DETAILED ACTION
This non-final office action is in response to Applicant’s submission filed August 26, 2024. 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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: Workman’s Compensation Insurance Claim Analysis Tool Utilizing Machine Learning, Insurance Claim Analysis Graphical Interactive User Interface Utilizing Machine Learning, Workman’s Compensation Insurance Claim Handler Utilizing Machine Learning, or the like.
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. 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. 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. 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”, “receiving”, “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 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Seifert et al., U.S. Patent Publication No. 20060241982, discloses a system and method for automatically processing insurance applications/information.
Surbey et al., U.S. Patent Publication No 20040186750, discloses an insurance workflow system and method.
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.
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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.
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SCOTT L. JARRETT
Primary Examiner
Art Unit 3625
/SCOTT L JARRETT/Primary Examiner, Art Unit 3625