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
This Office Action is responsive to communications filed on 31 July 2026 and the Terminal Disclaimer filed 11 August 2026; Claim(s) 1, 17 and 18 have been amended and Claim(s) 9-10 and 26-27 have been cancelled and no new Claims have been added, therefore Claim(s) 1-8, 11-25, 28-34 is/are pending in the application and have been presented for examination.
Summary
Office Action Summary:
The Terminal Disclaimer filed 11 August 2026 overcomes the double patenting rejection.
Amendments to the Claim(s) introduce issues under 112(a) for new matter, see below.
The amendments to the Claim(s) does not overcome the rejection under 35 USC 101.
The Applicant’s arguments have been fully considered however they are either moot or not persuasive, see Response to Arguments below.
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, 17, 18, and 34 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The amended claims set forth the limitation of, “wherein the step of applying the first prediction model and the second prediction model for predicting the expected loss for subsequent claim transactions is performed automatically without requiring the segment type as part of the set of claim transactions received for processing at the server”, however there does not appear to be support in the Applicant’s disclosure for the amended claim limitation. Although the Applicant has support for performing the step of applying the first and the second model automatically (see the Applicant’s disclosure at paragraph 0049, “and are then automatically and dynamically utilized to predict expected loss for new claim transactions included in the transaction data 124”), the Applicant’s disclosure is silent regarding “performed automatically without requiring the segment type as part of the set of claim transactions received for processing at the server”. Therefore, it appears that the claim(s) contain 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
If the Applicant believes there to be sufficient support for the amended claim limitations, the Applicant should cite to the specification/drawings where there is support and provide a clear explanation of how the subject matter is supported by the disclosure.
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.
Claim(s) 1-8, 11-25, and 28-34 is/are rejected under 35 USC 101 because the claimed invention is directed to an abstract idea without significantly more.
Under Eligibility Step 1 analysis, it is determined that claims 1-8, 11-25, and 28-34 are directed to a system and method.
Under Eligibility Step 2A, Prong 1 analysis, Claim 1 recites, "A computer system for predicting an expected loss for a set of claim transactions received for processing at a server, the computer system comprising: a computer processor; and a non-transitory storage medium having instructions that when executed by the computer processor perform actions comprising: predicting, at a first prediction model, a claim frequency of the set of claim transactions over a given time period, the first prediction model trained using historical frequency data and segment types, each segment type having corresponding subtypes further defining a type of claim; predicting, at a second prediction model, claim severity of the set of claim transactions during the given time period, the second prediction model trained using historical severity data including average loss severity values based on the segment types and the corresponding subtypes; identifying the expected loss for the set of claim transactions over the given time period by applying a product of outputs of the first prediction model and the second prediction model; and, applying the first and the second prediction model, once trained, for predicting an expected loss for subsequent claim transactions associated with the subtypes; and wherein the step of applying the first prediction model and the second prediction model for predicting the expected loss for subsequent claim transactions is performed automatically without requiring the segment type as part of the set of claim transactions received for processing at the server.”, the underlined limitations indicate additional elements that are to be further analyzed at Step 2A-2. Independent Claim(s) 17-18 and 34 are similar to Claim 1 except for reciting, A non-transitory storage medium comprising instructions executable by a processor, the instructions comprising steps for the processor, applying a product of each predicted one of the claim frequency and the claim severity via a third loss cost model for identifying the loss cost for each input claim from the set of features based on the segment type (Claim 17), A computer implemented method for predicting an expected loss for a set of claim transactions received for processing at a server, the computer implemented method (Claim 18), A computer program product comprising a non-transitory storage device storing instructions that when executed by at least one processor of a computing device (Claim 34), therefore Claims 17-18 and 34 are analyzed similarly as Claim 1.
The Claim(s) are found to be within the enumerated group(s) of Certain Methods of Organizing Human Activity, specifically as it relates to fundamental economic principles or practices specifically as it relates to insurance and mitigating risk. The Claims also appear to recite mathematical concepts as well.
For example, the limitations of predicting a claim frequency of the set of claim transactions over a given time period, using historical frequency data and segment types, predicting claim severity of the set of claim transactions during the given time period using historical severity data including average loss severity values based on the segment types and the corresponding subtypes, identifying the expected loss for the set of claim transactions over the given time period by applying a product of outputs – recite the abstract idea of predicting financial loss as it relates to insurance which is a common business practice. The Examiner finds that the limitations of “applying a product of outputs” recites mathematical concepts (i.e., calculating the predicted loss by applying a product of the two models (frequency x severity)).
Although the Examiner has provided this summary of the Claims, the analysis regarding subject matter eligibility considers the entirety of the claim elements, both individually and as a whole (or ordered combination).
Under Eligibility Step 2A, Prong 2 analysis, the limitations of - A computer system, a server, a computer processor; and a non-transitory storage medium having instructions that when executed by the computer processor (Claim 1), A non-transitory storage medium comprising instructions executable by a processor, the instructions comprising steps for the processor, applying a product of each predicted one of the claim frequency and the claim severity via a third loss cost model for identifying the loss cost for each input claim from the set of features based on the segment type (Claim 17), A computer implemented method for predicting an expected loss for a set of claim transactions received for processing at a server, the computer implemented method (Claim 18), A computer program product comprising a non-transitory storage device storing instructions that when executed by at least one processor of a computing device (Claim 34), wherein the product data comprises vehicle data or residential property data, and the user data comprises driver data or owner data (Claim 9) - does not integrate the judicial exception into practical application because the claims recite generic computer components performing generic computer functions which amounts to nothing more than mere instructions to implement the abstract idea in a computer environment.
The amended claim limitations of “wherein the step of applying the first prediction model and the second prediction model for predicting the expected loss for subsequent claim transactions is performed automatically without requiring the segment type as part of the set of claim transactions received for processing at the server”, does not provide an improvement to the computer or the technical field as argued by the Applicant. Not using a particular data type or less data does not provide a technical improvement to the computer or model, it just reduces the amount of data being processed. The claimed amendments do not provide an improvement to the internal functioning of the computer or to machine learning technology itself.
Independent Claim(s) 1, 17-18, and 34, recites predicting and applying a first and second prediction model for determining an expected loss the Examiner finds that the prediction model(s) are recited at a high level of generality such that they are merely invoked to perform the abstract idea. Dependent Claim(s) 2-7, 11, 16, 19-25, 28 and 33 recite various limitations regarding training and using the prediction model(s)/machine learning model and are therefore analyzed similarly.
Dependent Claims 11-13 and 28-30 are also considered to be encompassed by the abstract idea for indicating, the type of feature dataset (Claim 11, 28), the type of product data (Claim 12, 29), and the type of policy data (Claim 13, 30).
The limitations of the claim(s) does not appear to recite an improvement to another technology or technical field; does not provide any improvements to the functioning of the computer itself; does not apply the judicial exception with, or by use of, a particular machine; does not effect a transformation or reduction of a particular article to a different state or thing; it does not add a specific limitation, or add unconventional steps that confine the claim(s) to a particular useful application; or other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. Generic computer components performing generic computer functions, without an inventive concept, do not amount to significantly more than the abstract idea. The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. None of the limitations, considered alone or in an ordered combination provide eligibility, because taken as a whole, the claim(s) is/are merely instructions to implement the abstract idea in a computer environment.
Under Eligibility Step 2B analysis, the claim(s) does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional claim elements, considered individually and as an ordered combination, do not amount to significantly more than the abstract idea. The claim includes that, as stated above, it is implemented by a computer which employs a computer processor is nothing more than “apply it” with instruction to a generic computer. The claimed computer components are recited at a high level of generality and are merely invoked to perform the abstract idea.
Response to Amendment
The Terminal Disclaimer filed 11 August 2026 overcomes the double patenting rejection.
Amendments to the Claim(s) introduce issues under 112(a) for new matter.
The amendments to the Claim(s) does not overcome the rejection under 35 USC 101.
The Applicant’s arguments have been fully considered however they are either moot or not persuasive, see Response to Arguments below.
Response to Arguments
Applicant’s arguments with respect to claims 1, 17-18 and 34 have been considered but are not persuasive, see updated 101 rejection above.
The Applicant relies on the same arguments for depending claims 2-16 and 19-33 therefore the Examiner’s response to the Applicant’s arguments above applies to depending claims 2-16 and 19-33.
Applicant's argument(s) filed 31 July 2026 have been fully considered but they are not persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELINDA GIERINGER whose telephone number is (408)918-7593. The examiner can normally be reached Monday - Friday (11AM-6PM ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached on (571)270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.G./Examiner, Art Unit 3622
/ILANA L SPAR/Supervisory Patent Examiner, Art Unit 3622
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