DETAILED ACTION
Status of Claims
Applicant has amended claims 18, 19, and 21. No claims have been added. Claims 1-8 have been canceled. Claims 9-17 were canceled prior to previous office action. Thus, claims 18-25 remain pending in this application. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Abandonment mailed on 17 May 2024 has been withdrawn.
Response to Arguments
Applicant’s arguments and amendments filed on 18 April 2025 with respect to:
objection to claims 1 and 18,
rejections of claim 1-8 under U.S.C. § 112(b), and
rejection to claims 1-8 and 18-25 under U.S.C. § 101,
have been fully considered. Amendments to claims have been entered.
Applicant's arguments filed with respect to claims regarding the 35 U.S.C. § 101 rejections have been fully considered but they are not persuasive.
Applicant argues that the (amended) claims “require a server operably connected to a plurality of client computing devices via a network, the server being configured to perform a complex set of protocols involving rapid information exchange with the client computing devices, with certain calculations and tasks being performed automatically dependent on the information exchanged and calculation results achieved” [remarks page 7]. Examiner respectfully disagrees.
Examiner cites MPEP 2106.05(a) which notes that accelerating an analyzing process, where the increased speed comes solely from the capabilities of a general purpose computer, has been found to be insufficient to show an improvement in computer-functionality.
Applicant’s other arguments have been substantially addressed in the revised § 101 rejections herein. Rejections have been revised herein in view of the claim amendments and the MPEP 2106 Patent Subject Matter Eligibility [R-10.2019].
If, in the opinion of the Applicant, a telephone conference would expedite the prosecution of the subject application, the Applicant is encouraged to contact the undersigned Examiner at the phone number listed below.
Claim Objections
Claim 18 is objected to because, in the limitation:
calculate the member score based on the public data as obtained from the plurality of network databased and membership application data as received from the first client computing device using the member score formula;
the term “the plurality of network databased” should be written as “the plurality of network databases”. Correction is required.
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 18-25 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. (See MPEP 2106 Patent Subject Matter Eligibility [R-10.2019]).
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e. law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/ formulas. (Alice Corporation Pty. Ltd. v. CLS Bank International, et al. US Supreme Court, No. 13-298, June 19, 2014).
Analysis
Step 1:
Is the claim(s) fall into a statutory category – i.e. process, machine, manufacture or composition of matter?
In the instant case, claim 1 is directed to a system which is one of the four statutory categories of invention. The answer is YES.
Step 2A - Prong One:
Is the claim(s) directed to a judicially exception, such as a law of nature, a natural phenomenon or an abstract idea?
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. Claims 18-25 are directed to a system for offering insurance products which is a judicial exception of a commercial interaction which is a method of organizing human activity.
Claim 18 recites, in part, a method of:
automatically obtain public data from a plurality of network databases operably connected to the server via the network, the public data comprising:
legal records; and
motor vehicle history data;
receive membership application data from the first client computing device over the network;
receive benefit data from a second client computing device over the network, the benefit data:
compare the membership application data with the public data to verify the member is real, alive, and unique;
calculate the member score based on the public data as obtained from the plurality of network databased and membership application data as received from the first client computing device using the member score formula;
compare the score to the predetermined threshold score;
determine whether the member score is greater than the predetermined threshold score; and
if the member score is greater than the predetermined threshold score, send an offer to the first client computing device over the network, the offer comprising the life insurance policy with the death benefit.
is a series of steps which describes the judicial exception of the method of organizing human activity.
Limitations such as:
the membership application data being provided by a member of an association authorized to use the system;
information relating to a benefit-provider product comprising a life insurance policy with a death benefit; and
a member score formula for calculating a member score; and
are merely descriptions of data which do not add to the patentability of the claim.
Step 2A - Prong Two:
Are there additional elements that are integrated into a practical application of the judicial exception?
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See MPEP 2106.04(d) Integration of a Judicial Exception Into A Practical Application [R-07.2022]), the additional elements of the claim such as:
a server;
a first client computing device operably connected to the server via a network; and
a second client computing device operably connected to the server via the network,
a plurality of network databases operably connected to the server via the network
represent the use of a computer as a tool to perform an abstract idea and/or do no more than generally link the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than use a computer to automate the steps corresponding to “collecting information, analyzing the information and providing the results of the analysis”. The answer is NO.
Step 2B:
Do the claims include additional elements that are sufficient to amount to significantly more than the judicial exception – i.e. Is there an inventive concept?
When analyzed under step 2B (See MPEP 2106.05 Eligibility Step 2B: Whether a Claim Amounts to Significantly More [R-07.2022]), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself because the ordered combination does not offer substantially more than the sum of the functions of the elements when each is taken alone.
The computer and computer program instructions are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities. These functionalities are well-understood, routine and conventional activities previously known to the industry. Such functions include obtaining or receiving data, comparing data and performing calculations which are, based on the broadest reasonable interpretation, infer transmitting data and making mathematical calculations. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). The answer is NO.
Thus, viewed as a whole, the combination of elements recited in the claims merely describe the concept of offering insurance products using computer technology (e.g. the processor).
Hence, claims are not patent eligible.
Dependent claims 19-25 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to a judicial exception (Step 2A- Prong One). Nor are the claims directed to a practical application to a judicial exception (Step 2A- Prong Two).
For example, claims 19-25 are silent as to “additional elements” which integrate the abstract idea into a practical application of a judicial exception, or that are sufficient to amount to significantly more than the judicial exception. They merely further describe the abstract idea of offering insurance products.
Accordingly, none of the dependent claims add a technological solution to the method of organizing human activity in the independent claim.
Conclusion
The claims as a whole do not amount to significantly more than the abstract idea itself. This is because the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
Additional Comments
Regarding claims 18-25, in view of pending rejections, the Examiner is unable to locate prior art references that anticipate the claimed invention or renders it obvious.
Conclusion
The prior art of record and not relied upon is considered pertinent to Applicant’s disclosure:
Alfonso et al: “Techniques For Targeted Offers”, (US Pub. No. 20110106607 A1).
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 EDWARD J BAIRD whose telephone number is (571)270-3330. The examiner can normally be reached 7 am to 3:30 pm M-F.
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If Applicant wishes to correspond to the Examiner via email, Applicant needs to file an AUTHORIZATION FOR INTERNET COMMUNICATIONS IN A PATENT APPLICATION form. The form may be downloaded at:
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Donlon can be reached at 571-270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDWARD J BAIRD/Primary Examiner, Art Unit 3692