DETAILED ACTION
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 Claims
This action is in reply to the response filed on May 18, 2026.
Claim(s) 1-3, 6-9, 12, 14, 15, and 21-23 have been amended and are hereby entered.
Claim(s) 4, 5, 11, 13, and 16-20 have been canceled.
Claim(s) 1-3, 6-10, 12, 14, 15, and 21-23 are currently pending and have been examined.
This action is made Final.
Response to Arguments
Applicant argued that Examiner’s 101 rejection was improper because the amended claims are not directed to commercial or legal interactions implemented using generic computer components. Examiner disagrees. Applicant’s claimed invention recited a system that coordinates data from third parties to produce a customized coverage offering to a healthcare practitioner. Using data to customize insurance coverage and offering the coverage to a consumer is an example of a commercial and legal interaction. Commercial and legal interactions are recognized as abstract idea. Applicant’s claimed invention implemented the abstract idea using generic computer components. Therefore, Examiner finds Applicant’s argument non-persuasive.
Applicant argued that Examiner’s 101 rejection was improper because the claimed invention integrated the abstract idea into a practical application. Examiner disagrees. Applicant’s claimed invention addressed the problem that a practitioner’s existing malpractice policy may cover in-person patient encounters while leaving uncertainty or no cover for provider-to-provide telemedicine encounters conducted through a particular platform. This is not a technical problem. It is a business problem. Applicant’s claimed invention proposes a solution to the problem by customizing an insurance coverage offer, which is an abstract idea. The proposed solution is implemented via a platform that provides a computer environment in which the abstract idea can operate. The presented abstract idea is not integrated into a practical application because it does not solve a technical problem and is merely implemented by computer components used as tools in the implementation. Because the abstract idea is not integrated into a practical application, the claimed invention is not patent eligible. Examiner finds Applicant’s argument non-persuasive.
In light of Applicant’s amendments, Examiner finds Applicant’s arguments regarding the claimed invention’s allowability over the prior art of record persuasive. Therefore, Examiner has withdrawn the rejection of claims 1-3, 6-9, 12, 14, 15, and 21-23 under 35 USC 103.
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.
Claim(s) 1-3, 6-10, 12, 14, 15, and 21-23 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim(s) 1-3, 6-10, 12, 14, 15, and 21-23 are directed to a system, method, or product, which are/is one of the statutory categories of invention. (Step 1: YES).
The Examiner has identified independent system claim 1 as the claim that represents the claimed invention for analysis and is similar to independent system Claim 21. Claim 1 recites the following limitations:
a computerized enrollment system for facilitating provider-to-provider coordination of supplemental malpractice liability coverage, the system comprising: [a processor; a memory coupled to the processor]; and
[a non-transitory computer-readable medium having stored thereon instructions that, when executed by the processor], cause the computerized enrollment system to:
receive existing malpractice insurance information for a healthcare practitioner through [an existing malpractice module];
request, [from a third-party validation system], validation of an existing malpractice insurance policy identified by the existing malpractice insurance information;
determine, based on the validation from [the third-party validation system], that the existing malpractice insurance policy covers in-person patient encounters and does not cover, or does not clearly apply to, telemedicine encounters conducted through a telemedicine platform;
communicate, [via a telemedicine platform interface module], with [a third-party telemedicine platform] that facilitates provider-to-provider telemedicine encounters between healthcare practitioners;
receive, [via the telemedicine platform interface module], information identifying a provider-to-provider telemedicine encounter to be conducted through the [third-party telemedicine platform];
select, based at least in part on the existing malpractice insurance policy and the provider-to-provider telemedicine encounter, one of a plurality of maximum fee cap tiers for supplemental malpractice coverage, the plurality of maximum fee cap tiers comprising a per-patient cap tier, a per-day cap tier, and a time-period cap tier;
generate a supplemental malpractice coverage offering for the healthcare practitioner, wherein the supplemental malpractice coverage offering supplements the existing malpractice insurance policy and applies only to telemedicine encounters conducted through [the third-party telemedicine platform];
apply the selected maximum fee cap tier to limit fees for the supplemental malpractice coverage based on one or more of actual visits, actual patients, actual consultation types, and prescriptions written for telemedicine encounters conducted through [the third-party telemedicine platform]; and
cause the supplemental malpractice coverage offering and the selected maximum fee cap tier to be presented to the healthcare practitioner.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity because the limitations recite commercial or legal interactions. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a commercial or legal interaction, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. The processor; memory coupled to the processor, non-transitory computer-readable medium, existing malpractice module, third-party validation system, telemedicine platform interface module, and third-party telemedicine platform in Claim 1 are just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. Claim(s) 21 is also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of a processor; a memory coupled to the processor, a non-transitory computer-readable medium, an existing malpractice module, a third-party validation system, a telemedicine platform interface module, and a third-party telemedicine platform. The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, claim(s) 1 and 21 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Accordingly, these additional elements do not change the outcome of the analysis when considered separately and as an ordered combination. Thus, claim(s) 1 and 21 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims
Dependent claim 2 further defines the abstract idea that is present in independent claim 1 and thus corresponds to certain methods of organizing human activity and hence are abstract for the reasons presented above. Dependent claim 2 also includes an electronic display and a validation graphical user interface. The electronic display and validation graphical user interface do not integrate the abstract idea into a practical application or are not sufficient to amount to significantly more than the judicial exception present in independent claim 1 when considered both individually and as an ordered combination. Therefore, dependent claim 2 is directed to an abstract idea and is not patent-eligible.
Dependent claim 3 further defines the abstract idea that is present in independent claim 1 and thus corresponds to certain methods of organizing human activity and hence are abstract for the reasons presented above. Dependent claim 3 also includes an enrollment graphical user interface. The enrollment graphical user interface does not integrate the abstract idea into a practical application or is not sufficient to amount to significantly more than the judicial exception present in independent claim 1 when considered both individually and as an ordered combination. Therefore, dependent claim 3 is directed to an abstract idea and is not patent-eligible.
Dependent claim 6 further defines the abstract idea that is present in independent claim 1 and thus corresponds to certain methods of organizing human activity and hence are abstract for the reasons presented above. Dependent claim 6 does not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, dependent claim 6 is directed to an abstract idea. Thus claim 6 is not patent eligible.
Dependent claim 7 further defines the abstract idea that is present in independent claim 1 and thus corresponds to certain methods of organizing human activity and hence are abstract for the reasons presented above. Dependent claim 7 does not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, dependent claim 6 is directed to an abstract idea and is not patent eligible.
Dependent claim 8 further defines the abstract idea that is present in independent claim 1 and thus corresponds to certain methods of organizing human activity and hence are abstract for the reasons presented above. Dependent claim 8 also includes the third-party telemedicine platform. The third-party telemedicine platform does not integrate the abstract idea into a practical application or is not sufficient to amount to significantly more than the judicial exception present in independent claim 1 when considered both individually and as an ordered combination. Therefore, dependent claim 8 is directed to an abstract idea and is not patent-eligible.
Dependent claim 9 further defines the abstract idea that is present in independent claim 1 and thus corresponds to certain methods of organizing human activity and hence are abstract for the reasons presented above. Dependent claim 9 also includes an electronic display, a selection graphical user interface, and the third-party telemedicine platform. The electronic display, selection graphical user interface, and third-party telemedicine platform do not integrate the abstract idea into a practical application or are not sufficient to amount to significantly more than the judicial exception present in independent claim 1 when considered both individually and as an ordered combination. Therefore, dependent claim 9 is directed to an abstract idea and is not patent-eligible.
Dependent claim 10 further defines the abstract idea that is present in independent claim 1 and thus corresponds to certain methods of organizing human activity and hence are abstract for the reasons presented above. Dependent claim 10 does not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, dependent claim 10 is directed to an abstract idea and is not patent eligible.
Dependent claim 12 further defines the abstract idea that is present in independent claim 1 and thus corresponds to certain methods of organizing human activity and hence are abstract for the reasons presented above. Dependent claim 12 also includes the third-party telemedicine platform. The third-party telemedicine platform does not integrate the abstract idea into a practical application or is not sufficient to amount to significantly more than the judicial exception present in independent claim 1 when considered both individually and as an ordered combination. Therefore, dependent claim 12 is directed to an abstract idea and is not patent-eligible.
Dependent claim 14 further defines the abstract idea that is present in independent claim 1 and thus corresponds to certain methods of organizing human activity and hence are abstract for the reasons presented above. Dependent claim 14 does not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, dependent claim 14 is directed to an abstract idea and is not patent eligible.
Dependent claim 15 further defines the abstract idea that is present in independent claim 1 and thus corresponds to certain methods of organizing human activity and hence are abstract for the reasons presented above. Dependent claim 15 also includes a chat interface. The chat interface does not integrate the abstract idea into a practical application or is not sufficient to amount to significantly more than the judicial exception present in independent claim 1 when considered both individually and as an ordered combination. Therefore, dependent claim 15 is directed to an abstract idea and is not patent-eligible.
Dependent claim 22 further defines the abstract idea that is present in independent claim 21 and thus corresponds to certain methods of organizing human activity and hence are abstract for the reasons presented above. Dependent claim 22 also includes a third-party validation system. The third-party validation system does not integrate the abstract idea into a practical application or is not sufficient to amount to significantly more than the judicial exception present in independent claim 21 when considered both individually and as an ordered combination. Therefore, dependent claim 22 is directed to an abstract idea and is not patent-eligible.
Dependent claim 23 further defines the abstract idea that is present in independent claim 21 and thus corresponds to certain methods of organizing human activity and hence are abstract for the reasons presented above. Dependent claim 23 also includes the memory. The memory does not integrate the abstract idea into a practical application or is not sufficient to amount to significantly more than the judicial exception present in independent claim 21 when considered both individually and as an ordered combination. Therefore, dependent claim 23 is directed to an abstract idea and is not patent-eligible.
Examiner’s Statement of Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter. In light of Applicant's remarks, Examiner agrees that the cited reference(s) of Macoviak (US 20160055307), McGarvey (US 20200020454), Milanovich (US 8,392,221) and Ress (US 20080154647) do not disclose, teach, or suggest the claimed invention. Macoviak teaches a system for providing remote medical diagnosis and therapy. McGarvey teaches an integrated tele-health networking, interaction, and care-matching tool for tele-health services. Milanovich teaches a method of providing health care insurance to consumers. Ress teaches a method for providing single occasion liability insurance. However, the prior art of record fails to anticipate or render obvious the claimed invention. Specifically, the prior art of record fails to anticipate or render obvious limitations to “request, from a third-party validation system, validation of an existing malpractice insurance policy identified by the existing malpractice insurance information; determine, based on the validation from the third-party validation system, that the existing malpractice insurance policy covers in-person patient encounters and does not cover, or does not clearly apply to, telemedicine encounters conducted through a telemedicine platform”, as described by the allowed claims. The prior art also fails to provide an adequate teaching, suggestion, or motivation for combining the prior art references of Macoviak, McGarvey, Milanovich, and Ress. For these reasons, claims 1-3, 6-10, 12, 14, 15, and 21-23 are deemed to be allowable over the prior art of record.
Conclusion
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. Ortgiese (US 2010/0049553) discloses on-demand flight accident insurance.
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 of 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 JOHN O PRESTON whose telephone number is (571)270-3918. The examiner can normally be reached 12:00 pm - 8:00 pm.
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/JOHN O PRESTON/Examiner, Art Unit 3693
July 29, 2026
/BRUCE I EBERSMAN/Primary Examiner, Art Unit 3693
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