Notice of Pre-AIA or AIA Status
1. 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 Claims
2. This Office Action is in response to the claims filed on May 7, 2025. Claims 1-20 are pending and are rejected for the reasons described below.
Claim Objections
3. The claims are objected to because of the following informalities, and the following is suggested to overcome the informalities and to improve claim clarity:
Claim 1 recites the limitation, “providing feedback associated with the mapped plurality of WC variables as life proxy variable to a group benefits system…” However, the term “group benefits system” is introduced in a previous limitation. It appears that the group benefits system and the group benefits system previously recited in the claim correspond to the same entity. However, this limitation should be amended to clarify the relationship between these terms. For example, this limitation could be rewritten to state, “providing feedback associated with the mapped plurality of WC variables as life proxy variable to the group benefits system…” A similar issue is present in claims 9 and 16. Additionally, a similar issue is present in claim 9 regarding the term “a communications device.”
Appropriate correction or clarification is requested.
Claim Rejections - 35 USC § 101
4. 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.
5. Claims 1-20 are rejected under 35 U.S.C. §101 because the claimed invention recites and is directed to a judicial exception to patentability (i.e., a law of nature, a natural phenomenon, or an abstract idea) and does not include an inventive concept that is “significantly more” than the judicial exception under the January 2019 and October 2019 patentable subject matter eligibility guidance (2019 PEG) analysis which follows.
Step 1
6. Under the 2019 PEG step 1 analysis, it must first be determined whether the claims are directed to one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of matter). Applying step 1 of the analysis for patentable subject matter to the claims, it is determined that the claims are directed to the statutory category of a process (claims 16-20), a machine (claims 9-15). However, claims 1-8 are directed to “a group benefits insurance product” that is made by a process. The examiner notes that the term “group benefits insurance product” does not correspond to a product that has a tangible form. In other words, an insurance policy/product does not inherently comprise a physical or tangible form. Therefore, claims 1-8 are directed to “data per se” (See MPEP 2106.03(I), which is not a statutory category of invention. However, for the purpose of compact prosecution, claims 1-8 have been interpreted as if they recite a method so that they may be analyzed under the two-part test from Alice/Mayo. Therefore, we proceed to step 2A, Prong 1.
Step 2A, Prong 1
7. Under the 2019 PEG step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more designated categories of patent ineligible subject matter (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability.
Claim 1 recites the abstract idea of:
A group benefits insurance product made by a process involving the steps comprising:
receiving information from [[a worker's compensation (WC) system]], the information at least including a plurality of WC variables for calculating WC premiums;
mapping the plurality of WC variables for calculating workers compensation to life proxy variables in [[a transition layer]] by using general demographic information to proxy individual variables;
providing the mapped plurality of WC variables as life proxy variable to [[a group benefits system]] as a proxy for traditional variables used for determining the applicability of group benefits products to calculate a cost of a group benefit insurance product by applying the mapped plurality of WC variables to a plurality of base rates for group benefit insurance products,
[[the group benefits system]] at least multiplying a plurality of factors from the life proxy variables to derive life proxy base rates configured to determine the base rates for group benefit insurance products,
the life proxy variables at least including one of zip code, industry code, and blue score,
wherein the multiplying a plurality of factors are based on a statistical modeling of correlations between the WC variables used in the group benefit proxy and life proxy variables;
providing feedback associated with the mapped plurality of WC variables as life proxy variable to [[a group benefits system]] to improve the mapping of the WC variables; and
issuing an insurance product in the form of a link to a bindable quote including the calculated cost of the group benefit insurance product to a prospective insured based on the determined rates for group benefit insurance responsive to the prospective insured providing WC information.
Here, the recited abstract idea falls within one or more of the three enumerated 2019 PEG categories of patent ineligible subject matter, to wit: certain methods of organizing human activity, which includes fundamental economic practices or principles and/or commercial interactions (e.g., creating group benefits insurance products). However, the examiner also notes that the claims recite limitations for performing mathematical calculations (e.g., “the group benefits system at least multiplying a plurality of factors from the life proxy variables to derive life proxy base rates…”) Therefore, the claims also recite mathematical calculations
Step 2A, Prong 2
8. Under the 2019 PEG step 2A, Prong 2 analysis, the identified abstract idea to which claim 1 is directed does not include limitations or additional elements that integrate the abstract idea into a practical application.
Besides reciting the abstract idea, the limitations of claim 1 also recite generic computer components (e.g., a worker's compensation (WC) system, a transition layer, and a group benefits system). In particular, the recited features of the abstract idea are merely being applied on a computer or computing device or via software programming that is simply being used as a tool (“apply it”) to implement the abstract idea. (See e.g., MPEP §2106.05(f)). Therefore, these additional elements are recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using generic computer components. In other words, the additional elements are simply used as tools to perform the abstract idea.
Claim 1 also recites the following limitation:
displaying the insurance product with the bindable quote for the prospective insured to activate.
This limitation merely states that the method includes a step for displaying the bindable quote to the prospective insured. However, the claim does not provide significant technical detail regarding how the quote is displayed. Therefore, this limitation amounts to no more than merely outputting/displaying data, which is a form of insignificant extra-solution activity (See MPEP 2016.05(g): OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)).
Thus, claim 1 does not include any limitations or additional elements that integrate the abstract idea into a practical application. As a result, claim 1 is directed to an abstract idea.
Step 2B
9. Under the 2019 PEG step 2B analysis, the additional elements of claim 1 are evaluated to determine whether they amount to something “significantly more” than the recited abstract idea. (i.e., an innovative concept). Here, the recited additional elements (e.g., a worker's compensation (WC) system, a transition layer, and a group benefits system), do not amount to an innovative concept since, as stated above in the Step 2A, Prong 2 analysis, the claims are simply using the additional elements as a tool to carry out the abstract idea (i.e., “apply it”) on a computer or computing device and/or via software programming (See e.g., MPEP §2106.05(f)). The additional elements are specified at a high level of generality such that they are being used in the claims to simply implement the abstract idea and are not themselves being technologically improved (See e.g., MPEP 2106.05(I)(A)); (See also applicant’s Specification at least Paragraphs 26-32).
Additionally, the following limitation identified above as insignificant extra-solution activity (merely outputting/displaying data) has been revaluated in Step 2B:
displaying the insurance product with the bindable quote for the prospective insured to activate.
As stated in MPEP 2106.05(d), a factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity (Berkheimer v. HP, Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018)). In view of this requirement set forth by Berkheimer, this limitation does not integrate the abstract idea into a practical application, or amount to significantly more than the abstract idea, because the courts have found the concept of merely outputting/displaying data to be well-understood, routine, and conventional activity (See MPEP 2106.05(d): OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)).
Thus, claim 1 does not recite any additional elements that amount to “significantly more” than the abstract idea.
Additional Independent Claims
10. Independent claims 9 and 16 are similarly rejected under 35 U.S.C. 101 for the reasons described below:
Claim 9 recites limitations that are substantially similar to those recited in claim 1. However, the primary difference between claims 9 and 1 is that claim 9 is drafted as a system. Similarly, as described above regarding claim 1, claim 9 recites generic computer components (e.g., a processor operatively coupled to a communications device, a worker's compensation (WC) system, a transition layer operating with the processor and associated with a traditional group benefit system) that are simply being used as a tool (“apply it”) to implement the abstract idea. Therefore, since the same analysis should be used for claims 1 and 9, claim 9 is not patent eligible (See Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014)).
Claim 16 recites limitations that are substantially similar to those recited in claim 1. However, as discussed above, the primary difference between claims 16 and 1 is that claim 16 is properly drafted as a method. Similarly, as described above regarding claim 1, claim 16 recites generic computer components (e.g., a worker's compensation (WC) system, a transition layer, and a group benefits system) that are simply being used as a tool (“apply it”) to implement the abstract idea. Therefore, since the same analysis should be used for claims 1 and 16, claim 16 is not patent eligible (See Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014)).
Dependent Claims
11. Dependent claims 2-8, 10-15, and 17-20 are also rejected under 35 U.S.C. 101 for the reasons described below:
Claims 2-7, 10, and 17 simply provide further definition to the “variables” recited in claims 1, 9, and 16. Simply stating that the variables comprise various data (e.g., WC average salary) does not provide an indication of an improvement to any technology or technological field. Rather, this merely defines the type of data used to create the insurance product.
Claims 8, 11, and 18 simply provide further definition to the “group benefit product” recited in claims 1, 9, and 16. Simply stating that the group benefit product is a life insurance product does not provide an indication of an improvement to any technology or technological field. Rather, this merely defines the type of product created by the system/method.
Claims 12 and 19 simply refine the abstract idea because they recite a process step (e.g., filling in information for calculating the group benefit product) that falls under the category of organizing human activity, as described above regarding claim 1. Additionally, merely stating that this process is performed by the “transition layer” amounts to no more than merely applying generic computer components to implement the abstract idea on a computer.
Claims 13 and 20 simply refine the abstract idea because they recite a process step (e.g., comparing the cost of the group benefit by proxy to a cost of the group benefits product calculated using the traditional group benefit system) that falls under the category of organizing human activity, as described above regarding claim 1.
Claims 14 and 15 simply state that variations in the comparison performed in claim 13 are fed back to the transition layer to improve subsequent calculations. However, the claims do not provide significant technical detail regarding how this feedback/training process is performed. Therefore, such limitations amount to no more than merely applying generic computer-related components (e.g., the transition layer) to perform the abstract idea.
Thus, the dependent claims do not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application) that results in the claims being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Citation of Pertinent Prior Art
12. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Morgan (U.S. Pre-Grant Publication No. 20150088551): Morgan discloses systems and methods that are most closely related to the subject mater recited in the claims of the instant application. Morgan describes a process for facilitating a group benefit insurance plan. However, Morgan does not sufficiently disclose the specific processes recited in the claims regarding the use of proxy variables for determining the cost of the group benefit plan. A sufficient combination of prior art references could not be identified to reasonably teach the limitations of the independent claims.
Ranicar (U.S. Pre-Grant Publication No. 20130151283): Ranicar discloses a computer system for processing data related to a group benefit insurance policy issued to a policyholder to extend coverage to individual insureds.
Binns (U.S. Patent No. 7555439): Binns discloses a method of underwriting group life insurance for a policy period includes collecting medical claims data for the group to be underwritten.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM D NEWLON whose telephone number is (571)272-4407. The examiner can normally be reached Mon - Fri 8:30 - 4:30.
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/WILLIAM D NEWLON/Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
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