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
Status of the Claims
The following office action in response to the amendments filed on 5/22/2026.
Claims 1 and 11 are currently amended.
Claims 8 and 18 are cancelled.
Therefore, claims 1-7, 9-17 and 19-20 are pending and addressed below.
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.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites the limitations “wherein”, the claim limitations that contain statement(s) such as "wherein, whereby", that fail to further define the steps or acts to be performed in method claims or the discrete physical structure required of system claims do not limit the scope of a claim or a claim limitation. (See MPEP §2106 II C; In re Johnston, 77 USPQ2d 1788 (CA FC 2006); Intel Corp. v.lnt'l Trade Comm'n, 20 USPQ2d 1161 (Fed. Cir. 1991)). Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. The following are examples of language that may raise a question as to the limiting effect of the language in a claim:(A) statements of intended use or field of use,(B) "adapted to" or "adapted for" clauses,(C) "wherein" clauses, or(D) "whereby" clauses.See MPEP § 2106 II C.
Thus, for at least one of the reasons above, the “wherein” clauses are vague and indefinite for failing to particularly point out and distinctly claim the subject matter.
Dependent claims 2-10 are rejected due to their dependency to a rejected claim 1.
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 1-7, 9-17 and 19-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1-7, 9-17 and 19-20 are directed to a method, a system, which is a process, machine, manufacturer or composition of matter and thus statutory category of invention (Step 1: YES).
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more. The claim recites the limitations of “…obtains benefits disclosure documents; analyzes the benefits disclosure documents and normalizes data extracted from the benefits disclosure documents; collects and analyzes social data; receives the social data and automatically utilizes the social data to retrieve a social media profile uniform resource indicator (URL) associated with a company; utilizes the social media profile URL associated with the company to retrieve a company URL and company information comprising a company name, a list of company office locations, a list of company employees, and/or a list of company leadership names from the social media profile URL; identifies job titles associated with the company via analyzing social media profiles of the company employees associated with the company; saves the company information; passes the company URL and the job titles to at least one third party; analyzes third-party data from at least one document from the at least one third party, wherein the third-party data includes a name, a location, and an occupation; wherein the social data includes contact information from at least one social media profile for a contact and a social media profile URL for the contact based on the benefits disclosure documents; transmits the contact information; receives a curated set of contact information; periodically re-analyzes the social data to identify changes in the contact information, wherein the changes in the contact information include changes in the job titles; automatically transmits at least one notification when identifies the changes in the contact information; determines one or more broker office addresses corresponding to a benefits plan for at least one employer based on the benefits disclosure documents retrieved; determines a number of employees and/or a number of contacts associated with the one or more broker office addresses based on the social data; determines at least one pair of latitude and longitude coordinates of the one or more broker office addresses and a pair of latitude and longitude coordinates for the at least one employer; wherein distances between the one or more broker office addresses and an office address of the at least one employer are automatically generated based on the at least one pair of latitude and longitude coordinates of the one or more broker office addresses and the pair of latitude and longitude coordinates for the at least one employer; associates the at least one employer with a most likely of the one or more broker office addresses based on the distance between the one or more broker office addresses and the office address of the at least one employer; adds to or replaces the one or more broker office addresses corresponding to the benefits plan for the at least one employer with a new address selected from a list of office addresses for a broker providing the benefits plan; wherein the new address is selected based on a correlation score with the at least one employer; wherein the correlation score is based off a distance between the new address and the office address of the at least one employer and the number of employees and/or the number of contacts at the new address; generates at least one set of cleaned and de- duplicated service provider identifying information in part by removing duplicate provider identifying information and removing non-descriptive words from the benefits disclosure documents; groups service provider identities that are associated with a single service provider but have differing service provider identifying information, creating service provider identity groupings; generates at least one name tag, generates a capitalization, and classifies at least one service provider type, forms the at least one set of cleaned and de-duplicated service provider identifying information based on the data benefits disclosure documents and the social data, wherein the data benefits disclosure documents is stored in different formats, converting the benefits disclosure documents retrieved into a standardized format; generates a mapping table which links the service provider identity groupings and the benefits disclosure documents; analyzes the at least one master database to generate a second dataset; constructs at least one client list including benefits broker data, employer data, and service provider data; and displays the at least one client list; associates at least three objects of the benefits broker data and at least two objects of the employer data and exports the at least three objects of the benefits broker data and the at least two objects of the employer data into a pre-packaged format”. These recited limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of commercial or legal interactions (including marketing or sales activities; business relations, i.e. obtaining, analyzing and processing data from third-party website and social media to construct the client list including benefits broker data, employer data, and service provider data) but for the recitation of generic computer component. If a claim limitation, under its broadest reasonable interpretation, covers concepts of commercial or legal interactions but for the recitation of generic computer component, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The additional limitations (besides those that recite the abstract idea) include the presence in the claimed system of a server, a processor, a database, a software application, an electronic device, a web crawler, an artificial intelligence module, one or more social media platforms, a search engine, an application programming interface (API), a geocoding program, a master database, a clean data database, a graphical user interface (GUI) and a customer relationship management (CRM) software that are all recited at a high level of generality to perform the functions of “…end-of-sentence (EOS) detection, tokenization, part-of-speech tagging, chunking, and extraction;…obtains… benefits disclosure documents; analyzes… the benefits disclosure documents and normalizes… data; collects and analyzes… social data; receives… the social data and automatically utilizes… the social data; utilizes… the social media profile URL; identifies… job titles associated with the company; saves… the company information; programmatically passes… the company URL and the job titles; analyzes…the third-party data; transmits …the contact information; receives… a curated set of contact information; periodically re-analyzes… the social data; automatically transmits …the notification; determines… one or more broker office addresses; determines… a number of employees based on the scraped data; determines… at least one pair of latitude and longitude coordinates; generated …the distance between the office addresses; associates … the employer with a broker office address; automatically adds… or replaces … the broker office addresses; generates… the service provider identifying information by removing… the duplicate provider identifying information the non-descriptive words using the NLP algorithms; groups… service provider identities; generates …at least one name tag, a capitalization, and classifies… at least one service provider type; forms …the at least one set of cleaned and de-duplicated service provider identifying information; stored… and converting the data benefits disclosure documents into a standardized format; override… the service provider identity groupings based on the overrides databases; generates… a mapping table which links the service provider identity groupings and the benefits disclosure documents; stored…the mapping table and the service provider identifying information; analyzes …the database to generate a second dataset; fills…the clean data database with the dataset; constructs and displays the at least one client list; associates… at least three objects …and exports… the objects … into a pre-packaged format, such that it amounts no more than mere instructions to apply the exception using the generic computer components. The additional limitations of the claim further perform the functions of “…maps and populates… fields …using the data of the pre-packed objects”, which is nothing more than pre-populating a display with the objects data in any other context. Accordingly, the additional elements do not integrate the abstract idea into a particular application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception or amount to an inventive concept. As discussed above with respect to integration of the abstract idea into a practical application, the additional limitations of the server, the processor, the database, the software application, the electronic device, the web crawler, the artificial intelligence module, the one or more social media platforms, the search engine, the application programming interface (API), the geocoding program, the master database, the clean data database, the graphical user interface (GUI) and the customer relationship management (CRM) software that are all recited at a high level of generality to perform the functions of “…end-of-sentence (EOS) detection, tokenization, part-of-speech tagging, chunking, and extraction;…obtains… benefits disclosure documents; analyzes… the benefits disclosure documents and normalizes… data; collects and analyzes… social data; receives… the social data and automatically utilizes… the social data; utilizes… the social media profile URL; identifies… job titles associated with the company; saves… the company information; programmatically passes… the company URL and the job titles; analyzes…the third-party data; transmits …the contact information; receives… a curated set of contact information; periodically re-analyzes… the social data; automatically transmits …the notification; determines… one or more broker office addresses; determines… a number of employees based on the scraped data; determines… at least one pair of latitude and longitude coordinates; generated …the distance between the office addresses; associates … the employer with a broker office address; automatically adds… or replaces … the broker office addresses; generates… the service provider identifying information by removing… the duplicate provider identifying information the non-descriptive words using the NLP algorithms; groups… service provider identities; generates …at least one name tag, a capitalization, and classifies… at least one service provider type; forms …the at least one set of cleaned and de-duplicated service provider identifying information; stored… and converting the data benefits disclosure documents into a standardized format; override… the service provider identity groupings based on the overrides databases; generates… a mapping table which links the service provider identity groupings and the benefits disclosure documents; stored…the mapping table and the service provider identifying information; analyzes …the database to generate a second dataset; fills…the clean data database with the dataset; constructs and displays the at least one client list; associates… at least three objects …and exports… the objects … into a pre-packaged format, above amounts to mere instructions to apply the exception using the generic computer components. The additional limitations of the claim further perform the functions of “…maps and populates… fields …using the data of the pre-packed objects”, which is nothing more than pre-populating a display with the objects data in any other context. When viewing the additional elements either individually or as an ordered combination, the claim as a whole does not amount to significantly more than the judicial exception because the claim does not include improvements to another technology or technical field, improvements to the function of the computer itself, and does not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. In effect, the additional limitations add the words “apply it” (or an equivalent) to the judicial exception, or mere instructions to implement an abstract idea on a computer. Mere instructions to apply an exception using the generic computer component cannot provide an inventive concept. Thus, the claim is not patent eligible.
Independent claim 11 recite limitations substantially similar to claim 1. Thus, the claims are rejected based on the same reasoning as above in claim 1. Thus, the claims are not eligible.
Dependent claims 2-7, 9-10, 12-17 and 19-20 are dependent on claims 1 and 11. Therefore, claims 2-7, 9-10, 12-17 and 19-20 are directed to the same abstract idea of claims 1 and 11. Dependent claims 2-7, 9-10, 12-17 and 19-20 further recite the limitations that merely refer back to further details of the abstract idea. In addition, the additional limitations (besides those that recite the abstract idea) of the server, the email checker webpage, the GUI and the artificial intelligence module included in the dependent claims 4, 7, 9, 10, 14, 17, 19 and 20 that are all recited at a high level of generality to perform the functions of “…determine… the contact information and the domain name of the website, retrieving… data, creating… possible permutations of email addresses, and checking… the possible permutations of email addresses …to determine… valid email addresses…” (claim 4 and claim 14); “retrieve …data, analyze …the data, identify and display …information about the voluntary benefit the employee perk…” (claim 7 and claim 17); “…analyze …the data by breaking… the text of the data into sentences and/or words, assigning… each sentence and/or letter a token, analyzing… each token to generate a compound token, and assigning… each compound token a label… (claim 9 and claim 19); “…receive… a desired benefit plan, analyze… the compound token…, and determine…the geographic locations…and display …a list of the potential customers of the desired benefit plan” (claim 10 and claim 20), such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea.
The dependent claims 2-7, 9-10, 12-17 and 19-20 does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception or amount to an inventive concept. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to nothing more than an instruction to “apply it” with the judicial exception. In addition, the additional limitations (besides those that recite the abstract idea) of the server, the email checker webpage, the GUI and the artificial intelligence module included in the dependent claims 4, 7, 9, 10, 14, 17, 19 and 20 that are all recited at a high level of generality to perform the functions of “…determine… the contact information and the domain name of the website, retrieving… data, creating… possible permutations of email addresses, and checking… the possible permutations of email addresses …to determine… valid email addresses…” (claim 4 and claim 14); “retrieve …data, analyze …the data, identify and display …information about the voluntary benefit the employee perk…” (claim 7 and claim 17); “…analyze …the data by breaking… the text of the data into sentences and/or words, assigning… each sentence and/or letter a token, analyzing… each token to generate a compound token, and assigning… each compound token a label… (claim 9 and claim 19); “…receive… a desired benefit plan, analyze… the compound token…, and determine…the geographic locations…and display …a list of the potential customers of the desired benefit plan” (claim 10 and claim 20), above amounts to mere instructions to apply the exception using the generic computer components. When viewing the additional elements either individually or as an ordered combination, the claim as a whole does not amount to significantly more than the judicial exception because the claim does not include improvements to another technology or technical field, improvements to the function of the computer itself, and does not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. In effect, the additional limitations add the words “apply it” (or an equivalent) to the judicial exception, or mere instructions to implement an abstract idea on a computer. Mere instructions to apply an exception using the generic computer component cannot provide an inventive concept. Thus, when considering the combination of elements and the claimed as a whole, the dependent claims 2-7, 9-10, 12-17 and 19-20 are not patent eligible.
Response to Arguments
Claims rejection under the 35 USC § 112 (b), second paragraph
New ground rejections of claim 1 (and by any dependency claims 2-10) under the 35 USC § 112 (b), second paragraph have been provided in the light the “wherein” clauses.
Previous Claim rejections – 35 USC § 101
The updated rejections of claims 1-7, 9-17 and 19-20 in view of Alice have been provided in the light of Applicant’s amendments.
Applicant's arguments filed 5/22/2026 have been fully considered but they are not persuasive.
Argument 1: Applicant argued that: “…The present invention provides a specific, technological improvement to a technological problem under McRO, …and Enfish…”(Please see the remarks on pages 14-24).
Answer 1: The Examiner respectfully disagrees.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception or amount to an inventive concept. As discussed above with respect to integration of the abstract idea into a practical application, the additional limitations of the server, the processor, the database, the software application, the electronic device, the web crawler, the artificial intelligence module, the one or more social media platforms, the search engine, the application programming interface (API), the geocoding program, the master database, the clean data database, the graphical user interface (GUI) and the customer relationship management (CRM) software that are all recited at a high level of generality to perform the functions of “…end-of-sentence (EOS) detection, tokenization, part-of-speech tagging, chunking, and extraction;…obtains… benefits disclosure documents; analyzes… the benefits disclosure documents and normalizes… data; collects and analyzes… social data; receives… the social data and automatically utilizes… the social data; utilizes… the social media profile URL; identifies… job titles associated with the company; saves… the company information; programmatically passes… the company URL and the job titles; analyzes…the third-party data; transmits …the contact information; receives… a curated set of contact information; periodically re-analyzes… the social data; automatically transmits …the notification; determines… one or more broker office addresses; determines… a number of employees based on the scraped data; determines… at least one pair of latitude and longitude coordinates; generated …the distance between the office addresses; associates … the employer with a broker office address; automatically adds… or replaces … the broker office addresses; generates… the service provider identifying information by removing… the duplicate provider identifying information the non-descriptive words using the NLP algorithms; groups… service provider identities; generates …at least one name tag, a capitalization, and classifies… at least one service provider type; forms …the at least one set of cleaned and de-duplicated service provider identifying information; stored… and converting the data benefits disclosure documents into a standardized format; override… the service provider identity groupings based on the overrides databases; generates… a mapping table which links the service provider identity groupings and the benefits disclosure documents; stored…the mapping table and the service provider identifying information; analyzes …the database to generate a second dataset; fills…the clean data database with the dataset; constructs and displays the at least one client list; associates… at least three objects …and exports… the objects … into a pre-packaged format, above amounts to mere instructions to apply the exception using the generic computer components. The additional limitations of the claim further perform the functions of “…maps and populates… fields …using the data of the pre-packed objects”, which is nothing more than pre-populating a display with the objects data in any other context. When viewing the additional elements either individually or as an ordered combination, the claim as a whole does not amount to significantly more than the judicial exception because the claim does not include improvements to another technology or technical field, improvements to the function of the computer itself, and does not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. In effect, the additional limitations add the words “apply it” (or an equivalent) to the judicial exception, or mere instructions to implement an abstract idea on a computer. Mere instructions to apply an exception using the generic computer component cannot provide an inventive concept. Thus, the claim is not patent eligible.
In MCRO, the case is directed to improving 3D animation which is a technology. The technological improvement was in coming up with an automated process that produced a more lifelike 3D animation (facial movements were more realistic). The prior art, certain functions were carried out by human animator. However, each animator performed their job in a unique way based on their experience. The MCRO improvement was the use of rules that would be applied to those tasks performed by the animator. The rules introduced an improved process that improved 3D animation. If they merely used the computer as a tool to carry out the manual process, then the claims would have been non statutory.
Here, the Applicant’s claims are an improvement to an abstract idea, as opposed to MCRO which improved a process which improved technology. Automating the process in the instant Appellant’s application improves the business process, not technology. Merely using a computer as a tool to carry out a set of rules that improve a business process (i.e. the abstract idea) does not equate to a technological solution.
In Enfish, there was a new type of data structure called self-referential table to improve the storing and retrieving data in memory. The court described this as an improvement in the functioning of a computer. However, the Applicant’s claims do not purport to creating or improving any data structure or a computer and does not show an improvement in the technology like Enfish.
Therefore, for at least one of the reasons above, the Applicant’s claim does not provide a specific, technological improvement to a technological problem under McRO and Enfish (Please see the remarks on pages 14-24). Thus, Applicant’s arguments are not persuasive.
Argument 2: Applicant argued that: “…The additional elements of the claimed invention integrate the abstract idea into a practical application under USPTO SME Example 42… ”(Please see the remarks on pages 24-28).
Answer 2: The Examiner respectfully disagrees.
As the office has explained above that the additional limitations (besides those that recite the abstract idea) include the presence in the claimed system of a server, a processor, a database, a software application, an electronic device, a web crawler, an artificial intelligence module, one or more social media platforms, a search engine, an application programming interface (API), a geocoding program, a master database, a clean data database, a graphical user interface (GUI) and a customer relationship management (CRM) software that are all recited at a high level of generality to perform the functions of “…end-of-sentence (EOS) detection, tokenization, part-of-speech tagging, chunking, and extraction;…obtains… benefits disclosure documents; analyzes… the benefits disclosure documents and normalizes… data; collects and analyzes… social data; receives… the social data and automatically utilizes… the social data; utilizes… the social media profile URL; identifies… job titles associated with the company; saves… the company information; programmatically passes… the company URL and the job titles; analyzes…the third-party data; transmits …the contact information; receives… a curated set of contact information; periodically re-analyzes… the social data; automatically transmits …the notification; determines… one or more broker office addresses; determines… a number of employees based on the scraped data; determines… at least one pair of latitude and longitude coordinates; generated …the distance between the office addresses; associates … the employer with a broker office address; automatically adds… or replaces … the broker office addresses; generates… the service provider identifying information by removing… the duplicate provider identifying information the non-descriptive words using the NLP algorithms; groups… service provider identities; generates …at least one name tag, a capitalization, and classifies… at least one service provider type; forms …the at least one set of cleaned and de-duplicated service provider identifying information; stored… and converting the data benefits disclosure documents into a standardized format; override… the service provider identity groupings based on the overrides databases; generates… a mapping table which links the service provider identity groupings and the benefits disclosure documents; stored…the mapping table and the service provider identifying information; analyzes …the database to generate a second dataset; fills…the clean data database with the dataset; constructs and displays the at least one client list; associates… at least three objects …and exports… the objects … into a pre-packaged format, such that it amounts no more than mere instructions to apply the exception using the generic computer components. The additional limitations of the claim further perform the functions of “…maps and populates… fields …using the data of the pre-packed objects”, which is nothing more than pre-populating a display with the objects data in any other context. Accordingly, the additional elements do not integrate the abstract idea into a particular application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
In Example 42, the claim recites a combination of additional elements including storing information, providing remote access over a network, converting updated information that was input by a user in a non-standardized form to a standardized format, automatically generating a message whenever updated information is stored, and transmitting the message to all of the users. The additional elements of the claims in Example 42 recite a specific improvement by allowing remote users to share information in real time in a standardized format regardless of the format in which the information was input by the user. This differs from the claims in the Applicant’s application as there is no specific improvement that allow disparate systems to communicate no matter the input, rather the Applicant’s claims recite a method and a system that recite “…at least one third-party website and the social data, wherein the benefits disclosure documents retrieved from the at least one third-party website and the social data is originally stored in different formats, thereby converting the benefits disclosure documents retrieved from the at least one third-party website and the social data into a standardized format (Please see the remarks on page 26), which the Applicant’s claim perform the functions of nothing more than “retrieved documents, stored the data in different formats, and converting the retrieved documents into a standardized format”. Thus, Applicant’s claims do not integrate the abstract idea into a particular application because it does not impose any meaningful limits on practicing the abstract idea. Thus, the additional elements of the Applicant’s claimed invention do not integrate the abstract idea into a practical application under USPTO SME Example 42… ”(Please see the remarks on pages 24-28). Thus, Applicant’s arguments are not persuasive.
Argument 3: Applicant argued that: “…The additional elements and limitations of the present invention should be examined under WURC analysis and, accordingly, are not well-understood, routine, or conventional activity…”(Please see the remarks on pages 28-34).
Answer 3: The Examiner respectfully disagrees.
The 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) (Advanced training module: https://www.uspto.gov/patent/laws-and-regulations/examination-policy/training-materials-subject-matter-eligibility) on page 22 and page 37 clearly states that:
“Prong Two Excludes The “WURC” Consideration
As noted on the preceding slide, there is no evaluation of well-understood, routine, conventional (“WURC”) activity in Prong Two.
Examiners should give weight to all of the claimed additional elements in Prong Two, even if those elements represent well-understood, routine, conventional (WURC) activity.
Because Step 2A excludes consideration of WURC, a claim that includes WURC elements may still integrate an exception into a practical application.
Do not evaluate WURC unless the analysis proceeds to Step 2B.”…
“…Eligibility At Step 2B
Revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same.
However, if an examiner had previously concluded under revised Step 2A that an additional element was insignificant extra-solution activity, they should reevaluate that conclusion in Step 2B
If such reevaluation indicates that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that an inventive concept is present and that the claim is thus eligible.
For example, when evaluating a claim reciting an abstract idea such as a mathematical equation and a series of data gathering steps that collect a necessary input for the equation, an examiner might consider the data gathering steps to be insignificant extra-solution activity in revised Step 2A, and therefore find that the judicial exception is not integrated into a practical application. However, when the examiner reconsiders the data gathering steps in Step 2B, the examiner could determine that the combination of steps gather data in an unconventional way and, therefore, provide an “inventive concept,” rendering the claim eligible at Step 2B.”
Regarding the 2019 PEG Guidelines, the Office had not previously concluded under Step 2A that an additional element of the Appellant’s claim was insignificant extra-solution activity. Thus, the Appellant’s claims do not to be reevaluated under WURC. Thus, Appellant’s claims are not applicable to be reevaluated under WURC. Thus, the additional elements and limitations of the Applicant’s present invention should not be examined under WURC analysis …” (Please see the remarks on pages 28-34). Thus, Appellant’s arguments are not persuasive.
For the above reasons, it is believed that Applicant's arguments have been fully considered but they are not persuasive and the rejections should be sustained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tien C. Nguyen whose telephone number is 571-270-5108. The examiner can normally be reached on Monday-Thursday (6am-2pm EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
Bennett Sigmond can be reached on 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-270-6108.
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/TIEN C NGUYEN/ Primary Examiner, Art Unit 3694
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