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 the Application
Claims 1 – 5 have been examined in this application. This communication is the first action on the merits.
The filing date of the above referenced application is September 9, 2024. The Application Data Sheet filed on September 9, 2024, makes claim for domestic benefit/national stage continuity as a Continuation of Application Number 63/537435 with a filing date of September 8, 2023. Examination will be undertaken in consideration of the priority being September 8, 2023. No Information Disclosure Statement is presently on file.
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 – 5 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.
Claim 1 is 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. Claim 1 is directed to an abstract idea, Methods of Organizing Human Activity. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Claim 1 recites, in part, a method of providing an insurance policy comprising, providing an insurance application to a procedure patient, collecting an insurance premium from the procedure patent, and in the event that the procedure fails, making an insurance payout to the procedure patient. The limitations of providing an insurance policy, providing an application to a procedure patient, collecting an insurance premium, and in the event that the procedure fails, making an insurance payout to the patient are directed to concepts of organizing human activity via the use of generic computer components. Hence, it falls within the “Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The judicial exception is not integrated into a practical application. The Examiner notes that while the claim does not recite any specific computer components or operations, Specification paragraphs 50 – 63 reference general purpose computing systems and environments, with the recitation of the computer limitations amounting to mere instructions to implement the abstract idea on a computer. These general computer operations are recited as such, that it amounts to no more than mere instruction to apply the exception using generic computer components. Accordingly, the additional elements of general computer limitations do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Next the claim as a whole is analyzed to determine whether any element, or combination of elements, is sufficient to ensure the claim amounts to significantly more than an abstract idea. Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because additional elements associated with performing operations amount to no more than mere instructions to apply the exception using generic computer components. Mere instruction to apply an exception using generic computer components cannot provide an inventive concept. The claim is not patent eligible.
Claims 2 – 5 are dependent from Claim 1, and do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Claims 2 – 5 also do not identify improvement to computer technology or computer functionality MPEP 2106.05(a), a particular machine MPEP 2106.05(b), or a particular transformation MPEP 2106.05(c). Given the above reasons, generic computing components associated with providing an insurance policy, providing an application to a procedure patient, collecting an insurance premium, and in the event that the procedure fails, making an insurance payout to the patient is not an inventive concept.
Therefore, Claims 1 – 5 are not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 – 5 are rejected under U.S.C. 103 as being unpatentable over Milanovich, U.S. 7,346,525 in view of Wiseman, SR., U.S. 2020/0134691.
As per Claim 1,
Milanovich teaches a method of providing an unplanned birth insurance policy, the method comprising:
providing an insurance application to a … [ ] … procedure patient who has undergone or who plans to undergo a … [ ] … procedure; (Milanovich c.3 l.55-62 and Fig 2 read on a patient providing an application for medical services and insurance.)
collecting an insurance premium from the … [ ] … procedure patient; and (Milanovich c.3 l.55 through c.4. l.8 and Fig 2 read on a patient providing an application for medical services and insurance, and collection of an insurance premium.)
in the event that the … [ ] … procedure fails, thereby leading to conception of a child of the … [ ] … procedure patient, making an insurance payout to the … [ ] … procedure patient. (Milanovich c.3 l.55 through c.4. l.8, c.6 l.20-53 and Figs 2,9,10 read on a patient providing an application for medical services and insurance, and compensation to a patient for an unfavorable outcome of services provided.)
Milanovich does not teach:
contraceptive
Wiseman, however, teaches:
contraceptive (Wiseman ¶ [0035] and Fig 4 read on insurance and patient medical procedures inclusive of contraceptive treatments.)
It would have been obvious to one of ordinary skill in the art to include in the insurance and specific services of Milanovich, the insurance ratings, patient options, procedures and evidence of coverage aspects of Wiseman, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Both are associated with insurance, risk assessment and patient services, with the motivation being to enhance healthcare and insurance policy operations (see Wiseman ¶ [0001].)
As per Claim 2,
Milanovich in view of Weisman teaches the method of claim 1, further comprising offering the unplanned birth insurance policy to the contraceptive procedure patient at a clinic where the patient has or plans to undergo the contraceptive procedure. contraceptive (Wiseman ¶¶ [0029], [0032], [0035], [0037] and Figs 2,6 read on planned procedures subject to a plurality of healthcare providers )
As per Claim 3,
Milanovich in view of Weisman teaches the method of claim 2, further comprising providing a payment to the clinic in exchange for the offering the unplanned birth insurance policy to the contraceptive procedure patient at the clinic. (Milanovich c.3 l.55 through c.4. l.8, c.6 l.20-63 and Figs 2,10 read on a patient providing an application for medical services and insurance, collection of insurance premiums, and funding options specific to a service provider.)
As per Claim 4,
Milanovich in view of Weisman teaches the method of claim 1, further comprising conditioning the making the insurance payout to the contraceptive procedure patient on at least one of the following:
the patient producing of a valid paternity test showing that the child is the contraceptive procedure patient’s biological offspring;
the patient passing a test following the contraceptive procedure showing that the contraceptive procedure patient is sterile; and
a duration of time passing between the contraceptive procedure and the conception of the child, wherein the duration of time is at least 5 weeks. (Wiseman ¶¶ [0031], [0035] [0037] and Figs 4,6 read on insurance and patient medical procedures inclusive of contraceptive treatments, timing of procedures, benefits and evidence of coverage )
As per Claim 5,
Milanovich in view of Weisman teaches the method of claim 1, further comprising obtaining a reduced rate on at least one of (1) professional liability insurance and (ii) medical malpractice insurance for the clinic in return for the clinic’s offering the unplanned birth insurance policy to a potential patient of the clinic. (Milanovich c.3 l.55 through c.4. l.8, c.6 l.20-63 and Figs 2,10 read on a medical services and insurance, collection of insurance premiums, and funding options specific to a service provider, subject to individual rating risks.) The Examiner notes that individual rating risks maintained by separate systems identifies a reduced rate of insurance.
Conclusion
Art cited but not relied upon pertinent to application disclosure includes Colavito et al., U.S. 2008/0177583 generally identifying providing an insurance policy protecting individuals against malpractice or misconduct; Collins et al., U.S. 2012/0284061 generally identifying insurance, medical treatment and negative health outcome; and Milanovich, U.S. 8,543,429 generally identifying professional malpractice liability insurance operations.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Benjamin Brindley, whose telephone number is (571) 272-7335. The examiner can normally be reached on Monday and Tuesday between 6:00 AM and 3:00 PM.
If any attempt to reach the examiner by telephone is unsuccessful, the examiner’s supervisor, Christine Behncke, can be reached at (571) 272-8103. The fax telephone numbers for this group are either (571) 273-8300 or (703) 872-9326 (for official communications including After Final communications labeled “Box AF”).
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Applicants are invited to contact the Office to schedule an interview to discuss and resolve the issues set forth in this Office Action. Although an interview is not required, the Office believes that an interview can be of use to resolve any issues related to a patent application in an efficient and prompt manner.
/BENJAMIN S BRINDLEY/Primary Examiner, Art Unit 3695 August 20, 2025