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 .
Status of the Application
Claims 1-20 have been examined in this application.
The filling date of this application number recited above is 28-March-2024. No priority has been claimed in the Application Data Sheet, thus the examination will be undertaken in consideration of the effective filing date as the priority date.
No additional information disclosure statement (IDS) has been filed to date.
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 a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The Claims are directed to an abstract idea, Mental Process and/or Methods of Organizing Human Activity. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional computer elements, which are recited at a high level of generality, provide conventional computer functions that do not add meaningful limits to practicing the abstract idea.
As per Claims 1, 10, and 19, the claims recite “a … method of creating service provisions for related service products, the method comprising:
obtaining a service provision associated with a first service product, the first service product being accessible in a service product design … including grandfathering logic;
replacing the grandfathering logic of the service product design … with service provision availability parameters defined in a format independent of the service product design …; and
[utilizing] an availability script in the service product design … based on the service provision availability parameters to enable implementation of the service provision in a second service product such that the service provision works differently with the first service product and the second service product.”
The limitation of the claims recited above, considering the claims without the additional elements (e.g. apparatus, processor, non-transient computer-readable storage medium, etc.), under its broadest reasonable interpretation (BRI), recites Mental Processes and/or Certain Methods of Organizing Human Activities. The method recited above is a process of obtaining information, replacing information, and using stored data to change information.
All these steps recited by the claims can be practically performed in the human mind, or by a human using a pen and paper. See MPEP 2106.04(III)(A):
“In contrast, claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include:
• a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016);
• claims to "comparing BRCA sequences and determining the existence of alterations," where the claims cover any way of comparing BRCA sequences such that the comparison steps can practically be performed in the human mind, University of Utah Research Foundation v. Ambry Genetics, 774 F.3d 755, 763, 113 USPQ2d 1241, 1246 (Fed. Cir. 2014);
• a claim to collecting and comparing known information (claim 1), which are steps that can be practically performed in the human mind, Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067, 100 USPQ2d 1492, 1500 (Fed. Cir. 2011); and
• a claim to identifying head shape and applying hair designs, which is a process that can be practically performed in the human mind, In re Brown, 645 Fed. App'x 1014, 1016-17 (Fed. Cir. 2016) (non-precedential).”
Although the claim may recite using a computer to obtain, replace, configure, and implement data, performing a mental process on a generic computer still recite a mental process. See MPEP 2106.04(III)(C):
“Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without a computer").”
Additionally, the claims recite a process of data analysis or data manipulation associated with insurance products, as disclosed by Specification:
[0012] “For example, the service product may comprise an insurance product and the service provision may comprise an insurance coverage. In an example embodiment, the present disclosure provides a platform for creating related insurance policy coverages with modifiable parameters that work differently for a product in different lines of business”
[0018] “A service product may refer to a software product providing a service, such as an insurance product or a project management product”
The method of providing insurance policy coverage modifications or provisions for service products is fundamental economic principles or practices, which is under certain methods of organizing human activities.
Therefore, the claim recites an abstract idea, mental process and/or certain methods of organizing human activities.
This judicial exception is not integrated into practical application. In particular, the claims recite an additional element of “apparatus”, “non-transient computer-readable storage medium”, “hardware processor”, “processor”, and “service product design tool”, perform the method recited above by instructing the abstract idea to be performed “by” these generic computer components. These general computer components are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer system. These elements are generic, off-the-shelf components available to the public, and does not require any specialized hardware or equipment to perform the claimed method, and are merely applied to perform its basic functionalities, such as: obtain data, replace data, configure data, and implement data, as disclosed by Specification:
[0044] “By way of non-limiting example, a given remote platform 204 and/or a given computing platform 202 may include one or more of a server, a desktop computer, a laptop computer, a handheld computer, a tablet computing platform, a NetBook, a Smartphone, a gaming console, and/or other computing platforms.”
[0048] “Processor(s) 236 may be configured to provide information processing capabilities in computing platform(s) 202. As such, processor(s) 236 may include one or more of a digital processor, an analog processor, a digital circuit designed to process information, an analog circuit designed to process information, a state machine, and/or other mechanisms for electronically processing information”
Mere instructions to implement the abstract idea on a generic computer system, or merely using the generic computer system as a tool to perform the abstract idea (e.g. mere “apply it”) is not indicative of integration into a practical application; see MPEP 2106.05(f). Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to obtain, replace, configure, or implement data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., mental process or certain methods of organizing human activities) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). 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 claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, when analyzed as a whole, considering the additional elements individually and/or as an ordered combination, the additional element of using a computer based system is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer system. The claims lack sufficient technical details to provide how these limitations may provide technological steps or technical details on how it is particularly implemented on a computer to improve its system or any of its underlying hardware or components (e.g. how it is performed on the computer, how it could improve the computer itself, how it could manipulate the computer to function in a specific way other than its generic functionality, and/or how it could improve any of the underlying technology), but merely applies the generic computer system to perform its generic functionalities. Merely using the generic computer system as a tool to perform the abstract idea (e.g. mere “apply it”) is not indicative of an inventive concept (aka “significantly more”). In view of the Specification cited above, the judicial exception is not applied with or used by a particular machine. As held in Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 199 (1978) and Bancorp Services v. Sun Life, 687 F.3d 1266, 1276, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012), “the routine use of a computer to perform calculations cannot turn an otherwise ineligible mathematical formula or law of nature into patentable subject matter.” The claims are not patent eligible.
Regarding dependent claims, they are still directed to an abstract idea without significantly more.
Claims 2 and 11 recite “wherein the one or more hardware processors are further configured to execute the instructions to: disable the grandfathering logic for the first service product.” The claims provide further steps regarding the data, which is still part of the abstract idea, and mere “apply it” is not indicative of integration into a practical application.
Claims 3, 12, and 20 recite “wherein the one or more hardware processors are further configured to execute the instructions to: enable implementation of the service provision in the second service product while the service provision in the first service product remains unduplicated.” The claims provide further steps regarding the data, which is still part of the abstract idea, and mere “apply it” is not indicative of integration into a practical application.
Claims 4 and 13 recite “wherein the one or more hardware processors are further configured to execute the instructions to: enable modification of the service provision in the first service product and modification of the service provision in the second service product while maintaining a link between the first and second service products.” The claims provide further steps regarding the data, which is still part of the abstract idea, and mere “apply it” is not indicative of integration into a practical application.
Claims 5 and 14 recite “wherein the one or more hardware processors are further configured to execute the instructions to: obtain the service provision availability parameters.” The claims provide further steps regarding the data, which is still part of the abstract idea, and mere “apply it” is not indicative of integration into a practical application.
Claims 6 and 15 recite “wherein the one or more hardware processors are further configured to execute the instructions to: define the service provision availability parameters in a software class defined in relation to service product design tool.” The claims provide further steps regarding the data, which is still part of the abstract idea, and the additional element “software class” is recited at a mere “apply it” level, which is not indicative of integration into a practical application.
Claims 7 and 16 recite “wherein the one or more hardware processors are further configured to execute the instructions to: for all transactions that may be out of sequence: check for the presence the service provision in a most recent transaction; if the service provision exists in the most recent transaction, continue to have the service provision in a current transaction.” The claims provide further steps regarding the data, which is still part of the abstract idea, and mere “apply it” is not indicative of integration into a practical application.
Claims 8 and 17 recite “wherein the one or more hardware processors are further configured to execute the instructions to: remove, from a grandfathering states table, all entries associated with the service provision; define a service availability rule for the first service product and for the second service product by, for all transactions that may be out of sequence: checking for the presence the service provision in a most recent transaction; if the service provision exists in the most recent transaction, continuing to have the service provision in a current transaction.” The claims provide further steps regarding the data, which is still part of the abstract idea, and mere “apply it” is not indicative of integration into a practical application.
Claims 9 and 18 recite “wherein the first and second service products comprise first and second insurance products, the service product design tool comprises an insurance product design tool, and the service provision comprises a coverage associated with the first insurance product.” The claims provide further steps regarding the data, which is still part of the abstract idea, and mere “apply it” is not indicative of integration into a practical application.
These additional steps of each claims fail to remedy the deficiencies of their parent claim above because they are merely further limiting the rules used to conduct the previously recited abstract idea, and are therefore rejected for at least the same rationale as applied to their parent claim above.
Claims 2-9, 11-18, and 20, when analyzed as a whole, considering the additional elements individually and/or as an ordered combination, are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are sufficient to integrate into a practical application and do not amount to significantly more than the judicial exception. Similarly to the independent claim, each claim recites using a generic computer system to perform the abstract idea as mentioned above. Mere “apply it” is not “significantly more”. Therefore, prong 2 and step 2B analysis are similar to above and these claims are not eligible.
Therefore, Claims 1-20 are not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-6, 9-15, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al. (US 5446653 A).
As per Claims 1, 10, and 19, Miller discloses a processor-implemented method of creating service provisions for related service products (See Figure 1 teaching the computing system), the method comprising:
obtaining a service provision associated with a first service product, the first service product being accessible in a service product design tool including grandfathering logic ([Col 4 Lines 40-48] “A history of obsolete clauses can be maintained in the computer system by the steps of assigning a new rule set to each obsolete clause to prevent the identification of the obsolete clause during the testing step. A replacement clause is input to the computer for each obsolete clause that is to be replaced. A rule set is provided for each replacement clause and an alias file is provided that cross-references the obsolete clauses to corresponding replacement clauses”);
replacing the grandfathering logic of the service product design tool with service provision availability parameters defined in a format independent of the service product design tool ([Col 8 Lines 45-53] “Each endorsement rule set includes one or more substitution records that indicate which specific endorsement clauses are to replace specific insurance policy clauses. For example, endorsement rule set 0010 designates three endorsement clauses CLS2164, CLS2114, and CLS2115 that are to replace respective insurance policy clauses CLS0105, CLS9055, and CLS9069 when the Colorado State Amendatory endorsement is selected”); and
configuring an availability script in the service product design tool based on the service provision availability parameters to enable implementation of the service provision in a second service product such that the service provision works differently with the first service product and the second service product ([Col 5 Lines 39-46] “In the illustrated embodiment, insurance policies are built from a software library of coverage provisions that can be rearranged and used in any number of ways according to the needs and coverage preferences of a proposed insured. A policy built by the system is printed as a complete, final document that does not require separate endorsement pages to be added to delete, replace or supplement core policy provisions”).
Although the prior art reference Miller does not seem to explicitly use the exact term “grandfathering logic”, one of ordinary skill in the art would have recognized that applying the known technique of replacing obsolete clauses in an insurance policy (i.e. replacing grandfathered clause) would have yielded predictable results and resulted in an improved system that would [Col 5 Lines 46-49] allow more quick and efficient generation of customized policies to accommodate a diverse range of policy holders, and it would have been obvious to one of ordinary skill in the art to incorporate such system to the claimed invention.
As per claims 2 and 11, Miller discloses the apparatus of claim 1, and the method of claim 10, wherein the one or more hardware processors are further configured to execute the instructions to:
disable the grandfathering logic for the first service product ([Col 4 Lines 3-9] “The system can also provide null clauses in the library of insurance policy clauses. The null clauses each have a corresponding rule set, and provide space into which endorsements can subsequently be inserted. The null clauses can also be used to replace insurance policy clauses, resulting in the deletion of the insurance policy clause”).
As per claims 3, 12, and 20, Miller discloses the apparatus of claim 1, the method of claim 10, and the non-transient computer-readable storage medium of claim 19, wherein the one or more hardware processors are further configured to execute the instructions to:
enable implementation of the service provision in the second service product while the service provision in the first service product remains unduplicated ([Col 5 Lines 43-46] “A policy built by the system is printed as a complete, final document that does not require separate endorsement pages to be added to delete, replace or supplement core policy provisions”).
As per claims 4 and 13, Miller discloses the apparatus of claim 1, and the method of claim 10, wherein the one or more hardware processors are further configured to execute the instructions to:
enable modification of the service provision in the first service product and modification of the service provision in the second service product while maintaining a link between the first and second service products ([Col 11 Lines 65-67 to Col 12 Line 1] “Since it would be complicated to check and update all of the endorsement rule sets every time that an insurance policy clause is replaced or deleted, the alias file is created to cross-reference all of the new insurance policy clauses to the clauses that they replace”).
As per claims 5 and 14, Miller discloses the apparatus of claim 1, and the method of claim 10, wherein the one or more hardware processors are further configured to execute the instructions to:
obtain the service provision availability parameters ([Col 3 Lines 13-25] “The computer system includes first means for processing the rule sets associated with the insurance policy clauses to identify and provide a list of the insurance policy clauses whose rule sets are satisfied by the entered coverage information. Second means process the rule sets associated with the endorsements to identify and provide a list of the endorsements whose rule sets are satisfied by the insurance policy clauses identified by the first processing means. The endorsements on the list are selectable by a user to provide endorsement clauses for modifying insurance policy clauses identified by the first processing means”).
As per claims 6 and 15, Miller discloses the apparatus of claim 1, and the method of claim 10, wherein the one or more hardware processors are further configured to execute the instructions to:
define the service provision availability parameters in a software class defined in relation to service product design tool ([Col 3 Lines 3-10] “In another embodiment, a rule based document generation system is provided for constructing insurance policies in response to coverage information input to the system. A computer system is associated with memory means that store (i) a library of insurance policy clauses, (ii) a rule set for each insurance policy clause, (iii) a library of endorsements (i.e., modifiers), and (iv) a rule set for each endorsement.”).
As per claims 9 and 18, Miller discloses the apparatus of claim 1, and the method of claim 10, wherein the first and second service products comprise first and second insurance products, the service product design tool comprises an insurance product design tool, and the service provision comprises a coverage associated with the first insurance product ([Col 2 Lines 32-41] “In accordance with the present invention, a rule based document generation system is provided for constructing insurance policies in response to coverage information input by a user. The system includes a computer system and memory means associated with the computer system for storing a library of insurance policy clauses and a rule set for each clause. Means are provided for entering coverage information to the computer system identifying at least one coverage to be provided in an insurance policy”).
Claims 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Miller in view of Rahn et al. (US 20040054685 A1).
As per claims 7 and 16, Miller may not explicitly disclose, but Rahn discloses the apparatus of claim 1, and the method of claim 10, wherein the one or more hardware processors are further configured to execute the instructions to:
for all transactions that may be out of sequence ([0121] “Sometimes, the prescription transactions forming the claim thread are received out of sequence by the PAR system database 13. In that case, if one or more prescription transactions in a series of linked prescription transactions are received out of sequence by the PAR system database 13, the PAR system 24 sequences them to ensure the proper prescription transaction remains on the claim header”):
check for the presence the service provision in a most recent transaction ([0121] “Ensuring that the proper, or last in time, prescription transaction is reflected on the claim header table, the PAR system 24 implements a set of prioritization rules. For example, if a claim key (Plan ID, RX #, Store #, Fill Dispensed #) associated with a prescription transaction is unique, the data obtain manager 29 inserts the prescription transaction in the claim header table as the first prescription transaction in a claim thread”);
if the service provision exists in the most recent transaction, continue to have the service provision in a current transaction ([0121] “If a new prescription transaction has a claim key identical to an existing prescription transaction appearing in the claim header table but the new prescription transaction has a higher Fill # than the existing prescription transaction, then the data obtain manager 29 replaces the exiting prescription transaction in the claim header table with the new prescription transaction and the existing prescription transaction is moved to the claim history table”).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the system to verify out of sequence transaction with the identical claim key which continues the prescription transaction, as in Rahn in the system executing the method of Miller with the motivation of offering to provide an improved automated system to verify transactions from claim transaction information as taught by Rahn over that of Miller.
Claims 8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Miller in view of Keefer (US 20110071859 A1).
As per claims 8 and 17, Miller may not explicitly disclose, but Keefer discloses the apparatus of claim 1, and the method of claim 10, wherein the one or more hardware processors are further configured to execute the instructions to:
remove, from a grandfathering states table, all entries associated with the service provision ([0047] “Returning to FIG. 2, in preparation to revise the insurance policy, the illustrative method 200 recalls 203 the first version of the insurance policy from the memory and uses that first version to generate an editable version comprising a copy of the first version of the insurance policy”);
define a service availability rule for the first service product and for the second service product by, for all transactions that may be out of sequence ([0075] “As mentioned, the user is typically prompted to review the subsequent out-of-sequence changes to determine how to apply changes for the rest of the contractual period”):
checking for the presence the service provision in a most recent transaction ([0076] “As mentioned, out-of-sequence endorsements are typically detected automatically. Generally, merge conflicts are detected by comparing differences between the two policy versions by matching up changes to elements with the same fixed identifier”);
if the service provision exists in the most recent transaction, continuing to have the service provision in a current transaction ([0076] “Several types of conflicts may arise, including, a direct conflict, where an element modified in a previous change is being modified in a subsequent change that has an earlier effective date and an indirect conflict, such as where an element removed in one revision may be modified in another earlier revision and where an element removed in an earlier transaction may be removed as of an earlier effective date in a subsequent transaction. Where the removal of an element occurs at an earlier effective date, the removal does not really represent a conflict but represents the back-dating of the removal of a policy element. In such a case the removal at the later effective date is effectively ignored”).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize policy modification by storing different versions with effective dates to verify various conflicts with out of sequence transactions as in Keefer in the system executing the method of Miller with the motivation of offering to [0037] provide easily accessible, ascertainable, and adjustable policy history and coverage to provide improved ability to service the insured individuals as taught by Keefer over that of Miller.
Response to Arguments
Applicant's arguments, see pages 7 to 11, filed 03-February-2026, with respect to 35 U.S.C. 101 rejection have been fully considered but they are not persuasive.
Applicant contends that the claims provide improvement to the functioning of a computer, particularly the claim limitations associated with “replace the grandfathering logic of the service product design tool … configure an availability script in the service product design tool …”. Examiner respectfully disagrees. As discussed above under 35 U.S.C. 101 rejection, the additional elements are generic computer components merely applied to implement the abstract idea.
The grandfathering logic, as discussed by Specification [0003], is merely a function to provide insurance coverage from one product to another product, which is still part of the abstract idea.
The additional elements of the present claims (e.g. apparatus, hardware processor, service product design tool, etc.) are generic computer components, performing its basic functionalities, merely applied to implement the abstract idea. Mere “apply it” is not indicative of integration into a practical application. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to obtain, replace, configure, or implement data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., mental process or certain methods of organizing human activities) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit).
“Replacing the grandfathering logic of the service product design tool with service provision availability parameters defined in a format independent of the service product design tool” is merely replacing or updating an instruction on how to fill out the insurance coverage form.
“Configuring an availability script in the service product design tool based on the service provision availability parameters to enable implementation of the service provision in a second service product such that the service provision works differently with the first service product and the second service product” is mere data manipulation of the instruction for implementing insurance coverage on different service products.
The claims lack sufficient technical details to provide how these limitations may provide technological steps or technical details on how it is particularly implemented on a computer to improve its system or any of its underlying hardware or components (e.g. how it is performed on the computer, how it could improve the computer itself, how it could manipulate the computer to function in a specific way other than its generic functionality, and/or how it could improve any of the underlying technology), but merely applies the generic computer system to perform its generic functionalities. Mere “apply it” is not “significantly more”. Therefore, the 35 U.S.C. 101 rejection is maintained.
Applicant's arguments, see pages 11 to 15, with respect to 35 U.S.C. 103 rejection have been fully considered but they are not persuasive.
Miller discloses of assigning “new rule set” to provide a replacement clause for each obsolete clause that is to be replaced [Col 4 Lines 40-48]. The invention is towards providing a “rule based document generation system for constructing insurance policies in response to coverage information input to the system”. The claim limitation “replace the grandfathering logic of the service product design tool with service provision availability parameters defined in a format independent of the service product design tool” is taught by Miller’s “rule set” is the logic of replacing clauses, wherein each rule set must be input into the computer system. The rule set itself is the service provision availability parameters defined in a format independent of the service product design, aka the user would set up or configure the rule set for the document, which is the tool independently defined by the user to find specified clauses and replace them. See also [Col 4 Lines 27-39] “The method comprises the steps of inputting the library of clauses into the computer system. A rule set is assigned to each of the clauses. Each rule set provides at least one rule that must be satisfied in order to include the clause associated therewith in a document. The rule sets are input to the computer system. Document parameters (e.g., desired insurance coverages and a policy holder's state of residence) are input into the computer system. Each rule set is tested in the computer to identify those that are satisfied by the document parameters. The clauses to which the identified rule sets are assigned are retrieved and assembled into the document”.
As discussed above under 35 U.S.C. 103 rejection, the prior art reference Miller does not seem to explicitly use the exact term “grandfathering logic”, one of ordinary skill in the art would have recognized that applying the known technique of replacing obsolete clauses in an insurance policy (i.e. replacing grandfathered clause) would have yielded predictable results and resulted in an improved system that would [Col 5 Lines 46-49] allow more quick and efficient generation of customized policies to accommodate a diverse range of policy holders, and it would have been obvious to one of ordinary skill in the art to incorporate such system to the claimed invention. Therefore, the 35 U.S.C. 103 rejection is maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Grano et al. (US 20060202012 A1) discloses [0067] “The learning activities performed in blocks 613-616 may include an analysis of actual rules triggered in previous transactions in light of the ultimate disposition of the current transaction, for example, whether or not the current check was returned as a "bad" check for a number of reasons including no maker account, insufficient funds, etc. The learning activities of blocks 613-616 facilitate weighting rules for application during subsequent transactions. In some embodiments, when a transaction result indicates fraudulent behavior that falls outside the applied rule set's detection capabilities, an automated component analysis and/or human intervention may allow the rule set to be updated (including adding new rules) in a way that allows the rule set to work more effectively against detecting such fraud in the future”;
Alexander et al. (US 20040024614 A1) discloses [0028] “As part of the reversal, an original prescription product can optionally be replaced by a substitute product which has the same benefits of the original product, but is covered under the patients prescription benefits program”.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENRY H JUNG whose telephone number is (571)270-5018. The examiner can normally be reached Mon - Fri 9:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine M Tran (Behncke) can be reached at (571) 272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HENRY H JUNG/ Examiner, Art Unit 3695
/CHRISTINE M Tran/ Supervisory Patent Examiner, Art Unit 3695
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