Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Status of the Claims
The following office action in response to the amendments filed on 10/1/2025.
Claims 22-41 are newly added.
Claims 1-21 were cancelled.
Therefore, claims 22-41 are pending and addressed below.
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 22-41 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 22-41 are directed to a method, a system, and thus a statutory category of invention (Step 1: YES).
Claim 22 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 “…verify employee-enrollments in a benefit plan based on an employee-identifier of an employee; verify plan benefits for the benefit plan based on a plan-identifier of the plan benefits; verify plan membership based on a personal-identifier associated with the plan-identifier; determine differences between the benefit plan and a previous benefit plan associated with the employee”. These recited limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of fundamental economic principles or practices (including insurance) but for the recitation of generic computer components. If a claim limitation, under its broadest reasonable interpretation, covers performance of fundamental economic principles or practices (including insurance) but for the recitation of generic computer components, 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 one or more hardware processors, a display device, a first panel, a second panel, a third panel and a graphical user interface that are all recited at a high level of generality to perform the functions of “provide …data; verify… employee-enrollments in a benefit plan; verify… plan benefits for the benefit plan; verify… plan membership; determine… differences between the benefit plan and a previous benefit plan; and update …to include an arrangement of graphical elements that display… and identify …the differences between the benefit plan and the previous benefit plan”, such that it amounts no more than mere instructions to apply the exception using a generic computer component. 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 one or more hardware processors, the display device, the first panel, the second panel, the third panel and the graphical user interface that are all recited at a high level of generality to perform the functions of “provide …data; verify… employee-enrollments in a benefit plan; verify… plan benefits for the benefit plan; verify… plan membership; determine… differences between the benefit plan and a previous benefit plan; and update …to include an arrangement of graphical elements that display… and identify …the differences between the benefit plan and the previous benefit plan”, 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. Therefore, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. Thus, the claim is not patent eligible.
Independent claim 33 recite limitations substantially similar to claim 22. Thus, the claims are rejected based on the same reasoning as above in claim 22. Thus, the claims are not eligible.
Dependent claims 23-32 and 34-41 are dependent on claims 22 and 33. Therefore, claims 23-32 and 34-41 are directed to the same abstract idea of claims 22 and 33. Claims 23-32 and 34-41 further recite the limitations that merely refer back to further details of the abstract idea. These claims 23-32 and 34-41 further recite the limitations that do not amount to "significantly more" than the abstract idea because the claims do not include improvements to the functioning of a computer or to any other technology or technical field, changing the functions of the computer itself or other meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, when viewed either individually, or view the claim as a whole, the additional limitations of the claim do not amount to a claim as a whole that is significantly more than the abstract idea. The claims are not eligible.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 22-41 of the current application are rejected as unpatentable on the ground of nonstatutory obviousness-type double patenting over claims 1-21 of U.S. Patent No. 12,020,213.
Both claims 22 and 33 of the present application and claims 1, 8 and 15 in the U.S. Patent No. 12,020,213 are directed to a method for verifying benefit information for an employer-provided benefit plan, the method comprising: provide data, for display on a display device, for a graphical user interface comprising a first panel, a second panel, and a third panel that are each visible via the graphical user interface and configured to interact with one another; verify employee-enrollments in a benefit plan; verify plan benefits for the benefit plan; verify plan membership; determine differences between the benefit plan and a previous benefit plan associated with the employee; and update the graphical user interface to include an arrangement of graphical elements that display and identify the differences between the benefit plan and the previous benefit plan. Thus, claims 1, 8 and 15 in the U.S. Patent No. 12,020,213 teaches or suggests all of the limitations of claims 22 and 33 of the instant application. However, claims 1, 8 and 15 in the U.S. Patent No. 12,020,213 also contains additional limitations not found in claims 22 and 33 of the instant application such as those of limitations “verifying, by the data processing system, employee-enrollments in a benefit plan, including: receiving, via the graphical user interface and over a network from a client device remote from the data processing system, an employee-identifier in the first panel of the graphical user interface; identifying an employee associated with the employee-identifier; identifying employee-enrollments of the employee; and displaying the employee-enrollments in the first panel of the graphical user interface; verifying, by the data processing system, plan benefits for the benefit plan, including: receiving, via the graphical user interface and over the network from the client device, a plan-identifier in the second panel of the graphical user interface; identifying the plan benefits based on the plan-identifier; and displaying the plan benefits in the second panel of the graphical user interface; verifying, by the data processing system, plan membership, including: receiving, via the graphical user interface and over the network from the client device, a personal-identifier in the third panel of the graphical user interface; identifying the plan-identifier based on the personal-identifier; and displaying the plan-identifier in the third panel of the graphical user interface; and updating, by the data processing system responsive to selecting a control in the graphical user interface and determining the differences between the benefit plan and the previous benefit plan”. Accordingly, claims 1, 8 and 15 in the U.S. Patent No. 12,020,213 are directed to a species of claims 22 and 33 of the instant application (see MPEP § 804(II)(B)(2)).
Response to Arguments
Previous Claim rejections – 35 USC § 101
The updated rejections of claims 22-41 in view of Alice have been provided in the light of Applicant’s amendments and the newly added claims.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee 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 Tien C. Nguyen whose telephone number is 571-270-5108. The examiner can normally be reached on Monday-Thursday (6am-2pm EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
Bennett Sigmond can be reached on 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-270-6108.
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/TIEN C NGUYEN/Primary Examiner, Art Unit 3694