DETAILED ACTION
Claims 1-2, 5-6, 8-12, 14-15, 17, & 20-27 are currently pending and have been examined.
This action is in response to the amendment filed on 1/5/2026.
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 .
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 1-2, 5-6, 8-12, 14-15, 17, & 20-27 are rejected under 35 U.S.C. §101 because the claimed invention is directed to an abstract idea without significantly more.
Subject Matter Eligibility Criteria - Step 1:
Claims 1-2, 5-6, 8-12, 14-15, 17, & 21-27 are directed to a method (i.e., a process); Claim 17 is directed to a CRM (i.e., a manufacture); & Claims 20 are directed to a system (i.e., a machine). Accordingly, claims 1-2, 5-6, 8-12, 14-15, 17, & 20-27 are all within at least one of the four statutory categories.
Subject Matter Eligibility Criteria - Alice/Mayo Test: Step 2A - Prong One:
Regarding Prong One of Step 2A, the claim limitations are to be analyzed to determine whether, under their broadest reasonable interpretation, they “recite” a judicial exception or in other words whether a judicial exception is “set forth” or “described” in the claims. MPEP 2106.04(II)(A)(1). An “abstract idea” judicial exception is subject matter that falls within at least one of the following groupings: a) certain methods of organizing human activity, b) mental processes, and/or c) mathematical concepts. MPEP 2106.04(a).
Representative independent claim 1 includes limitations that recite at least one abstract idea. Specifically, independent claim 1 recites:
1. (Currently Amended) A method performed at a computing system, the computer system comprising one or more processors and memory, the memory storing one or more programs, which, when executed by the processor, perform the method, for each respective tenant in a plurality of tenants comprising at least three tenants, comprising
receiving, from a remote device, a respective request to generate an evidence of insurability (EOI) application for a corresponding user associated with the respective tenant, the respective request comprising
an identifier associated with the corresponding user, and
an attribute associated with an event experienced by the corresponding user;
obtaining from an employment database associated with the corresponding tenant, a corresponding data set associated with the corresponding user based at least in part on the identifier associated with the corresponding user;
generating a first EOI application associated with the corresponding user by performing a process comprising
retrieving a plurality of structured data fields associated with the event experienced by the corresponding user,
transforming a subset of the corresponding data set from a respective format defined by the employment database to a predetermined structured format defined by one or more data fields of the plurality of structured data fields populating each data field in the plurality of structured data fields using some or all of corresponding data set and the attribute associated with the event;
transmitting, in electronic form, the first EOI application and a request for approval of the first EOI application; and
updating some or all of the corresponding data set associated with the corresponding user based on a response to the request for approval of the first EOI application.
The Examiner submits that the foregoing underlined limitations constitute “methods of organizing human activity” because obtaining an EOI request from a party, generating an EOI application by receiving data fields and transforming the data fields from one format to another, using an engine to analyze the application, obtaining a response from the engine, and updating stored data with the response are associated with “managing personal behavior or relationships or interactions between people” include social activities, teaching, and following rules or instructions. These claims recite managing personal behavior by assisting a user in generating an evidence of insurability application. The Examiner notes that “method of organizing human activity” includes a person’s interaction with a computer – see MPEP 2106.04(a)(2)(II). If a claim limitation, under its broadest reasonable interpretation, covers managing personal behavior or interactions between people but for the recitation of generic computer components, then it falls within the “method of organizing human activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Accordingly, independent claim 1 and analogous independent claims 17 & 20 recite at least one abstract idea.
Furthermore, dependent claims 2, 5-6, 8-12, 14-15, & 21-27 further narrow the abstract idea described in the independent claims. Claim 5 recites receiving approval of the application from the employee, Claim 6 recites receiving approval from a separate system, Claims 8-9 recites updating records, Claim 10 recites sending a notification of approval, Claim 11 recites determining differences in EOI applications, Claim 12 recites different parties, Claim 24 recites the application being a data object, Claim 25 recites translating information, Claims 26-27 recites obtaining data sets by comparing the identifier for the user with stored tenant data. These limitations only serve to further limit the abstract idea and hence, are directed towards fundamentally the same abstract idea as independent claim 1 and analogous independent claims 17 & 20, even when considered individually and as an ordered combination.
Subject Matter Eligibility Criteria - Alice/Mayo Test: Step 2A - Prong Two:
Regarding Prong Two of Step 2A of the Alice/Mayo test, it must be determined whether the claim as a whole integrates the abstract idea into a practical application. As noted at MPEP §2106.04(II)(A)(2), it must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.” MPEP §2106.05(I)(A).
In the present case, the additional limitations beyond the above-noted at least one abstract idea recited in the claim are as follows (where the bolded portions are the “additional limitations” while the underlined portions continue to represent the at least one “abstract idea”):
1. (Currently Amended) A method performed at a computing system, the computer system comprising one or more processors and memory, the memory storing one or more programs, which, when executed by the processor, perform the method, for each respective tenant in a plurality of tenants comprising at least three tenants, comprising
receiving, from a remote device, a respective request to generate an evidence of insurability (EOI) application for a corresponding user associated with the respective tenant, the respective request comprising
an identifier associated with the corresponding user, and
an attribute associated with an event experienced by the corresponding user;
obtaining from an employment database associated with the corresponding tenant, a corresponding data set associated with the corresponding user based at least in part on the identifier associated with the corresponding user;
generating a first EOI application associated with the corresponding user by performing a process comprising
retrieving a plurality of structured data fields associated with the event experienced by the corresponding user,
transforming a subset of the corresponding data set from a respective format defined by the employment database to a predetermined structured format defined by one or more data fields of the plurality of structured data fields populating each data field in the plurality of structured data fields using some or all of corresponding data set and the attribute associated with the event;
transmitting, in electronic form, the first EOI application and a request for approval of the first EOI application; and
updating some or all of the corresponding data set associated with the corresponding user based on a response to the request for approval of the first EOI application.
For the following reasons, the Examiner submits that the above identified additional limitations do not integrate the above-noted at least one abstract idea into a practical application.
Regarding the additional limitations of the computer system, processor, memory, remote device, database, the Examiner submits that these limitations amount to merely using computers as tools to perform the above-noted at least one abstract idea (see MPEP § 2106.05(f)).
Thus, taken alone, the additional elements do not integrate the at least one abstract idea into a practical application.
Looking at the additional limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole with the abstract idea, reflect an improvement in the functioning of a computer or an improvement to another technology or technical field, apply or use the above-noted judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole does not integrate the abstract idea into a practical application of the abstract idea. MPEP §2106.05(I)(A) and §2106.04(II)(A)(2).
For these reasons, representative independent claim 1 and analogous independent claim 17 & 20 do not recite additional elements that integrate the judicial exception into a practical application.
Accordingly, the claims recite at least one abstract idea.
The remaining dependent claim limitations not addressed above fail to integrate the abstract idea into a practical application as set forth below:
Claims 2 & 14: These claims recite using API calls to communicate data and coupling computing systems and amount to merely using computers as tools to perform the above-noted at least one abstract idea (see MPEP § 2106.05(f)).
Claims 15 & 23: These claims recite obtaining encrypted communication and decrypting the communication which amount to no more than a recitation of the words “apply it” (or an equivalent) (see MPEP 2106.05(f)) because they attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result.
Claims 21-22: These claims recite performing actions in real time and without human intervention and amount to merely using computers as tools to perform the above-noted at least one abstract idea (see MPEP § 2106.05(f)).
Thus, taken alone, any additional elements do not integrate the at least one abstract idea into a practical application. Therefore, the claims are directed to at least one abstract idea.
Subject Matter Eligibility Criteria - Alice/Mayo Test: Step 2B:
Regarding Step 2B of the Alice/Mayo test, representative independent claim 10 does not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for reasons the same as those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application.
As discussed above, regarding the additional limitations of the database, the Examiner submits that these limitations amount to merely using computers as tools to perform the above-noted at least one abstract idea (see MPEP § 2106.05(f)).
The dependent claims also do not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the dependent claims do not integrate the at least one abstract idea into a practical application.
Therefore, claims 1-2, 5-6, 8-12, 14-15, 17, & 20-27 are ineligible under 35 USC §101.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 5-6, 8-12, 14-15, 17, & 20-27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Independent claims 1, 17, & 20 recite “transforming a subset of the corresponding data set from a respective format defined by the employment database to a predetermined structured format defined by one or more data fields of the plurality of structured data fields populating each data field in the plurality of structured data fields using some or all of corresponding data set and the attribute associated with the event”. The specification states that “The format of the data can be configured to any nuance of how an entity may have constructed their data set.” (para. 125) and “generating the EOI application includes converting information from the EOI request to structured data (e.g., reformatting and/or translating the information).” (para. 185). The Examiner asserts that the specification does not describe obtaining a respective format defined by the employment database and using the format to transform the corresponding data set. Dependent claims 2, 5-6, 8-12, 14-15, & 21-27 are also rejected due to their dependency from independent claims 1, 17, & 20. Appropriate clarification and correction is required.
Response to Arguments
Applicant’s arguments with respect to the 35 U.S.C. § 101 rejection on pages 8-16 in regards to claims 1-2, 5-6, 8-12, 14-15, 17, & 20-27 have been considered but are not persuasive. Applicant argues that:
The claims do not recite certain methods of organizing human activity.
See updated 101 rejection above.
The claims as a whole integrate the judicial exception into a practical application because they provide a technological improvement of generating an EOI application and provide processing efficiency and conservation of compute resources.
The Examiner further asserts that that there is no indication here that the claimed invention addresses a problem specifically arising in the realm of computer technology; the Applicant does not provide adequate evidence or technical reasoning how the process improves the efficiency of the computer, as opposed to the efficiency of the process, or of any other technological aspect of the computer. Further, the problems the invention is attempting to solve are “managing absenteeism and insurability data”. (citing Spec. ¶ 5). These are not technological problems, but business and human behavior problems. The solution provided here has not been described or claimed as anything more than a generic use of existing technology performing based, purely conventional functions of a computer. Therefore, the Examiner asserts that the claims as a whole do not contain limitations that integrate the judicial exception into a practical application.
The claims amount to significantly more than the abstract idea because they provide an arrangement of additional elements resulting in an improvement for account of absences in a time and computationally efficient manner.
The Examiner, however, asserts that the additional elements in the claims are not arranged in an unconventional and non-generic combination but instead are arranged, and used, in well-known, routine and conventional fashion(s). Additionally, each of these elements individually performs its well-understood, routine and conventional function. This remains true when the elements are viewed as an ordered combination. Each of the elements still performs its well-understood, routine and conventional function in relation to the other elements. The relationship between each of these elements and their respective functions remain those of generic computer devices. Therefore, the additional elements do not amount to significantly more than the abstract idea.
Applicant’s arguments with respect to the 35 U.S.C. § 103(a) rejection on pages 16-20 in regards to claims 1-2, 5-6, 8-12, 14-15, 17, & 20-27 have been considered and are persuasive. The 103 rejection has been withdrawn.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lange (US20090271210) teaches to a Web-based, computer-driven health and welfare benefit system that groups employees into Eligibility Groups, limits available Business Rules to those available on a centrally authored pick list, allows disparate data files to be imported and offers flexible tools for employees to build customized internet interfaces for benefit management.
Bull (US 20200387976) teaches to a system and method that manages, processes, consolidates, audits, reconciles, and transacts payments for fixed and variable expenses, and further provides record consolidation, comprehensive reconciliation, data analytics, and payment facilitation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan K Ng whose telephone number is (571)270-7941. The examiner can normally be reached M-F 8 AM - 5 PM.
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/Jonathan Ng/ Primary Examiner, Art Unit 3619