ii) a Certificate Of Insurance ("COi"), (iii) an Evidence Of Property ("EOP"), (iv) a Statement Of Insurance ("SOI"), and (v) a state-specific document, wherein the risk relationship document is created based on the retrieved information; (economic principles or practices, calculating costs, hedging insurance, mitigating risk; managing personal behavior or relationships or interactions with people, following rules or instructions; mental processes, observation, evaluation, judgement, opinion),
determining a set of certificate holders
adjusting the determined set of certificate holders by removing at least one certificate holder from the determined set of certificate holders to confirm removal of the at least one certificate holder;
generating an adjusted set of certificate holders;
sending the risk relationship document to each certificate holder in the adjusted set of certificate holders; (managing personal behavior or relationships or interactions with people, following rules or instructions; mental processes, observation, evaluation, judgement, opinion),
sending information about the risk relationship document to the communication address associated with the particular risk relationship identifier, reducing unnecessary messages; and
exchanging data to support users by including information about the risk relationship document, (economic principles or practices, calculating costs, hedging insurance, mitigating risk; managing personal behavior or relationships or interactions with people, following rules or instructions; mental processes, observation, evaluation, judgement, opinion).
Additional limitations employ the method to provide communication via at least one of seven methods (managing personal behavior or relationships or interactions with people, following rules or instructions; mental processes, observation, evaluation, judgement, opinion- claim 14), wherein the enterprise is an insurer, the risk relationships are associated with insurance policies, and the parties are associated with insureds, (economic principles or practices, calculating costs, hedging insurance, mitigating risk; managing personal behavior or relationships or interactions with people, following rules or instructions; applying mental processes, observation, evaluation, judgement, opinion- claim 15), wherein a plurality of risk relationship documents of different types are created and transmitted, (economic principles or practices, calculating costs, hedging insurance, mitigating risk; managing personal behavior or relationships or interactions with people, following rules or instructions; applying mental processes, observation, evaluation, judgement, opinion - claim 17).
Each of these claimed limitations employ organizing human activity in the form of fundamental economic principles and practices based on mitigating risk or calculating costs, hedging insurance, managing personal behavior or relationships or interactions with people, following rules or instructions, or performing mental processes including, observation, evaluation, judgement, and opinion.
Claims 1-3, 5-12, 18-22 recite similar abstract ideas as those identified with respect to claims 13-15, 17.
Thus, the concepts set forth in claims 1-3, 5-15, 17-22 recite abstract ideas.
Step 2A-Prong 2
As per MPEP § 2106.04, while the claims 1-3, 5-15, 17-22 recite additional limitations which are hardware or software elements such as implemented via a back-end application computer server, a computer processor of the back-end application computer server, encrypted electronic records, automatically creating a risk relationship document, executing an artificial intelligence algorithm with one or more clients or contracts associated with a particular insured as input, automatically determining a set of certificate holders as output; providing adjustment feedback to the artificial intelligence algorithm so that performance of the artificial intelligence algorithm can be automatically improved; generating a pop-up window automatically establishing a communication link and transmitting, and exchanging data with a remote device via security features and a distributed communication network to support interactive user interface displays, these limitations are not sufficient to qualify as a practical application being recited in the claims along with the abstract ideas since these elements are invoked as tools to apply the instructions of the abstract ideas in a specific technological environment. The mere application of an abstract idea in a particular technological environment and merely limiting the use of an abstract idea to a particular technological field do not integrate an abstract idea into a practical application (MPEP § 2106.05 (f) & (h)).
Evaluated individually, the additional elements do not integrate the identified abstract ideas into a practical application. Evaluating the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually.
The claims do not amount to a “practical application” of the abstract idea because they neither (1) recite any improvements to another technology or technical field; (2) recite any improvements to the functioning of the computer itself; (3) apply the judicial exception with, or by use of, a particular machine; (4) effect a transformation or reduction of a particular article to a different state or thing; (5) provide other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
Accordingly, claims 1-3, 5-15, 17-22 are directed to abstract ideas.
Step 2B
Claims 1-3, 5-15, 17-22 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination, do not amount to significantly more than the abstract idea.
The analysis above describes how the claims recite the additional elements beyond those identified above as being directed to an abstract idea, as well as why identified judicial exception(s) are not integrated into a practical application. These findings are hereby incorporated into the analysis of the additional elements when considered both individually and in combination.
For the reasons provided in the analysis in Step 2A, Prong 1, evaluated individually, the additional elements do not amount to significantly more than a judicial exception. Thus, taken alone, the additional elements do not amount to significantly more than a judicial exception.
Evaluating the claim limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. In addition to the factors discussed regarding Step 2A, prong two, there is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely amount to instructions to implement the identified abstract ideas on a computer.
Therefore, since there are no limitations in the claims 1-3, 5-15, 17-22 that transform the exception into a patent eligible application such that the claims amount to significantly more than the exception itself, the claims are directed to non-statutory subject matter and are rejected under 35 U.S.C. § 101.
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.
Independent claims 1, 13, and 18, were previously not rejected by prior art under 35
U.S.C. § 103. Dependent claims 2-3, 5-12 and 14-15, 17, and 19-22 are not rejected by
prior art under 35 U.S.C. § 103 because of their inherent dependency on claims 1, 13, and 18.
The prior art made of record and not relied upon is considered pertinent to applicant's
disclosure or directed to the state of the art is listed on the enclosed PTO-892. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL BOROWSKI whose telephone number is (703)756-1822, and email is michael.borowski@uspto.gov. The examiner can normally be reached M-F 8-4:30.
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/MB/
Patent Examiner, Art Unit 3624
/MEHMET YESILDAG/Primary Examiner, Art Unit 3624
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