DETAILED ACTION
Notice of Pre-AIA or AIA Status
[1] The present application is being examined under the pre-AIA first to invent provisions.
Notice to Applicant
[2] This communication is in response to the amendment filed 24 December 2025. The present response is considered in light of the Decision of the Patent Trial and Appeal Board (PTAB) rendered 19 December 2018 and affirming the rejection of the pending claims under 35 U.S.C. 101 as being directed to non-statutory subject matter. Claims 2-8, 11, 14, 16-18, 22, 26-27, and 30 have been cancelled. Claims 1, 15, 25, and 29 have been amended. Claims 1, 9-10, 12-13, 15, 19-21, 23-25, and 28-29 are pending.
Response to Remarks/Amendment
[3] Applicant's remarks filed 24 December 2025 have been fully considered and are addressed as follows:
[i] In response to rejection(s) of claim(s) 1, 9-10, 12-13, 15, 19-21, 23-25, and 28-29 as presented by amendment) 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.as set forth in the previous Office Action mailed 24 September 2025, Applicant provides the following remarks:
“…The Specification describes that the system identifies a user based on IP address and uses stored information about the user’s location to filter available products…the Specification discloses that the system may use IP addresses to identify users and that the system can determine what products and services are available to a particular user based on the user’s location…This disclosure demonstrates that the inventor possess a system that correlates IP address to geographic regions…”
In response, Examiner respectfully disagrees.
Claim 15 as presented by amendment recites: “…automatically generating a filtered list of available items by querying the database and narrowing results to only those that are available to the user…wherein the filtering engine automatically correlates the IP address to a specific geographic region…”.
Claim 25 as presented by amendment further clarifies the “narrowing” presented by amendment to claim 15 to further specify “…automatically generating a filtered list of available items by querying the database and narrowing results to only those that are available to the user, wherein the narrowing is based on authorization parameters related to a geographic scope based on the IP address associated with the user and the client station, and the user profile information about the user, and wherein the querying responds to a search entered by the user; wherein the filtering engine automatically correlates the IP address to a specific geographic region…”
With respect to generating a list of available items based on geographic authorizations associated with a location associated with an IP address, the Specification provides supportive disclosure at paragraphs [0016] [0022] [0028] and [0030]. In each of these passages IP address is used to identify a specific producer, i.e., a user, because the system has stored the user’s IP address and the IP address is used to identify particular producers.
The instant application utilizes the IP address to identify a specific producer, i.e., a user, because the system has stored the user’s IP address as an identifier for the user. Referencing paragraph [0016] of the Specification, the supportive disclose indicates that the same “locating” can be performed by the user’s login credentials, username etc. In other words, the producer’s IP address is employed as would a name or other identifier of a person/entity known to the system. Paragraphs [0022] [0028] and [0030] are similarly limited to the use of an IP address as a general identifier for the producer. Products available to an identified user are further based on stored authorizations/products associated with the user. In this manner, the identity information associated with the user’s stored IP address is utilized to determine a location of the user, and filter products according to that location.
With respect to the amended limitations, there does not appear to be any mention of specific processes of associating an IP address with a geolocation and filtering database queries which includes: “…wherein the filtering engine automatically correlates the IP address to a specific geographic region…”. As noted above, the supportive disclosure appears to be limited to utilizing a stored IP address to identify a user/producer and the producer’s identity is associated with selling authorizations (including geographic restrictions and compliance) associated with the producer. The system/filtering engine does not appear to include any geolocating process associated with the user’s IP address other than to identify the user by IP, and subsequently identify the authorizations for the user based on stored information associated with the user’s identity. In other words, the system or filtering engine does not appear to determine or derived the user’s location from the IP address. Accordingly, the supportive disclosure does not provide written description in which “…the filtering engine automatically correlates the IP address to a specific geographic region…”.
Accordingly, claim 15 is 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 an engine that correlates the IP address to a specific geographic region.
[ii] In response to rejection(s) of claim(s) 1, 9-10, 12-13, 15, 19-21, 23-25, and 28-29 as presented by amendment) under 35 U.S.C. 101 as being directed to non-statutory subject matter as set forth in the previous Office Action mailed 24 September 2025, Applicant provides the following remarks:
Applicant remarks:
“...the amended claims now recite ‘automatically generating a filtered list of available items by querying the database and narrowing results to only those items that are available to the user’ This element reflects a specific technical process of automated database filtering that goes beyond merely using a computer as a tool to perform an abstract idea…the claims recite that ‘the filtering engine automatically correlates the IP address to a specific geographic region and filters the database queries based on regulatory compliance parameters associated with the identified geographic region’. This element imposes meaningful restrictions on the scope of the claims by requiring specific automated processing the correlates network identifiers to geographic regions …this is not a generic computer performing generic functions…”
Applicant additionally provides:
“...A human operator cannot automatically query a database, correlate IP address to geographic regions...The combination of elements-including automatic IP address correlation, automated database querying with compliance-based filtering, and real-time personalized content delivery – provides a technical solution to the technical problem of efficiently delivering geographically-authorized content to users over a network…”
In response, Examiner respectfully disagrees. With respect to considerations under Eligibility Step 2A prong 2: (See MPEP 2106.04(d)):
Claim 15 as presented by amendment recites: “…automatically generating a filtered list of available items by querying the database and narrowing results to only those that are available to the user…wherein the filtering engine automatically correlates the IP address to a specific geographic region…”.
Claim 25 as presented by amendment further clarifies the “narrowing” presented by amendment to claim 15 to further specify “…automatically generating a filtered list of available items by querying the database and narrowing results to only those that are available to the user, wherein the narrowing is based on authorization parameters related to a geographic scope based on the IP address associated with the user and the client station, and the user profile information about the user, and wherein the querying responds to a search entered by the user; wherein the filtering engine automatically correlates the IP address to a specific geographic region…”
With respect to the amended limitations and potential technical elements added to the claim(s) through amendment, the Specification provides supportive disclosure at paragraphs [0016] [0022] [0028] and [0030]. In each of these passages IP address is used to identify a specific producer, i.e., a user, because the system has stored the user’s IP address and the IP address is used to identify particular producers.
In accordance with the supportive disclosure, the instant application utilizes the IP address to identify a specific producer, i.e., a user, because the system has stored the user’s IP address as an identifier for the user. Referencing paragraph [0016] or the Specification as published, an IP address is used to address a producer, and the system has stored information indicating that the producer is in Virginia. The system then sends the producer information on products that are licensed to be sold in Virginia. Paragraph [0016] indicates that the same “locating” can be performed by the user’s login credentials, username etc. In other words, the producer’s IP address is employed as would a name or other identifier of a person/entity known to the system. Paragraphs [0022] [0028] and [0030] are similarly limited to the use of an IP address as a general identifier for the producer. Products available to an identified user are further based on stored authorizations/products associated with the user.
Examiner respectfully maintains that IP-based geolocation (i.e., a process of determining a physical location of a client station from a network address of a station in a digital network when only the network address is known) can be considered a technical process in which a position in a digital network is utilized to trace or map a digital network location to a geolocation. However, Examiner respectfully maintains that Applicant’s contention that a process of identifying a geolocation of a client device based on the IP address by a process of mapping the position in a digital network to a geolocation is not reasonably supported by the Specification as filed. In other words, while the general use of an IP address to identify the user is disclosed, the Specification does not appear to provide disclosure of the mapping process argued by Applicant. Accordingly, this is not a reasonable interpretation of the amended limitation given the explanatory disclosure (see interpretation under rejection of the pending claims under 35 U.S.C. 112(a) below for further clarification).
Examiner respectfully maintains that given an IP address, stored information about a user including location and an associated geographic location, one of ordinary skill in the art could be reasonably relied upon to filer products to ensure that only products authorized for sale in that region were made available to the user. Accordingly, absent clarification, these steps are reasonably understood to be operations performable by a human operator employing human mental processing.
With respect to the recited “computer server comprising a filtering engine”, “administration processor”, “database”, “interface” and communication of content specified as occurring over a network, Examiner notes that each of these elements were considered and analyzed in the Decision of the Patent Trial and Appeal Board (PTAB) rendered 19 December 2018, incorporated in its entirety in response herein.
The claims as presented do not include an additional technical element beyond a generic function of storing and retrieving information from computer memory to include profile information and insurance information and to further identify a user based on IP address, as discussed above.
Accordingly, the computer-implemented features of the claimed invention noted above are reasonably limited to: (1) receiving and sending data via a computer network (e.g., insurance related content which is scanned or uploaded using a generic scanner); and (2) storing and retrieving information and data from a generic computer memory (e.g., stored insurance information and user profile information including IP address). The above listed computer-implemented functions are distinguished from the generic data storage, retrieval, transmission, and data manipulation/processing capacities of the generic systems identified in the Specification solely by the recited identification of particular data elements that are of utility to a user performing the specific method of personalizing and delivering insurance information where the personalization relates to the selling authorizations for insurance and financial products which are associated with the user. The non-technical functions of personalizing and delivering insurance information where the personalization relates to the selling authorizations for insurance and financial products which are associated with the user benefit from the use of computer technology, but fail to improve the underlying technology.
With respect to the determinations of the Courts regarding using a computer for sending and receiving data or information over a computer network and storing and retrieving information from computer memory, see at least: receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362; sending messages over a network OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); receiving and sending information over a network buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93 and see performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199; and Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) with respect to the performance of repetitive calculations does not impose meaningful limits on the scope of the claims.
Accordingly, Examiner respectfully maintains that the claims are reasonably understood to be conducting standard, and formally manually performed, selection and personalization of items for transmission to a user using the generic devices as tools to perform the abstract idea. The claimed personalizing and delivering insurance information where the personalization relates to the selling authorizations for insurance and financial products which are associated with the user benefits from the use of computer communicating information over a network, but fails to present an additional element which integrate the judicial exception into a practical application of the judicial exception.
Applicant’s remarks are reasonably considered to have been fully addressed in the context of the rejection of the pending claims under 35 U.S.C. 112(a) presented herein and further in consideration of the framework for determining patent subject matter eligibility under 35 U.S.C. 101 established in the decisions of the Supreme Court in Mayo Collaborative Services v. Prometheus Labs., Incorporated and Alice Corporation Pty. Ltd. v. CLS Bank International, et al. (See MPEP 2106 subsection III and 2106.03-2106.05). Any remaining remarks arguments are addressed in accordance with Examiner’s response in the prior Office Action(s) mailed 17 June 2025, 9/29/24, 5/30/19, 12/10/19, 6/12/19, 10/5/20, 3/24/21, 10/14/21, 3/17/22, and 21 June 2024, incorporated in their entirety in response.
Claim Rejections - 35 USC § 112
[4] Previous rejection(s) of claims 1, 9-10, 12-13, 15, 19-21, 23-25, and 28-29 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 has/have not been overcome by amendments to the subject claims and is/are maintained.
Claim 15 as presented by amendment recites: “…automatically generating a filtered list of available items by querying the database and narrowing results to only those that are available to the user…wherein the filtering engine automatically correlates the IP address to a specific geographic region…”.
Claim 25 as presented by amendment further clarifies the “narrowing” presented by amendment to claim 15 to further specify “…automatically generating a filtered list of available items by querying the database and narrowing results to only those that are available to the user, wherein the narrowing is based on authorization parameters related to a geographic scope based on the IP address associated with the user and the client station, and the user profile information about the user, and wherein the querying responds to a search entered by the user; wherein the filtering engine automatically correlates the IP address to a specific geographic region…”
With respect to generating a list of available items based on geographic authorizations associated with a location associated with an IP address, the Specification provides supportive disclosure at paragraphs [0016] [0022] [0028] and [0030]. In each of these passages IP address is used to identify a specific producer, i.e., a user, because the system has stored the user’s IP address and the IP address is used to identify particular producers.
The instant application utilizes the IP address to identify a specific producer, i.e., a user, because the system has stored the user’s IP address as an identifier for the user. Referencing paragraph [0016] or the Specification as published, an IP address is used to address a producer, and the system has stored information indicating that the producer is in Virginia. The system then sends the producer information on products that are licensed to be sold in Virginia. Paragraph [0016] indicates that the same “locating” can be performed by the user’s login credentials, username etc. In other words, the producer’s IP address is employed as would a name or other identifier of a person/entity known to the system. Paragraphs [0022] [0028] and [0030] are similarly limited to the use of an IP address as a general identifier for the producer. Products available to an identified user are further based on stored authorizations/products associated with the user. In this manner, the identity information associated with the user’s stored IP address is utilized to determine a location of the user, and filter products according to that location.
With respect to the amended limitations, there does not appear to be any mention of specific processes of associating an IP address with a geolocation and filtering database queries which includes: “…wherein the filtering engine automatically correlates the IP address to a specific geographic region…”. As noted above, the supportive disclosure appears to be limited to utilizing a stored IP address to identify a user/producer and the producer’s identity is associated with selling authorizations (including geographic restrictions and compliance) associated with the producer. The system/filtering engine does not appear to include any geolocating process associated with the user’s IP address other than to identify the user by IP, and subsequently identify the authorizations for the user based on stored information associated with the user’s identity. In other words, the system or filtering engine does not appear to determine or derived the user’s location from the IP address. Accordingly, the supportive disclosure does not provide written description in which “…
For purposes of further examination, Examiner has treated the pending claims with respect to the limitations presented by amendment in accordance with the supportive disclose, i.e., the producer’s IP address is being employed as would a name or other identifier of a person/entity known to the system.
Accordingly, claim 15 is 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 an engine that correlates the IP address to a specific geographic region.
Independent claims 1, 25, and 29 include the amended limitations addressed above with respect to claim 15 and are also 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.
Dependent claims 9-10, 12-13, 19-21, 23-24, and 28 inherit and fail to remedy the deficiencies of their respective independent claims through dependency and are also 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.
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.
[5] Previous rejection(s) of claims 1, 9-10, 12-13, 15, 19-21, 23-25, and 28-29 under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter, specifically an abstract idea, absent significantly more has/have not been overcome by the amendments to the subject claims and is/are maintained. The statement of rejection below is reiterated as originally presented in the previous Office Action mailed 24 September 2025. The present amendments and remarks are addressed above under “Response to Remarks/Amendment”.
Based on the framework for determining patent subject matter eligibility under 35 U.S.C. 101 established in the decisions of the Supreme Court in Mayo Collaborative Services v. Prometheus Labs., Incorporated and Alice Corporation Pty. Ltd. v. CLS Bank International, et al., claim(s) 1, 9-10, 12-13, 15, 19-21, 23-25, and 28-29 as a whole is/are determined to be directed to an abstract idea (See MPEP 2106 subsection III and 2106.03-2106.05). The rationale for this determination is explained below:
Abstract ideas are excluded from patent eligibility based on a concern that monopolization of the basic tools of scientific and technological work might serve to impede, rather than promote, innovation. Still, inventions that integrate the building blocks of human ingenuity into something more by applying the abstract idea in a meaningful way are patent eligible (See MPEP 2106.04).
The United States Patent and Trademark Office has set forth enumerated groupings of ineligible abstract ideas, namely: (1) Mathematical Concepts (e.g., mathematical relationships, mathematical formulas or equations, and mathematical calculations; (2) Mental Processes (e.g., concepts performed or performable in the human mind including observations, evaluations, judgements, or opinions); and (3) Certain Methods of Organizing Human Activity. Groupings of Certain Methods of Organizing Human Activity include three sub-categories within the group, namely: (1) fundamental economic principles or practices; (2) commercial or legal interactions (e.g., agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations); (3) managing personal behavior or relationships or interactions between people (e.g., social activities, teaching, and following rules or instructions) (See MPEP 2106.04(a).
Examiner respectfully maintains that the pending claims remain directed to ineligible subject matter. In particular, the general subject matter to which the claims are directed is the abstract concept of personalizing and delivering insurance information where the personalization relates to the selling authorizations for insurance and financial products which are associated with the user, which Examiner submits is an ineligible concept of Organizing Human Activity, namely: (1) fundamental economic principles or practices; (2) commercial or legal interactions (e.g., agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations). Further aspects of the claimed invention are directed to ineligible mental processing.
Eligibility Step 1: Four Categories of Statutory Subject Matter (See MPEP 2106.03): Independent claims 1, 15, 25, and 29 are directed to systems and methods and are reasonably understood to be properly directed to one of the four recognized statutory classes of invention designated by 35 U.S.C. 101; namely, a process or method, a machine or apparatus, an article of manufacture, or a composition of matter. While the claims, generally, are directed to recognized statutory classes of invention, each of method/process, system/apparatus claims, and computer-readable media/articles of manufacture are subject to additional analysis as defined by the Courts to determine whether the particularly claimed subject matter is patent-eligible with respect to these further requirements. In the case of the instant application, each of claims 1, 15, 25, and 29 are determined to be directed to ineligible subject matter based on the following analysis/guidance:
Eligibility Step 2A prong 1: (See MPEP 2106.04): Considering representative claim 15, the claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do/does not amount to significantly more than an abstract idea. The claim(s) is/are directed to the abstract idea of personalizing and delivering insurance information where the personalization relates to the selling authorizations for insurance and financial products which are associated with the user, which is reasonably considered to be Organizing Human Activity, namely: (1) fundamental economic principles or practices; (2) commercial or legal interactions (e.g., agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations). Inventions directed to organizing human activity are recognized patent ineligible abstract ideas as defined by the above noted USPTO Policy and Examination Guidance as informed by the decisions of the Court in the aforementioned Alice Corporation Pty. Ltd. v. CLS Bank International, et al.
In support of Examiner’s conclusion, Examiner respectfully directs Applicant’s attention to the claim limitations of representative claim 15. Claim 15 includes: “…select at least one item selection from…the user, the at least one item comprising an insurance service…”, “…generating a list of available items…”, “…presenting a list of available items…”, “…select at least one item selection…”, “…personalizing at least one item…”, and “…delivering the personalized item…”. Considered as an ordered combination, the steps/functions of 15 are reasonably considered to be representative of the inventive concept and are further reasonably understood to be series of actions or activities directed to a general process of personalizing and delivering insurance information where the personalization relates to the selling authorizations for insurance and financial products which are associated with the user. A general process of personalizing and delivering insurance information where the personalization relates to the selling authorizations for insurance and financial products which are associated with the user is reasonably categorized as a method of organizing human activity including fundamental economic practices and commercial interactions, as set forth in the prior guidance and reformulated as a “grouping” of abstract ideas in the present 2019 PEG. Accordingly, the foundation of the previous rejection(s) of the pending claims under 35 U.S.C. 101 has not been modified by the revised guidance.
Further, under the revised guidance, mental processes or concepts performed in the human mind including observation and evaluation are ineligible abstract ideas. Further, the 2019 PEG stipulates that if a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for a recitation of generic computer components, then the claim is still to be grouped as a mental process unless the limitation cannot practically be performed in the human mind.
Present claim 15 further includes determination steps including “…determining user profile information about the user and insurance content based on the user’s historical access pattern to particular insurance products…products and services the user is authorized to sell, and an IP address associated with the user…”. Respectfully, absent further clarification of the processing steps executed by the recited engine, one of ordinary skill in the art would readily understood that the noted determinations to produce a result of a personalized item for the user are practicable/performable by the human mental processing or by a human using pen and paper (See CyberSource Corp v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“a method that can be performed by human thought alone is merely an abstract idea and is not patent eligible under 35 U.S.C 101).
Eligibility Step 2A prong 2: (See MPEP 2106.04(d)): Under step 2A prong two, Examiners are to consider additional elements recited in the claim beyond the judicial exception and evaluate whether those additional elements integrate the exception into a practical application. Further, to be considered a recitation of an element which integrates the judicial exception into a practical application, the additional elements must apply, rely on, or use the judicial exception in a manner that imposes meaningful limits on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception.
Additional elements of claim 15 that potentially integrate the exception include the “filtering engine” and the “client station”. Claim 1 further indicates that scanning means for uploading insurance or financial services-related information is included in the system (previously of claim 8). Claim 15 further indicates, generally, that the claimed method is “computer-implemented” as designated in the preamble. With respect to these potential additional elements, the claimed “filtering engine” is identified as determining user profile information based on the user’s access to insurance products or policies, which products and services the user is authorized to sell, and an IP address associated with the user. The claimed “client station” is identified as communicating with the filtering engine via a network. The “scanning means” of amended claim 1 is identified as uploading insurance or financial services-related information.
With respect to the above noted functions attributable to the identified additional elements, MPEP 2106.05 stipulates that: Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea – see MPEP 2103.05(f); and/or Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h) serve as indications that the use of the technology recited does not indicate integration into a practical application of the judicial exception.
Each of the above noted limitations states a result (e.g., user profile information is retrieved, information is conveyed to and from the client station via a network, and insurance information is uploaded etc.) as associated with a respective “filtering engine”, “client station”, or “scanning means”. Beyond the general statement that a filtering engine determines/accesses stored user profile information based on an identification of the user and client station communicates with the engine, the limitations provide no further clarification with respect to the functions performed by the “filtering engine” and “client station” in producing the claimed result. A recitation of “by a filtering engine” “computer-implemented”, absent clarification of processing steps executed by the underlying technology to produce the result are reasonably understood to be an equivalent of “apply it”. The technology as engaged is solely identified as storing and retrieving information, performing tasks that are otherwise performable in the human mind (e.g., determining information about the user based on the identity/IP address of the user), and sending and receiving information over a network.
Accordingly, claim 15 is reasonably understood to be conducting standard, and formally manually performed, selection and personalization of items for transmission to a user using the generic devices as tools to perform the abstract idea. The identified functions of the recited additional elements reasonably constitute a general linking of the abstract idea to a generic technological environment, e.g., generic devices capable of storing information and transmitting the information over a network. The claimed personalizing and delivering insurance information where the personalization relates to the selling authorizations for insurance and financial products which are associated with the user benefits from the use of computer communicating information over a network, but fails to present an additional element which practical integrated that judicial exception into a practical application of the judicial exception.
Eligibility Step 2B: (See MPEP 2106.05): Analysis under step 2B is further subject to the Revised Examination Procedure responsive to the Subject Matter Eligibility Decision in Berkheimer v. HP, Inc. issued by the United States Patent and Trademark Office (19 April 2018). Examiner respectfully submits that the recited uses of the underlying computer technology constitute well-known, routine, and conventional uses of generic computers operating in a network environment. In support of Examiner’s conclusion that the recited functions/role of the computer as presented in the present form of the claims constitutes known and conventional uses of generic computing technology, Examiner provides the following:
In reference to the Specification as Published in USPGPUB 2003/0088443, Examiner notes paragraphs [0019]-[0023] and [0026]. In the noted disclosure, the Specification provides listings of generic computing systems, e.g., a general computing platform including exemplary servers, network configurations and various processor configurations, including an associated scanning device for uploading documents, which are identified as capable and interchangeable for performing the disclosed processes. The disclosure does not identify any modifications to the underlying hardware elements required to perform the inventive methods and functions.
Accordingly, it is reasonably understood that this disclosure indicates that the hardware elements and network configurations suitable for performing the inventive methods are limited to commercially available systems at the time of the invention. Further, absent further clarification, it is reasonably understood that any modifications/improvements to the underlying technology attributable to the inventive method/system are limited to improvements realized by the disclosed computer-executable routines and the associated processes performed.
While the above noted disclosure serves to provide sufficient explanation of technical elements required to perform the inventive method using available computing technology, the disclosure does not appear to identify any particular modifications or inventive configurations of the underlying hardware elements required to perform the inventive methods and functions. Accordingly, it is reasonably understood that the disclosure indicates that the hardware elements and network configurations suitable for performing the inventive methods are limited to commercially available systems at the time of the invention. Further, absent further clarification, it is reasonably understood that any modifications/improvements to the underlying technology attributable to the inventive method/system are limited to improvements realized by the disclosed computer-executable routines and the associated processes performed.
With respect to the executable routines, the claims specify that the above identified generic computing structures are programmed/configured to (1) obtain content; (2) determine a user profile including access to products and products of service the user is authorized to sell; (3) generate a list of items; (4) personalize the items; and (5) electronically transmit the items over a network. While Examiner acknowledges that the noted limitations are computer-implemented, Examiner respectfully submits that, in aggregate (e.g., “as a whole”) they do not amount to significantly more than the abstract idea/ineligible subject matter to which the claimed invention is primarily directed.
While utilizing a computer, the claimed invention is not rooted in computer technology nor does it improve the performance of the underlying computer technology. The computer-implemented features of the claimed invention noted above are reasonably limited to: (1) receiving and sending data via a computer network (e.g., insurance related content which is scanned or uploaded using a generic scanner); and (2) storing and retrieving information and data from a generic computer memory (e.g., stored insurance information and user profile information including IP address). The above listed computer-implemented functions are distinguished from the generic data storage, retrieval, transmission, and data manipulation/processing capacities of the generic systems identified in the Specification solely by the recited identification of particular data elements that are of utility to a user performing the specific method of personalizing and delivering insurance information where the personalization relates to the selling authorizations for insurance and financial products which are associated with the user. In summary, the computer of the instant invention is facilitating non-technical aims, i.e., personalizing and delivering insurance information where the personalization relates to the selling authorizations for insurance and financial products which are associated with the user, because it has been programmed to store, retrieve, and transmit specific data elements and/or instructions that is/are of utility to the user. The non-technical functions of personalizing and delivering insurance information where the personalization relates to the selling authorizations for insurance and financial products which are associated with the user benefit from the use of computer technology, but fail to improve the underlying technology.
In support, the courts have previously found that utilization of a computer to receive or transmit data and communications over a network and/or employing generic computer memory and processor capacities store and retrieve information from a computer memory are insufficient computer-implemented functions to establish that an otherwise unpatentable judicial exception (e.g. abstract idea) is patent eligible. With respect to the determinations of the Courts regarding using a computer for sending and receiving data or information over a computer network and storing and retrieving information from computer memory, see at least: receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362; sending messages over a network OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); receiving and sending information over a network buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93 and see performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199; and Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) with respect to the performance of repetitive calculations does not impose meaningful limits on the scope of the claims.
In accordance with all relevant considerations and aligned with previous findings of the courts, the technical elements imparted on the method that would potentially provide a basis for meeting a “significantly more” threshold for establishing patent eligibility for an otherwise abstract concept by the use of computer technology fail to amount to significantly more than the abstract idea itself.
Independent claims 1, 25, and 29 are directed to an alternative illustration of the inventive method and to enabling apparatus/systems for performing the method steps are rejected for substantially the same reasons, in that the generically recited computer components in the apparatus/system and computer readable media claims add nothing of substance to the underlying abstract idea.
Dependent claims 9-10, 12-13, 19-21, 23-24, and 28 when analyzed as a whole are held to be ineligible subject matter and are rejected under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claimed invention is not directed to an abstract idea.
For further guidance and authority, see Alice Corporation Pty. Ltd. v. CLS Bank International, et al. 573 U.S.____ (2014)) (See MPEP 2106).
Conclusion
[6] The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ryan et al., VIRTUAL FINANCE/INSURANCE COMPANY, United States Patent Application Publication No. 2003/0187768, paragraphs [0478]-[0483]: Relevant Teachings: Ryan discloses a system/method that includes functionality to broker/sell insurance products online including policy issuance and underwriting based on state policy requirements.
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.
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/ROBERT D RINES/Primary Examiner, Art Unit 3625