DETAILED ACTION
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
This action is in reply to the remarks/arguments for Application 18/979,220 filed on 18 June 2026.
Claims 1, 2, 3, 6, 8, 9, 10, 13, 15, 16, 17, and 20 have been amended.
Claims 1-20 are currently pending and have been examined.
Information Disclosure Statement
The Information Disclosure Statement filed 18 June 2026 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
Response to Arguments
A. Claim Rejections - 35 USC § 101:
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
1. Applicant argues that the claims are not directed to a judicial exception under Step 2A, Prong One.
Examiner respectfully disagrees. In the instant case, representative method claim 15 is directed towards facilitating communicating insurance-related information pertaining to claim processes corresponding to claim events. Claim 15 is directed to the abstract idea of utilizing rules and/or instructions for performing the existing commercial practice (e.g., managing commercial/economic interactions between people) in an automatic manner, which is grouped under the certain methods of organizing human activity – fundamental economic principles, practices or concepts; sales activity; following set of instructions; commercial interactions; managing interactions between people (including social activities, teachings, following rules or instructions) grouping, in Step 2A, prong one.
Claim 15 recites:
“based on initial information of a claim event affecting a user, determining a first set of individuals that are able to provide additional information related to the claim event; and
initiating a voice-AI engine and adaptive flow engine to perform a first voice-AI call session with each individual in the first set of individuals to obtain the additional information[[.]], the adaptive flow engine being trained to generate artificial intelligence (AI) prompts that are optimized to increase relevance and brevity in outputs of a large language model (LLM) engine or service, in part by identifying language that tends to cause the LLM engine or service to fixate on details that are of less relevance to claim processing;
wherein for each individual in the first set of individuals, the voice-AI engine and the adaptive flow engine combine to perform the first voice-AI call session by:
generating, in real time, conversation flow with the individual that is responsive to vocal outputs of the individual, wherein generating the conversation flow includes generating, by the adaptive flow engine based on the training, one or more AI prompts to receive an output from the LLM engine or service, the adaptive flow engine suppressing language in the AI prompt that is known, through training, to cause fixation by the LLM engine or service, the conversation flow being based at least in part on an output of the LLM engine or service;
detecting an engagement of the individual in the conversation flow, the engagement being detected based on a probability of the individual terminating the first voice-AI call session within a given time frame; and
tuning the voice-AI engine based on the detected engagement of the individual, to customize a voice-AI speech of the voice-AI call session for the individual, the voice-AI speech being customized for at least one of tone or speech speed.”
Based on the underlined elements above, abstract ideas and/or concepts are identified. Accordingly, the claim recites an abstract idea. Applicant’s argument is therefore unpersuasive.
2. Applicant further argues that the claims integrate any exception into a practical application under Step 2A, Prong Two.
Examiner respectfully disagrees. This judicial exception is not integrated into a practical application because, when analyzed under step 2A, prong two, the additional elements of the claim such as a “voice-AI engine”, “adaptive flow engine”, represent the use of a computer-related devices as a tool (intermediary) to perform an abstract idea and/or does no more than generally apply the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. automate) implement the acts of utilizing rules and/or instructions for performing the existing commercial practice (e.g., managing commercial/economic interactions between people) in an automatic manner. Applicant’s argument is therefore unpersuasive.
3. Applicant further argues that the claims recite significantly more under Step 2B.
Examiner respectfully disagrees. When analyzed under step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of utilizing rules and/or instructions for performing the existing commercial practice (e.g., managing commercial/economic interactions between people) in an automatic manner using computer computer-related technology and/or devices that merely perform as designed to function. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Hence, claim 1 is not patent eligible. Applicant’s argument is therefore unpersuasive.
4. Applicant further argues that the claims recite an improvement to technology.
Examiner respectfully disagrees. At most it is noted that the invention is directed to the improvement of an abstract idea using technology rather than to the improvement to technology and/or the functioning of the computer itself. The "focus" of the claim as a whole is not "on the specific asserted improvement in computer capabilities." Enfish, 822 F.3d at 1336. Rather, the claim merely limits the abstract idea to a particular technological environment of insurance claim processing which does not render the claim any less abstract. See id.; Alice, 573 U.S. at 223 (holding that attempting to limit the use of an abstract idea to a particular technological environment does not make a claim patent-eligible) (quoting Bilski, 561 U.S. at 610-11); Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) ("[M]erely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claim[] any less abstract."); Ultramercial, 772 F.3d at 716 ("As we have held, the use of the Internet is not sufficient to save otherwise abstract claims from ineligibility under§ 101.").
In this instance, the claims recite limitations implemented on computer-related devices and/or components that are merely used to apply the abstract concept that neither improves another technology or technical field, nor the functioning of the computer devices or components itself.
The elements of the instant process, when taken alone, each execute in a manner expected of these elements. The elements of the instant process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. There are no improvements to another technology or technical field, no improvements to the functioning of the computer itself, transformation or reduction of a particular article to a different state or thing or any other meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment as a result of performing the claimed method. Applicant’s argument is therefore unpersuasive.
5. Applicant further argues that similar to the claims at issue in BASCOM, the claims are patent-eligible.
Examiner respectfully disagrees as the rejected claims also do not adhere to the same fact pattern seen in the BASCOM case.
In the decision regarding BASCOM, while the court agreed that the additional elements were generic computer, network, and Internet components that did not amount to significantly more when considered individually, when combined, an inventive concept was found in the non-conventional and non-generic arrangement of the additional elements, i.e., the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user (note that the term “inventive concept” is often used by the courts to describe additional element(s) that amount to significantly more than a judicial exception).
In the instant application, there is no actual improvement made to the operations or physical structure of the additional elements claimed. There are no actual improvements to another technology or technical field, no improvements to the functioning of the computer itself, and there are no meaningful limitations beyond generally linking and/or applying the use of the abstract idea to a particular technological environment evident in the claims. Applicant’s argument is therefore unpersuasive.
The rejection is therefore maintained.
B. Claim Rejections - 35 USC § 103:
Claims 1-20 stand rejected under 35 U.S.C. 103 as being unpatentable over Marzinzik et al., US 2024/0281706 A1 (“Marzinzik”), in view of Wang, US 2023/0245651 A1 (“Wang”).
Applicant’s arguments and/or amendments to the claims are sufficient to overcome the rejection under 35 U.S.C. 103. Accordingly, the rejection is withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.-The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first -paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. V. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc).
Regarding claims 1, 8 and 15, the claims recite “the adaptive flow engine being trained to generate artificial intelligence (AI) prompts that are optimized to increase relevance and brevity in outputs of a large language model (LLM) engine or service, in part by identifying language that tends to cause the LLM engine or service to fixate on details that are of less relevance to claim processing”; and “generating, in real time, conversation flow with the individual that is responsive to vocal outputs of the individual, wherein generating the conversation flow includes generating, by the adaptive flow engine based on the training, one or more AI prompts to receive an output from the LLM engine or service, the adaptive flow engine suppressing language in the AI prompt that is known, through training, to cause fixation by the LLM engine or service, the conversation flow being based at least in part on an output of the LLM engine or service”.
However, it is unclear where, in the specification, support for the limitation feature(s) recited above can be found. The specification, while providing verbatim support for the limitation features as described above, however, fails to adequately describe the technical details for these elements in order to meet the applicant's burden for disclosure under 112 first paragraph (or 112a).
Examiner is unable to find specific examples/formula/algorithms described in the instant specification that shows that Applicant was in possession of an invention that describes/discloses sufficient disclosure and/or description of the limitation feature elements recited in the claim.
The instant specification lacks any description of an actual reduction to practice which would be evidenced by formulas, flow-charts, programming steps, etc. that are sufficiently detailed to show that Applicant was in possession of the claimed invention as a whole. Thus, there is no evidence of a complete specific application or embodiment to satisfy the requirement that the description is set forth "in such full, clear, concise, and exact terms" to show possession of the claimed invention. Fields v. Conover, 443 F.2d 1386, 1392, 170 USPQ 276, 280 (CCPA 1971 ).
Examiner is unable to find where, in the specification, description of an actual reduction to practice which would be evidenced by formulas, flow-charts, programming steps, etc. that are sufficiently detailed can be found to enable the devices recited (e.g., Internet, online portal, network) to perform the steps described. (Lack of algorithm, MPEP 2161.01 I, “In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed.”).
There is no description that provides for how one of ordinary skill in the art would practice the instant invention with any known or novel tool. Thus, even though some of the claim language is supported in disparate portions of the specification, the claimed invention as a whole is directed to a "black box" that is not supported by any generic or specific examples that show possession thereof nor could the outcomes thereof be predicted or replicated. "Generic claim language appearing in ipsis verbis in the original specification does not satisfy the written description requirement if it fails to support the scope of the genus claimed [see Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. (Fed. Cir. 2010) (en banc)]."
As such, the disclosure does not objectively demonstrate that applicant was in possession of-the claimed subject matter.
Dependent claims 2-7, 9-14, and 16-20 are rejected based dependency on rejected base claims 1, 8, and 15.
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 therefore, 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 an abstract idea without significantly more. In the instant case, representative method claim 15 is directed towards facilitating communicating insurance-related information pertaining to claim processes corresponding to claim events. Claim 15 is directed to the abstract idea of utilizing rules and/or instructions for performing the existing commercial practice (e.g., managing commercial/economic interactions between people) in an automatic manner, which is grouped under the certain methods of organizing human activity – fundamental economic principles, practices or concepts; sales activity; following set of instructions; commercial interactions; managing interactions between people (including social activities, teachings, following rules or instructions) grouping, in step 2A, prong one.
Claim 15 recites:
“based on initial information of a claim event affecting a user, determining a first set of individuals that are able to provide additional information related to the claim event; and
initiating a voice-AI engine and adaptive flow engine to perform a first voice-AI call session with each individual in the first set of individuals to obtain the additional information[[.]], the adaptive flow engine being trained to generate artificial intelligence (AI) prompts that are optimized to increase relevance and brevity in outputs of a large language model (LLM) engine or service, in part by identifying language that tends to cause the LLM engine or service to fixate on details that are of less relevance to claim processing;
wherein for each individual in the first set of individuals, the voice-AI engine and the adaptive flow engine combine to perform the first voice-AI call session by:
generating, in real time, conversation flow with the individual that is responsive to vocal outputs of the individual, wherein generating the conversation flow includes generating, by the adaptive flow engine based on the training, one or more AI prompts to receive an output from the LLM engine or service, the adaptive flow engine suppressing language in the AI prompt that is known, through training, to cause fixation by the LLM engine or service, the conversation flow being based at least in part on an output of the LLM engine or service;
detecting an engagement of the individual in the conversation flow, the engagement being detected based on a probability of the individual terminating the first voice-AI call session within a given time frame; and
tuning the voice-AI engine based on the detected engagement of the individual, to customize a voice-AI speech of the voice-AI call session for the individual, the voice-AI speech being customized for at least one of tone or speech speed.”
Based on the underlined elements above, abstract ideas and/or concepts are identified. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A, prong two, the additional elements of the claim such as a “voice-AI engine”, “adaptive flow engine”, represent the use of a computer-related devices as a tool (intermediary) to perform an abstract idea and/or does no more than generally apply the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. automate) implement the acts of utilizing rules and/or instructions for performing the existing commercial practice (e.g., managing commercial/economic interactions between people) in an automatic manner.
When analyzed under step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of utilizing rules and/or instructions for performing the existing commercial practice (e.g., managing commercial/economic interactions between people) in an automatic manner using computer computer-related technology and/or devices that merely perform as designed to function. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Hence, claim 1 is not patent eligible.
Independent claim 1 recites substantially the same limitations as claim 15 above and is ineligible for the same reasons. The subject matter of claim 1 corresponds to the subject matter of claim 15 in terms of a computing system (e.g., machine). Therefore, the reasoning provided for claim 15 applies to claim 1 accordingly.
Independent claim 8 recites substantially the same limitations as claim 15 above and is ineligible for the same reasons. The subject matter of claim 8 corresponds to the subject matter of claim 15 in terms of a computer-readable medium (e.g., manufacture). Therefore, the reasoning provided for claim 15 applies to claim 8 accordingly.
Dependent claims 2-7, 9-14 and 16-20 add further details and contain limitations that narrow the scope of the invention. However, these details do not result in significantly more than the abstract idea itself. As explained in the December 16, 2014 Interim Eligibility Guidance from the USPTO (in reference to the BuySAFE, Inc. v. Google, Inc. decision), further narrowing the details of an abstract idea does not change the § 101 analysis since a more narrow abstract idea does not make it any less abstract.
The step(s) recited are a further refinement of methods of organizing human activity – – fundamental economic principles, practices or concepts; sales activity; following set of instructions; commercial or legal interactions (agreements in the form of contracts; business relations); managing interactions between people (including social activities, teachings, following rules or instructions), because it merely describes intermediate steps and/or rules/instructions of the process.
Viewed individually and in combination, these additional elements do not provide meaningful limitations to transform the abstract idea such that the claims amount to significantly more than the abstraction itself.
Accordingly, the present pending claims are not patent eligible and are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Conclusion
The prior arts made of record and not relied upon are considered pertinent to applicant's disclosure.
Feiteira et al. (US 11,250,515 B1) discloses self-service claim automation using artificial intelligence. Embodiments are disclosed for automatically processing a claim provided by a user. Responsive to receiving a notice of loss associated with a claim of a user, a set of customer identity validation data are collected. The set of customer identity validation data may be determined to meet a predefined
identity validation criteria. Responsive to determining that the set of customer identity validation data meets the pre-defined identity validation criteria, current claim evaluation data for the claim may be accessed. A set of predictive impact assessment scores associated with the current claim evaluation data may be determined using a predictive model. The set of current claim evaluation data may be determined to meet pre-defined claim data criteria by comparing the predictive impact assessment scores with a set of impact assessment thresholds.
Shetty et al. (US 11,269,591 B2) discloses artificial intelligence based response to a user based on engagement level. Aspects of the present invention disclose a method for delivering an artificial intelligence-based response to a voice command to a user. The method includes one or more processors identifying an audio command received by a computing device. The method further includes determining a first engagement level of a user, wherein an engagement level corresponds to an attentiveness level of the user in relation to the computing device based at least in part on indications of activities of the user. The method further includes identifying a first set of conditions within an immediate operating environment of the computing device, wherein the first set of conditions indicate whether to deliver a voice response to the identified audio command. The method further includes determining whether to deliver the voice response to the identified audio command to the user based at least in part on the first engagement level and first set of conditions.
Claims 1-20 are rejected.
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 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Clifford Madamba whose telephone number is 571-270-1239. The examiner can normally be reached on Mon-Thu 7:30-5:00 EST Alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Donlon, can be reached at 571-272-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CLIFFORD B MADAMBA/Primary Examiner, Art Unit 3692
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