DETAILED ACTION
This FINAL office action is in response to Applicant’s submission filed April 10, 2026. Applicant’s April 10th amendment amended claims 1, 9 and 17. Currently Claims 1-20 are pending. Claims 1, 9, and 17 are the independent claims.
The instant application is a continuation of Application No. of 18457923, now U.S. Patent No. 12118493 Application No. 18457923 is a continuation of Application No. 17576391, now U.S. Patent No. 11783259. Application No. 17576391 is a continuation of Application No. 16231716 now U.S. Patent No. 11257018.
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 .
Response to Amendment
The objection to the Title in the previous office action is withdrawn in response to Applicant's amendments to the title.
The double patenting rejections of claims 1-20 in the previous office action are maintained.
The 35 U.S.C. 101 rejection of claims 1-20 in the previous office action is maintained.
Response to Arguments
Applicant's arguments filed April 10, 2026 have been fully considered but they are not persuasive. Specifically, Applicant argues the claims are patent eligible under 35 U.S.C. 101 as the claims improves the operation of a computer system (e.g. specific advancement in area of electronic risk analysis or resource allocation by providing benefits in data accuracy, availability and integrity; conversion of significant amounts of data, reducing the number of messages that need to be transmitted via a network; Specification: Paragraph 19; Remarks: Pages 12-14).
In response to Applicant’s argument that the claims are patent eligible under 35 U.S.C. 101 as the claims recite an improvement in the functioning/operation of a computer system, the examiner respectfully disagrees.
Initially it is noted that claims 1 and 10 have been amended to include the step of "generate a pop-up window with additional display data in response to selection of the generated display data, wherein the pop-up window provides additional information that is not available without the selection to reduce a number of electronic messages that would otherwise be exchanged via a distributed communication network" (emphasis added) while claim 17 have been amended to recite retrieving, from the claims data store, the electronic record associated with the selected claim, including the set of data associated with attributes of the selected claim, without retrieving electronic records associated with the other workers compensation insurance claims to reduce a number of electronic records that would otherwise be exchanged via a distributed communication network”. As recited in parent applications U.S. Patent No. 11257018 - Claims 1, 3, 5 and U.S. Patent No. 11783259 - Claims 1, 9, 17.
Additionally, it is noted that the phrase “to reduce a number of electronic messages” and “to reduce a number of electronic records” are directed to non-functional descriptive material as they merely describe a wished for benefit of the steps of generating a pop-up window or retrieving an electronic record.
With regards to Applicant’s argument that a single sentence in Specification Paragraph 19 “For example, in the present invention information may be processed, updated, and analyzed via back-end-end application server to accurately improve the analysis of risk, the allocation of resources, and the exchange of information, thus improving the overall efficiency of the system associated with message storage requirements and/or bandwidth considerations (e.g., by reducing the number of messages that need to be transmitted via a network).”(emphasis added) is sufficient evidence to support Applicant’s argument that the newly claimed limitations directed to retrieving and displaying additional information without selection (Claims 1, 10) or retrieving the electronic record associated with a claim without retrieving other records associated with other workers compensation insurance claims) data results in an improvement in the functioning of a computer, the examiner disagrees.
At best Specification Paragraph 19 recites a wished-for benefit of the system without providing any specific details as to how the wished for benefit is actually achieved. This single sentence in Specification Paragraph 19 does not disclose, for example, utilizing a pop-up window to display additional information that is not available without selection for the purpose of reducing messages/data retrieval over a network as argued. Similarly, this single sentence in Specification paragraph 19 fails to provide any specific implementation details related to the ability of the system to reduce a number of electronic records exchanged via a distributed communication network by retrieving claim data without retrieved records associated with other claims (a basic function of nearly any search/database access/retrieving/search system). There is no support for Applicant’s argument that the disclosed wished for benefit of reducing the number of messages needed to be transmitted via a network are in any way related to the newly claimed method steps.
In order to successfully argue that the claims invention results in an improvement in a technology or another technical field Applicant must claim the argued improvement and clearly disclose that the improvement as discussed in detail in McRO, McRO, 837 F.3d at 1316, 120 USPQ2d at 1103. The basis for the McRO court's decision was that the claims were directed to an improvement in computer animation. The court relied on the specification's explanation of how the claimed rules enabled the automation of specific animation tasks that previously could not be automated. 837 F.3d at 1313, 120 USPQ2d at 1101. The McRO court found that the claims clearly improved the functioning of the claimed computer and that the claims directed to recite improvement (e.g. rules). Further the court found that the specification clearly disclosed that the claimed improvement improved the functioning of the computer. Neither Applicant’s disclosure nor the pending claims recite or disclose an improvement to the functioning of any of the underlying technology/technological components.
Even if Applicant’s disclosure supported Applicant’s argument that the pop-up window and retrieving a record without retrieving other records somehow reduce the number of messages that needed to be transmitted via a network such an ‘improvement’ is nothing more than filtering data presented to a human user, as well-known, common, conventional and routine purpose of computers. "Merely requiring the selection and manipulation of information-to provide a 'humanly comprehensible' amount of information useful for users -by itself does not transform the otherwise-abstract processes of information collection and analysis." Elec. Power, 830 F.3d at 1355; see also Interval Licensing, 896 F.3d at 1345 ("[T]he collection, organization, and display of two sets of information on a generic display device is abstract absent a 'specific improvement to the way computers [or other technologies] operate.") (citation omitted); Intellectual Ventures I LLC V. Capital One Fin. Corp., 850 F.3d 1332, 1341-42 (Fed. Cir. 2017) (creating and updating a "dynamic document" using content from multiple records is ineligible). Further the court explained in a similar context involving claims to a comparable, multi-layered, segmented display of data: The problem the '389 patent purportedly solves-i.e., that the display of "any system that has large numbers of objects in many categories with relationships is difficult to understand,' '389 patent at 2:22-24-is not specific to a computing environment. One could encounter this same occlusion problem when looking at a particularly cluttered paper map. And the patent's solution-to visually present information in a way that "aid[s] the user in distinguishing between the various displayed layers," id. at 2:25-28-could be accomplished using colored pencils and translucent paper, as the district court noted, Decision, 549 F. Supp. 3d. at 1263. As discussed in Intl' Bus. Machs. Corp. V. Zillow Grp., Inc., 50F.4th 1371 1381-82 (Fed. Cir. 2022); see also id. at 1378 ("The claims here recite similarly abstract steps: presenting a map, having a user select a portion of that map, and then synchronizing the map and its corresponding list to display a more limited data set to the user. Using a computer to 'concurrently update' the map and the list may speed up [a manual] process, but 'mere automation [is not] a patentable improvement in computer technology.") (citation omitted). The court also found "That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk V. Benson." CyberSource, 654 F.3d at 1375 (citing Gottschalk V. Benson, 409 U.S. 63, 65-67, 71 (1972)); id. at 1371 (discussing the holding in Parker V. Flook, 437 U.S. 584, 586 (1978) that calculations of alarm limit values for computerized applications could be done with pencil and paper). At best the automate a manual method (e.g. pen and paper can be used to perform all of the method steps) in order to conserve human resources (e.g. improve search/information retrieval as argued) is a "quintessential 'do it on a computer' patent" directed to an abstract idea.
Searching, comparing, and identifying (filtering) can be performed as mental processes. See Final Act. 16; In re Killian, 45 F.3d 1373, 1379-80 (Fed. Cir. 2022) (collecting data, comprehending its meaning, and indicating results of the determinations and identifications recite mental tasks humans routinely perform); Elec. Power, 830 F.3d at 1355 ("[S]electing information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas."); BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("[F]iltering content is an abstract idea because it is a longstanding, well-known method of organizing human behavior."); In re TLI Commc 'ns LLC Patent Litig., 823 F.3d 607, 611,613 (Fed. Cir. 2016) (classifying and storing data in an organized manner is similar to other methods of organizing human activity); Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (data collection, recognition, and storage are functions humans always have performed); Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067-68 (Fed. Cir. 2011) (collecting and comparing data involves mental steps); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011) (users can search a database by entering queries to obtain credit card transactions, map credit card numbers, and compare the numbers to other transactions as mental steps to include the logical reasoning steps); West View Research, LLC v. Audi AG, 685 F. App'x 923, 926 (Fed. Cir. 2017) (collecting and analyzing data queries to retrieve and process data used to generate a video or audio response to the query is an abstract idea).
Similar to the discussion in Uniloc USA, Inc. v. LG Electronics USA, Appeal No. 19-1835 (Fed. Cir. Apr. 30, 2020), the Federal Circuit reaffirmed that software inventions are patentable in the U.S. with a bright-line statement: “Our precedent is clear that software can make patent-eligible improvements to computer technology, and related claims are eligible as long as they are directed to non-abstract improvements to the functionality of a computer or network platform itself.” The instant application neither discloses nor claims non-abstract improvements to the functionality of a computer or network platform itself.
As such, Applicant’s newly claimed limitations in Claims 1, 10 and 17 do not improve the functioning of a computer or any of the underlying claimed technological elements (e.g. processor, distributed communication network, display, etc.) and are therefore not patent eligible under 35 U.S.C 101.
Applicant’s remarks did not provide an substantive arguments addressing the pending double patenting rejections.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting over claims 1-6 of U.S. Patent No. 11257018 (application no. 16231716) since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
The claims are rejected over claims 1-6 of U.S. Patent No. 11257018, wherein it would be obvious to one skilled in the art to omit, from the independent claims, one or more method step(s): the graphical interactive user interface display including: a claim detail data header; body diagrams including graphical representation of an injury incurred by a claimant associated with the selected claim; a plurality of bar graphs each indicative of a payment made with respect to the selected claim.
Additionally, it would have been obvious to one skilled in the art to display additional information via a pop-up window (Claims 1, 10) wherein displaying information via pop-up windows is old, well-known and widely practiced in the field of user interfaces.
Applicant appears to be attempting to broaden the scope of the parent application/patent and capture scope which was forgone during prosecution of the parent application.
The table below maps the conflicting claims between the instant application and U.S. Patent No. 11257018.
App. No. 18815183
USPN 11257018
1, 9, 17
1, 3, 5
2, 10, 18
2, 4, 6
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
Claims 1-20 are rejected on the ground of nonstatutory double patenting over claims 1-24 of U.S. Patent No. 11783259 (application no. 17576391) since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
The claims are rejected over claims 1-24 of U.S. Patent No. 11783259, wherein it would be obvious to one skilled in the art to omit, from the independent claims, one or more method step(s): the graphical interactive user interface display including: a claim detail data header; body diagrams including graphical representation of an injury incurred by a claimant associated with the selected claim; a plurality of bar graphs each indicative of a payment made with respect to the selected claim.
Additionally, it would have been obvious to one skilled in the art to display additional information via a pop-up window (Claims 1, 10) wherein displaying information via pop-up windows is old, well-known and widely practiced in the field of user interfaces.
Applicant appears to be attempting to broaden the scope of the parent application/patent and capture scope which was forgone during prosecution of the parent application.
The table below maps the conflicting claims between the instant application and U.S. Patent No. 11783259.
App. No. 18815183
USPN 11783259
1, 9, 17
1, 9, 17
2, 10, 18
2, 10, 18
3, 11, 19
3, 11, 19
4, 12, 20
4, 12, 20
5, 13
5, 13, 21
6, 14
6, 14, 22
7, 15
7, 15, 23
8, 16
8, 16, 24
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
Claims 1-20 are rejected on the ground of nonstatutory double patenting over claims 1-20 of U.S. Patent No. 12118493 (application no. 18457923) since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
The claims are rejected over claims 1-20 of U.S. Patent No. 12118493, wherein it would be obvious to one skilled in the art to omit, from the independent claims, one or more method step(s): the graphical interactive user interface display including: a claim detail data header; body diagrams including graphical representation of an injury incurred by a claimant associated with the selected claim; a plurality of bar graphs each indicative of a payment made with respect to the selected claim.
Further, it would have been obvious to retrieve, from the claim data store, the electronic record associated with the selected claim, including the set of data associated with attributes of the selected claim, without retrieving electronic records associated with the other workers compensation insurance claims, in view of U.S. Patent No. 11257018 - Claims 1, 3, 5 and U.S. Patent No. 11783259 - Claims 1, 9, 17.
Additionally, it would have been obvious to one skilled in the art to display additional information via a pop-up window (Claims 1, 10) wherein displaying information via pop-up windows is old, well-known and widely practiced in the field of user interfaces.
Applicant appears to be attempting to broaden the scope of the parent application/patent and capture scope which was forgone during prosecution of the parent application.
The table below maps the conflicting claims between the instant application and U.S. Patent No. 12118493.
App. No. 18815183
USPN 12118493
1, 9, 17
1, 9, 17
2, 10, 18
2, 10, 18
3, 11, 19
3, 11, 19
4, 12, 20
4, 12, 20
5, 13
5, 13
6, 14
6, 14
7, 15
7, 15
8, 16
8, 16
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
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.
Regarding independent Claims 1, 9 and 17, the claims are directed to the abstract idea of insurance claims analysis. This is a process (i.e. a series of steps) which (Statutory Category – Yes –process).
The claims recite a judicial exception, a method for organizing human activity, insurance claims analysis (Judicial Exception – Yes – organizing human activity). Specifically, the claims are directed to presents a graphical interactive user interface displaying a plurality of dials indicative of claim risk and facilitates the scheduling of an appointment to facilitate processing of a workman’s compensation claim, wherein insurance claims analysis is a fundamental economic practice that falls into the abstract idea subcategories of sales activities and/or commercial interactions. See 2106.04(a). Further all of the steps of “receive”, “retrieve”, “aggregate”, “process”, “generate” (Claims 1, 10), “receiving”, “display data”, “automatically receives” and “automatically receives” recite functions of the insurance claims analysis are also directed to an abstract idea that falls into the abstract idea subcategories of sales activities and/or commercial interactions. The intended purpose of independent claims 1, 9 and 17 appears to be to display to a human user claim score/risk data via a graphical interactive user interface and to assist in facilitating the processing of a claim utilizing a calendar application.
Accordingly, the claims recite an abstract idea – fundamental economic practice, specifically in the abstract idea subcategories of sales activities and/or commercial interactions. The exceptions are the third-party (who is a person or business) and additional limitations of generic computer elements: datastore, processor, memory device, display device, communication port, communication network, graphical interactive user interface, calendar application (software per se), server (email, back-end application computer), insurance claims analysis tool (software per se), computer readable medium storing instructions. See 2106.04(a).
Accordingly, the claims recite an abstract idea under Step 2A, Prong One, we proceed to Step 2A, Prong Two. Considering whether the additional elements set forth in the claim integrate the abstract idea into a practical application (See 2106.04(a)), the previously identified non-abstract elements directed to generic computing components include: datastore, processor, memory device, display device, communication port, communication network, graphical interactive user interface, calendar application (software per se), server (email, back-end application computer), insurance claims analysis tool (software per se), computer readable medium storing instructions. These generic computing components are merely used to receive/retrieve, process or display data as described extensively in Applicant’s specification (Specification: Figure 8). Generic computers performing generic computer functions, alone, do not amount to significantly more than the abstract idea. Moreover, when viewed as a whole with such additional elements considered as an ordered combination, the claim modified by adding a generic computer would be nothing more than a purely conventional computerized implementation of applicant's insurance claims analysis in the general field of business analysis and would not provide significantly more than the judicial exception itself. Note McRo, Inc. v. Bandai Namco Games America Inc. (837 F.3d 1299 (Fed. Cir. 2016)), guides: "[t]he abstract idea exception prevents patenting a result where 'it matters not by what process or machinery the result is accomplished."' 837 F.3d at 1312 (quoting O'Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). The claims are not directed to a particular machine nor do they recite a particular transformation (MPEP § 2106.05(b)).
Additionally, the claims do not recite any specific claim limitations that would provide a meaningful limitation beyond generally linking the use of the judicial exception to a particular technological environment. Nor do the claims present any other issues as set forth in the MPEP 2106.04(a) regarding a determination of whether the additional generic elements integrate the judicial exception into a practical application. Rather, the claims on merely use instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea. Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)-(c) and (e)- (h)), claims 1-20 do not integrate the judicial exception into a practical application.
Regarding the use of the generic (known, conventional) recited datastore, processor, memory device, display device, communication port, communication network, graphical interactive user interface, calendar application (software per se), server (email, back-end application computer), insurance claims analysis tool (software per se), computer readable medium storing instructions," the Supreme Court has held "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 573 U.S. 208, 223. Generic computers performing generic computer functions, alone, do not amount to significantly more than the abstract idea. The claims as a whole do not recite more than what was well-known, routine and conventional in the field (see MPEP § 2106.05(d)). In light of the foregoing and under the MPEP 2106.04(a), that each of the claims, considered as a whole, is directed to a patent-ineligible abstract idea that is not integrated into a practical application and does not include an inventive concept.
Regarding the recited machine learning algorithm to generate an overall score for the selected claim, the examiner notes that the machine learning algorithm is trained external/outside of the scope of the invention as claimed. Further the machine learning algorithm is recited at a high level of generality and amounts to no more than mere instructions to apply the abstract idea using a generic machine learning algorithm on a generic computer, also recited at a high level of generality. The machine learning algorithm is used to generally apply the abstract idea without limiting how the machine learning algorithm functions. The machine learning algorithm is described at a high level such that it amounts to using a generic computer with a generic machine learning algorithm to apply the abstract idea. These limitations only recite outcomes/results of the steps without any details about how the outcomes are accomplished. Additionally, Applicant’s specification makes clear that the machine learning algorithm includes mathematical models – see at least Specification Paragraph 27.
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
Additionally, the claims recite a judicial exception, a mental processes, which can be performed in the human mind or via pen and paper (Judicial Exception – Yes – mental process).
The claimed steps of aggregate data included in the retrieved electronic record, process the aggregated data to generate display data all describe the abstract idea. These limitations as drafted are directed to a process that under its reasonable interpretation covers performance of the steps in the mind but for the recitation of the generic computer components. Other than the recitation of a datastore, processor, memory device, display device, communication port, communication network, graphical interactive user interface, calendar application (software per se), server (email, back-end application computer), insurance claims analysis tool (software per se), computer readable medium storing instructions nothing in the claimed steps precludes the step from practically being performed in the mind. The claims do not recite additional elements that are sufficient to amount to significantly more than the abstract idea because the steps receive an indication of a selected claim, retrieve the electronic record associated with the selected claim, receiving the display data, receives information from the back-end application server, and automatically receives information from the back-end application server are directed to insignificant pre-solution activity (i.e. data gathering). The step of generating a pop-up window with additional display data, additional display data and presenting a graphical user interface display is directed to insignificant post-solution activity (i.e. data output). The mere nominal recitation of a generic processor/computer/server does not take the claim limitation out of the mental processes grouping. Thus, the claim recites a mental process. (Judicial Exception recited – Yes – mental process).
The claims do not integrate the abstract idea into a practical application. The generic datastore, processor, memory device, display device, communication port, communication network, graphical interactive user interface, calendar application (software per se), server (email, back-end application computer), insurance claims analysis tool (software per se), computer readable medium storing instructions are each recited at a high level of generality merely performs generic computer functions of retrieving, processing or displaying data. The generic processor/computer/server merely applies the abstract idea using generic computer components. The 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 do not recite improvements to the functioning of a computer or any other technology field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition, the claims to do apply the abstract idea with a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (e.g. data remains data even after processing; MPEP 2106.05(c)), the claims no not apply or use the abstract idea in some other meaningful way beyond generally linking the user of the abstract idea to a particular technological environment (i.e. a generic computer) such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea (MPEP 2106.05(e)). The recited generic computing elements are no more than mere instructions to apply the exception using a generic computer component.
Regarding the recited machine learning algorithm to generate an overall score for the selected claim, the examiner notes that the machine learning algorithm is trained external/outside of the scope of the invention as claimed. Applicant’s specification makes clear that the machine learning algorithm includes mathematical models – see at least Specification Paragraph 27. Further the machine learning algorithm is recited at a high level of generality and amounts to no more than mere instructions to apply the abstract idea using a generic machine learning algorithm on a generic computer, also recited at a high level of generality. The machine learning algorithm is used to generally apply the abstract idea without limiting how the machine learning algorithm functions. The machine learning algorithm is described at a high level such that it amounts to using a generic computer with a generic machine learning algorithm to apply the abstract idea. These limitations only recite outcomes/results of the steps without any details about how the outcomes are accomplished. The recitation of a machine learning algorithm in this claim does not negate the mental nature of these limitations because the machine learning algorithm is merely used at a tool to perform an otherwise mental process.
Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. (Integrated into a Practical Application – No).
As discussed above the additional elements in the claims amount to no more than a mere instruction to apply the abstract idea using generic computing components, wherein mere instructions to apply an judicial exception using generic computer components cannot integrate a judicial exception into a practical application or provide an inventive concept. For the retrieving and displaying steps that were considered extra-solution activity, this has been re-evaluated and determined to be well-understood, routine, conventional activity in the field. Applicant’s specification does not provide any indication that the computer/processor is anything other than a generic, off-the-shelf computer component, and the Symantec, TLI, and OIP Techs. court decisions (MPEP 2106.05(d)(II)) indicate that mere collection or receipt of data is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). For these reasons, there is no inventive concept. The claim is ineligible (Provide Inventive Concept – No).
The claims are ineligible under 35 U.S.C. 101 as being directed to an abstract idea without significantly more.
Regarding dependent claims 2-8, 10-16 and 18-20, the claims are directed to the abstract idea of insurance claims analysis and merely further limit the abstract idea claimed in independent claims 1, 9 and 17.
Claims 2, 10, 18 further limits the abstract idea by providing a radar map (a more detailed abstract idea remains an abstract idea). Claims 3, 11, 19 further limits the abstract idea by automatically receiving information by a workflow application (a more detailed abstract idea remains an abstract idea). Claims 4, 12, 20 further limits the abstract idea by limiting the claims data to include at least ONE of insurance claim identifier, an insured name, an insurance policy, type of injury or status (a more detailed abstract idea remains an abstract idea). Claims 5, 13 further limits the abstract idea by limiting the received third party data to at least ONE of information from medical providers or police reports (a more detailed abstract idea remains an abstract idea). Claims 6, 14 further limits the abstract idea by including a total cost bar graph in the user interface (a more detailed abstract idea remains an abstract idea). Claims 7, 15 further limits the abstract idea by including information about a last payment to the claimant in the user interface (a more detailed abstract idea remains an abstract idea). Claims 8, 16 further limits the abstract idea by limiting the last payment information to at least ONE of payment type or status or payment date or a link to further payment details (a more detailed abstract idea remains an abstract idea).
None of the limitations considered as an ordered combination provide eligibility because taken as a whole the claims simply instruct the practitioner to apply the abstract idea to a generic computer.
Further regarding claims 1-20, Applicant’s specification discloses that the claimed elements directed to a datastore, processor, memory device, display device, communication port, communication network, graphical interactive user interface, calendar application (software per se), server (email, back-end application computer), insurance claims analysis tool (software per se), computer readable medium storing instructions at best merely comprise generic computer hardware which is commercially available (Specification: Figure 8). More specifically Applicant’s claimed features directed to a system do not represent custom or specific computer hardware circuits, instead the terms merely refers to commercially available software and/or hardware. Thus, as to the system recited, "the system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea." See Alice Corp. Pry. Ltd., 134 S.Ct. at 2360.
Accordingly, the claims merely recite manipulating data utilizing generic computer hardware (e.g. memory, processor, etc.). Generic computers performing generic computer functions, alone, do not amount to significantly more than the abstract idea. Further the lack of detail of the claimed embodiment in Applicant’s disclosure is an indication that the claims are directed to an abstract idea and not a specific improvement to a machine.
Accordingly given the broadest reasonable interpretation and in light of the specification the claims are interpreted to include the process steps being performed by a human mind or via pen and paper. The claim limitations which recite a computer implemented method is at best recite generic, well-known hardware. However, the recited generic hardware simply performs generic computer function of displaying or processing data. Generic computers performing generic, well known computer functions, alone, do not amount to significantly more than the abstract idea. Further the recited memories are part of every conventional general-purpose computer.
Applicant has not demonstrated that a special purpose machine/computer is required to carry out the claimed invention. A special purpose machine is now evaluated as part of the significantly more analysis established by the Alice decision and current 35 U.S.C. 101 guidelines. It involves/requires more than a machine only broadly applying the abstract idea and/or performing conventional functions.
Applicant’s specification discloses that the claimed elements directed to a datastore, processor, memory device, display device, communication port, communication network, graphical interactive user interface, calendar application (software per se), server (email, back-end application computer), insurance claims analysis tool (software per se), computer readable medium storing instructions merely comprise generic computer hardware which is commercially available (Specification: Figure 8). More specifically Applicant’s claimed features directed to a system and components do not represent custom or specific computer hardware circuits, instead the term system merely refers to commercially available software and/or hardware. Thus, as to the system recited, "the system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea." See Alice Corp. Pry. Ltd., 134 S.Ct. at 2360.
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
Examiner suggests Applicant review the recent Appeals Review Panel review of Ex parte Desjardins et al., related to U.S. Patent Application No. 16/319,040, assigned to DeepMind Technologies Limited, MPEP § 2106.04(d)(1), as well as the recently posted 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence (2024 AI SME Update) in the Federal Register on July 17, 2024 (https://www.federalregister.gov/public-inspection/2024-15377/guidance-2024-update-on-patent-subject-matter-eligibility-including-on-artificial-intelligence ) and specifically review the three new examples 47-49 announced by the 2024 AI SME Update which provide exemplary SME analyses under 35 U.S.C. 101 of hypothetical claims related to AI inventions (https://www.uspto.gov/sites/default/files/documents/2024-AI-SMEUpdateExamples47-49.pdf).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SCOTT L JARRETT whose telephone number is (571)272-7033. The examiner can normally be reached M-TH 6am-4:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Beth Boswell can be reached at (571) 272-6737. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
SCOTT L. JARRETT
Primary Examiner
Art Unit 3625
/SCOTT L JARRETT/Primary Examiner, Art Unit 3625
Prosecution Insights