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 RCE filed on 10/27/2025.
Claims 1, 4-7, 9-11, 14-17, 19 and 20 are currently amended.
Therefore, claims 1-20 are pending and addressed below.
A request for continued examination (RCE) under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application AFTER FINAL rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the FINALITY of the previous Office Action has been WITHDRAWN pursuant to 37 CFR 1.114. Applicant's submission filed on 10/27/2025 has been entered.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1-20 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”. 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 and a graphical user interface (GUI) that are all recited at a high level of generality to perform the functions of “…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…”, such that it amounts no more than mere instructions to apply the exception using the generic computer components. 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 and the graphical user interface (GUI) that are all recited at a high level of generality to perform the functions of “…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…”, 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, 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 2-10 and 12-20 are dependent on claims 1 and 11. Therefore, claims 2-10 and 12-20 are directed to the same abstract idea of claims 1 and 11. Dependent claims 2-10 and 12-20 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 2-10 and 12-20 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 2-10 and 12-20 are not patent eligible.
Response to Arguments
Previous Claim rejections – 35 USC § 101
The updated rejections of claims 1-20 in view of Alice have been provided in the light of Applicant’s amendments.
Applicant's arguments filed 10/27/2025 have been fully considered but they are not persuasive.
Argument 1: Applicant argued that: “…The claimed invention is inextricably tied to computer technology Applicant respectfully submits that the claimed invention is not directed to an abstract idea, but is rather inextricably tied to computer technology…” (Please see the remarks on pages 19-25).
Answer 1: The Examiner respectfully disagrees.
As the office has explained above that claim 1 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”. 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.
In addition, the MPEP 2106.04(a) states that: “…Examiners should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above. If the identified limitation(s) falls within at least one of the groupings of abstract ideas, it is reasonable to conclude that the claim recites an abstract idea in Step 2A Prong One”. Thus, According to the MPEP 2106.04(a), Examiner (1) identifying the specific limitation(s) (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) and (2) determining whether the identified limitations(s) (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) falls within the subject matter groupings of abstract ideas of “Certain Methods Of Organizing Human Activity: 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). If the identified limitation(s) falls within at least one of the groupings of abstract ideas, it is reasonable to conclude that the claim recites an abstract idea in Step 2A Prong One. Therefore, the claim recites an abstract idea.
Therefore, for at least one of the reasons above, the claimed invention is directed to an abstract idea and not inextricably tied to computer technology…” (Please see the remarks on pages 19-25). 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 particular application under DDR Holdings, LLC… UPSTO SME Example 42… and Application of Enfish to the claimed invention…” (Please see the remarks on pages 25-35).
Answer 2: The Examiner respectfully disagrees.
The additional limitations (besides those that recite the abstract idea) include in the Applicant’s claim 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 and a graphical user interface (GUI) that are all recited at a high level of generality to perform the functions of “…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…”, such that it amounts no more than mere instructions to apply the exception using the generic computer components. 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.
Furthermore, In DDR, a composite web page was automatically generated and the visitors were redirected to that composite web page. Thus, the invention in DDR was directed to a technical solution, namely an improvement to Internet technology of combining web pages and the business use was ancillary to that improvement. There is no similar technological solution in the Applicant’ claim.
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.
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.
These differs from the claims in the Applicant’s application as there is no specific improvement and no similar technological solution in the Applicant’ claim, rather the Applicant’s claims recite 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 and the graphical user interface (GUI) that are all recited at a high level of generality to perform the functions of “…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…”, such that it amounts no more than mere instructions to apply the exception using the generic computer components. 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. Thus, the ordered combination of the present claim is nothing more than “merely invoking a generic computer to perform an existing process. MPEP 2106.05(f)(2) defines this test as “use of a computer or other machinery in its ordinary capacity for economic or other tasks” and/or “simply adding a general purpose computer or computer components after the fact to an abstract idea” (Please see the remarks on page 29).
Therefore, the additional elements of the claimed invention do not integrate the abstract idea into a particular application under DDR Holdings, LLC… UPSTO SME Example 42… and Enfish …”. Thus, DDR Holdings, LLC… UPSTO SME Example 42… and Enfish does not apply here. (Please see the remarks on pages 25-35). Thus, Applicant’s arguments are not persuasive.
Argument 3: Applicant argued that: “…The additional elements of the claimed invention amount to an inventive concept under DDR Holdings, LLC…and BASCOM…” (Please see the remarks on pages 35-41).
Answer 3: The Examiner respectfully disagrees.
In DDR, a composite web page was automatically generated and the visitors were redirected to that composite web page. Thus, the invention in DDR was directed to a technical solution, namely an improvement to Internet technology of combining web pages and the business use was ancillary to that improvement. There is no similar technological solution in the Applicant’ claim.
In Bascom, the focus of the claims is on the specific asserted improvement in filtering technology by providing individually customizable filtering at the remote ISP server by taking advantage of the technical capability of certain communication networks. The invention in Bascom was a technological solution to a technological problem (using an improved filtering technology rather than using conventional filtering technology).
Whereas Applicants’ claim 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 and the graphical user interface (GUI) that are all recited at a high level of generality to perform the functions of “…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…”, 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, the claim is not patent eligible.
Therefore, “the additional elements of the claimed invention do not amount to an inventive concept under DDR Holdings, LLC…and BASCOM…”. Thus, the DDR Holdings, LLC and BASCOM do not apply here. (Please see the remarks on pages 35-41). Thus, Applicant’s arguments are not persuasive.
Argument 4: Applicant argued that:
“…In a memo issued on April 19, 2018, the USPTO ordered changes in 101 examination procedure based on Berkheimer…Applicant respectfully submits that there is no evidence that the claim elements are well- understood, routine, or conventional. Furthermore, the claimed invention provides the technological solution to the technological problem of seamlessly identifying, aggregating, transforming, and analyzing disparate and previously unknown data hosted across the Internet. Therefore, Applicant respectfully submits that the claims of the present application are directed to patent eligible subject matter under 35 U.S.C. 101” (Please see the remarks on page 40).
Answer 4: 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, Appellant’s arguments are not persuasive.
For the above rea