Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
This action is in response to application 19/009435 filled on 01/03/2025.
Claims 1-13 have been canceled.
Claims 14-29 have been added new and are currently pending.
Detailed Action
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 14-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. US 12191022 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because: referring to MPEP 804 II.B.2. Anticipation Analysis, “The claim under examination is not patentably distinct from the reference claim(s) if the claim under examination is anticipated by 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, 1052, 29 USPQ2d 2010, 2015-16 (Fed. Cir. 1993). This type of nonstatutory double patenting situation arises when the claim being examined is, for example, generic to a species or sub-genus claimed in a conflicting patent or application, i.e., the entire scope of the reference claim falls within the scope of the examined claim.” Here, claim under examination is anticipated by the reference claim(s) since the claims recite substantially similar limitations. Particularly, the entire scope of independent claims of Patent US 12191022 B1 falls within the scope of independent claims of the present application.
The following is a mapping of the claims of the Patent against the claims of the present application:
Present Application
Patent 12191022 B1
Identified differences and rationale as to why that does not amount to patentable difference.
14. (New) A method, in a computing environment comprising one or more processors and databases, to evaluate wellness programs on a quantitative basis based on their impact on participants' absence days from work, and which then determines the Returns on Investment (ROIs) on such wellness programs, the method comprising employing the computing environment for: organizing employer human resources (HR) data and wellness program data in databases with schemas that permit extracting the data and performing algorithms on it using the computing environment; determining the number of absence days for each employee participating in one of the wellness programs during each employee's year immediately before each employee joined the wellness program, which is that employee's base year; constructing a synthetic base year of the number of absence days for each employee that joined the wellness program in the first year that the employee became an employee based on the average base year absence days of similarly situated employees as determined using the HR data set; comparing the base year absence days to the current year absence days for each employee participating in the wellness program; valuing the excess of the base year absence days over the current year absence days at the employee's current year compensation rate or a normalized rate for all employees in the wellness program (which will be a positive value if the base year days exceed the current year days, and a negative value if the current year days exceed the base year days);aggregating these values for all the employees participating in the wellness program to determine the wellness program's occupational outcome for the current year or other period under evaluation; determining the wellness program's occupational outcome ROI for the current year or other period under evaluation by:(1) taking the overall value of the change in absence days,(2) less the overall cost of the program, wherein if the overall value of the change in absence days is positive, this will decrease that positive value, while if the overall change is negative it will increase that negative value, and then (3) dividing that difference by the overall cost of the wellness program; determining the wellness program's occupational outcome ROI since the inception of the wellness program by:(1) taking the aggregate of the overall value of the change in absence days for each year of the program, increased for inflation or decreased for deflation, from such year to the current year,(2) less the aggregate of the overall cost of the wellness program during each year, increased for inflation or decreased for deflation, from such year to the current year, and then (3) dividing that difference by the aggregate of the overall cost of the wellness program during each year, increased for inflation or decreased for deflation, from such year to the current year; filtering the results by various metrics and/or combinations thereof, including programs, periods, business units and/or departments, job descriptions and/or functions, and/or employer locations and/or geographies,
referred to as filtering metrics; receiving, from a user via a computer interface, a search request with respect to one or more wellness programs and/or filtering metrics; presenting, in response to receiving the search request, to the user via the interface: said wellness programs and/or filtering metrics hierarchically ordered based on their ROIs or selected filtering metric; hierarchically descending subsets of information related to each respective presented wellness program and/or filtering metric; in response to the user selecting a subset of presented information via the interface, providing the user access to said information via the interface.
1. A method and/or system of navigating through, and searching in, a computing environment (i.e., the navigation engine) to evaluate wellness programs on a quantitative basis based on their impact on the participants' healthcare costs and absences from work, and which then determines the ROIs (Returns on Investment) on such programs, comprising: presenting a system of visual navigation on a single computer screen for an individual (i.e., the user) using the computer along with a monitor and mouse, that represents categories and subcategories (and sub- subcategories, etc.) of material with functionally labeled circles or other images in a hierarchical organization; organizing that order with a central circle branching off into several smaller circles connected by stems, and from each of those smaller circles several more even smaller circles so connected, with more detailed subsets of the material as the circles descend; displaying thumbnails of the dashboards and reports available under a circle when the user hovers the computer mouse's cursor over it; accessing those dashboards and reports when the user clicks the mouse's cursor over the circle, or alternatively opening a particular dashboard or report directly when the user clicks on its thumbnail; linking the color of each circle for a wellness program to the navigation engine's determination of the program's ROI, which may include shading such color darker or lighter based on where the ROI falls within the color's range; organizing employer human resources (HR) data (e.g., time & attendance, payroll, turnover, etc.) and wellness program data (e.g., enrollment and cost) in databases arranged in tables with schemas that permit the engine to extract the data and perform the engine's algorithms on it; determining the number of sick or PTO (Paid Time Off) days (i.e., absence days) for each employee participating in the program during that employee's base year (i.e., the year immediately before the employee joined the program); constructing a synthetic base year of the number of absence days for each employee that joined the program in the first year that the employee became an employee based on the average base year absence days of similarly situated employees as determined using the HR data set (e.g., age, gender, job description, location, and other job demographics); comparing the base year absence days to the current year absence days (or other period under evaluation) for each employee participating in the program; valuing the excess of the base year absence days over the current year absence days at the employee's current year compensation rate or a normalized rate for all employees (which will be a positive number if the base year days exceed the current year days, and a negative number if the current year days exceed the base year days); aggregating these values for all the employees participating in the program to determine the program's occupational outcome for the current year or other period under evaluation; determining the program's occupational outcome ROI for the current year (or other period under evaluation) by taking (1) the overall value of the change in absence days (may be positive or negative), less (2) the overall cost of the program (if the overall value of the change in absence days is positive, this will decrease that positive value, while if the overall change is negative it will increase it), and then dividing that difference by (3) the overall cost of the program; determining the program's occupational outcome ROI since the inception of the program by taking (1) the aggregate of the overall value of the change in absence days for each year of the program, increased for inflation (or decreased for deflation) from such year to the current year, less (2) the aggregate of the overall cost of the program during each year, increased for inflation (or decreased for deflation) from such year to the current year, and then dividing that difference by (3) the aggregate of the overall cost of the program during each year, increased for inflation (or decreased for deflation) from such year to the current year; and filtering the results by various metrics and/or combinations thereof, including programs, periods, business units and/or departments, job descriptions and/or functions, and employer locations and/or geographies.
The wording of the present claim is almost identical to the patent ‘022. The present claim includes the italized text in the bottom of the claim which is also taught in the patent. The Patent goes into more detail on how the data is being filtered and organized by hierarchy by using circles and what not. Therefore there is not patentable difference because the present claim is anticipated by the patent claim.
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 14-29 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.
Step 1:
Claims 14-29 are drawn to a method and system, which is/are statutory categories of invention (Step 1: YES).
Step 2A Prong One:
Independent claim 14 and 22 recite determining the number of absence days for each employee; constructing a synthetic base year; comparing the base year absence days to the current absence days; normalizing rate for all employee; aggregating these values for all the employees; determining the wellness program occupational outcome; and filtering the results by various metrics.
The recited limitations, as drafted, under their broadest reasonable interpretation, cover certain methods of organizing human activity by identifying and reporting events preceding a pattern in a set of user data. If a claim limitation, under its broadest reasonable interpretation, covers managing personal behavior or relationships or interactions between people, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claims recite an abstract idea (Step 2A Prong One: YES).
Step 2A Prong Two:
This judicial exception is not integrated into a practical application. The claims are abstract but for the inclusion of the additional elements including a one or processors and databases, which are additional elements that are recited at a high level of generality such that they amount to no more than mere instruction to apply the exception using generic computer components. See: MPEP 2106.05(f).
The claims recite the additional element of receiving a search request; and presenting said wellness program, which are considered limitations directed to insignificant extra-solution activity that does not amount to an inventive concept because the limitations do not impose meaningful limits on the claim such that is it not nominally or tangentially related to the invention. In the claimed context, the claimed receiving limitations are incidental to the performance of the recited abstract idea of identifying and reporting events preceding a pattern in a set of user data. See: MPEP 2106.05(g).
The combination of these additional elements is no more than mere instructions to apply the exception using generic computer components. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Hence, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Accordingly, the claims are directed to an abstract idea (Step 2A Prong Two: NO).
Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, using the additional elements to perform the abstract idea amounts to no more than mere instructions to apply the exception using generic components. Mere instructions to apply an exception using a generic components cannot provide an inventive concept. See: MPEP 2106.05(f).
Further, the claimed additional elements, identified above, are not sufficient to amount to significantly more than the judicial exception because they are generic components that are not integrated into the claim because they are merely incidental or token additions to the claim that do not alter or affect how the process steps or functions in the abstract idea are performed. Therefore, the claimed additional elements do not add meaningful limitations to the indicated claims beyond a general linking to a technological environment. See: MPEP 2106.05(h).
Further, the claimed additional elements, identified above, are not sufficient to amount to significantly more than the judicial exception because they are generic components that are configured to perform well-understood, routine, and conventional activities previously known to the industry. See: MPEP 2106.05(d). Said additional elements are recited at a high level of generality and provide conventional functions that do not add meaningful limits to practicing the abstract idea. The originally filed specification supports this conclusion at Figure 1, and
Paragraph 45, where “This input data is arranged in databases, which are themselves arranged in tables with schemas that permit the engine to extract the data and perform the engine's algorithms. Note that the occupational outcome measures only a program's effect on employees as an employer will not have any absence days on non-employee participants. In contrast, the healthcare outcome measures it on all program participants (both employees and non-employees) and in some cases the impact of individuals not participating in a program who could benefit from it, with the ability to segregate the results by these categories.”
Paragraph 55, where “The engine normalizes the risk scores so that individuals of average health receive a risk score of 1.000, individuals healthier than average a score below 1.000 (the lower the score, the healthier), and individuals sicker than average a score above 1.000 (the higher the score, the sicker). As described below, under certain circumstances the engine may further normalize the results by assigning an individual with a score below 1.000 a score of 1.000. [0055] For each individual's base year or synthetic base year (and any years after the base year, but before the current year), the engine increases the claims and the value of the medically-related absence costs for inflation to the current year (or decreases them for deflation, as the case may be)”
Paragraph 15, where “The navigation engine begins with a visual interface that displays all the engine's analytics and data on the computer monitor at one time, arranging such items in categories and subcategories.”
The claims recite the additional element of receiving data and presenting information, which amounts to extra-solution activity concerning mere data gathering and displaying. The specification (e.g., as excerpted above) does not provide any indication that the additional elements are anything other than well‐understood, routine, and conventional functions when claimed in a merely generic manner (as they are here). See: MPEP 2106.05(g).
Viewing the limitations as an ordered combination, the claims simply instruct the additional elements to implement the concept described above in the identification of abstract idea with routine, conventional activity specified at a high level of generality in a particular technological environment.
Hence, the claims as a whole, considering the additional elements individually and as an ordered combination, do not amount to significantly more than the abstract idea (Step 2B: NO).
Independent claims 16 and 24 recite substantially similar abstract idea as seen in claims 14 and 22 and hence are rejected for similar rationale. Claims 16 and 24 add more details on how the data is analyzed/organized, however they still fall under the Certain Methods of Organizing Human Activity” grouping of abstract ideas.
Dependent claim(s) 15, 17-21, 23, and 25-29 when analyzed as a whole, considering the additional elements individually and/or as an ordered combination, are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea without significantly more. These claims fail to remedy the deficiencies of their parent claims above, and are therefore rejected for at least the same rationale as applied to their parent claims above, and incorporated herein.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Bigham et al. (US 8239246 B1) teaches “ Electronic report distribution industry standards Manual reporting for regulatory compliance, Annual reporting on outcomes and ROI for Executive dashboard generated to understand contractual obligations and operational management, provider high-level cost and utilization trends across management performance and purchaser value reporting the enterprise Vendor Data is included in reports Dynamic, interactive, individualized reports Ability to perform metrics evaluation with drill-down capabilities and compared to expected thresholds identification of actionable items Dedicated team to manage standard reports On-demand reporting on outcomes and ROI and ad hoc reports for root cause analysis for operational management.” Gouvernel et al. (US 2016/0275431 A1) teaches “the program code instructs the employee evaluation system to compare the performance results to ideal performance results. The program code instructs the employee evaluation system to display the group of employees on the two axis chart of the graphical user interface and display system”. Kamura et al. (US 2023/0196249 A1) teaches “This system for calculating the cost of labor productivity loss comprises: an employment information storage unit which stores data pertaining to employment information for each employee; a medical examination result storage unit which stores data pertaining to a medical examination for each employee; a stress check result storage unit which stores data pertaining to a stress check for each employee; a setting data storage unit which stores setting data; a cost of labor productivity loss calculation unit which calculates the cost of labor productivity loss from item data stored in the employment information storage unit, item data stored in the medical examination result storage unit, and item data stored in the stress check result storage unit; and an output unit which outputs the calculated cost of labor productivity loss”. The prior art fails to teach “determining the wellness program's occupational outcome ROI for the current year or other period under evaluation by:(1) taking the overall value of the change in absence days,(2) less the overall cost of the program, wherein if the overall value of the change in absence days is positive, this will decrease that positive value, while if the overall change is negative it will increase that negative value, and then (3) dividing that difference by the overall cost of the wellness program; determining the wellness program's occupational outcome ROI since the inception of the wellness program by:(1) taking the aggregate of the overall value of the change in absence days for each year of the program, increased for inflation or decreased for deflation, from such year to the current year,(2) less the aggregate of the overall cost of the wellness program during each year, increased for inflation or decreased for deflation, from such year to the current year, and then (3) dividing that difference by the aggregate of the overall cost of the wellness program during each year, increased for inflation or decreased for deflation, from such year to the current year; filtering the results by various metrics and/or combinations thereof, including programs, periods, business units and/or departments, job descriptions and/or functions, and/or employer locations and/or geographies, referred to as filtering metrics” as seen in claims 14 and 22. The prior art fails to teach “adjusting the value of the organized claims and medically-related absence days costs for inflation/deflation to the current year for each patient's base year or synthetic base year, and any years after the base year but before the current year; selecting the claims and thereby the medically-related absence days costs to use when evaluating the wellness program:(1) for a general wellness program, the user may select all medical and pharmacy positive value, while if the overall change is negative it will increase that negative value, and then, (3) dividing that difference by the overall cost of the program; determining the program's healthcare outcome/overall ROI since the inception of the program by: (1) taking the aggregate of the overall value of the change in claims and medically- related absence days for each year of the program, adjusted for inflation/deflation from such year to the current year, (2) less the aggregate of the overall cost of the program during each year, adjusted for inflation/deflation from such year to the current year, and then(3) dividing that difference by the aggregate of the overall cost of the program during each year, adjusted for inflation/deflation from such year to the current year; and filtering the results by various metrics and/or combinations thereof, including programs, periods, business units and/or departments, job descriptions and/or functions, employer locations and/or geographies, employees versus dependents, and/or health plan/clinical data, including the type of health plan covering the person, referred to as filtering metrics” as seen in claim 16 and 24.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAROUN P KANAAN whose telephone number is (571)270-1497. The examiner can normally be reached Monday-Friday 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mamon Obeid can be reached at (571) 270-1813. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MAROUN P. KANAAN
Primary Examiner
Art Unit 3687
/MAROUN P KANAAN/Primary Examiner, Art Unit 3687
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