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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/20/2025 has been entered.
Applicant's arguments filed 10/20/2025 have been fully considered but they are not entirely persuasive.
The 35 USC 102 and 103 rejections have been withdrawn in view of the applicant’s amendment filed 10/20/2025.
The 35 USC 101 and the Double Patenting rejections submitted 5/20/2025 remain outstanding.
Applicant’s representative has amended the independent claim 1 to recite broad limitations of a generic computer or processor such as “a computer comprising a processor and memory” with an “application programming interface (APIs) and a database. Applicant’s representative then states the claims as now amended recite statutory subject matter.
In response, the applicant’s amendment does not cure the deficiencies noted on the 35 USC 101 rejection.
The 35 USC 101 rejection remains outstanding as further explained below.
Applicant's arguments filed 10/202025 have been fully considered but they are not persuasive.
In response, the Examiner respectfully disagrees with the applicant’s arguments.
The applicant is making use of generic devices to perform issuance or generating of a certificate of insurance policy. The claims are void of anything significantly more than the abstract idea itself. A system, apparatus, machine or method for performing business, however, novel, useful, or commercially successful, is not patentable apart from the means for making the system practically useful or carrying it out.
The mere recitation of a computer with a processor and memory with or without human intervention or the Internet or a server to perform business functions are not sufficient to transform a claim into patent eligible form. The presentment or receiving or communicating of data are routine generic computer functions (see page 7, July 2015 Update: Subject Matter Eligibility). The instant claims recite no physical structural details of a server, computer, processor or a computerized system to accomplish the intended functions.
The claims merely amount to the application or instructions to apply the abstract idea on a computer, and is considered to amount to nothing more than requiring a generic computer system (e.g. a computer system comprising a generic database; a generic element for providing an internet store comprising a website; a generic element for receiving consumer input; a generic display on the website; and a generic element to allow the consumer to complete a purchase) to merely carry out the abstract idea itself. As such, each of the claims, when considered as a whole, is nothing more than the instruction to implement the abstract idea in a particular conventional technological environment.
The mere recitation of a computer with a processor and memory with an API with or without human intervention cannot transform a patent-ineligible abstract idea into a patent-eligible invention as stated in Alice Corp., 134 S.Ct. at 2358; DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cri. 2014) ("And after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible. " (citation omitted)). Thus, if a patent's recitation of a computer amounts to a mere instruction to ‘implement’ an abstract idea ‘on ... a computer’, that addition cannot impart patent eligibility." Alice Corp., 134 S.Ct. at 2358 (internal citation omitted). The claimed automatically or electronically using a computer or system is merely a field of use that attempts to limit the abstract idea to a particular technological environment.
Also, although the claims recite a computer with a processor and a memory using an API, the claimed invention does not solve a challenge particular to the computer or the network used to carry out the claimed functions.
The claimed API and computer and processors with a memory are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of ranking information based on a determined amount of use) such that they amount no more than mere instructions to apply the exception using a generic computer component.
Accordingly, 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.
Applicant is also directed to Mortg. Grader Inc. v. First Choice Loan Servs., Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016) (noting that components such as an "interface," "network," and "database" are generic computer components that do not satisfy the inventive concept requirement); Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App'x 1014, 1016-18 (Fed. Cir. 2017) (unpublished) (noting that recited "identity data," such as a hardware identifier, associated with a client computer device is a conventional generic computer component implementation); buySAFE, 765 F.3d at 1355 ("That a computer receives and sends the information over a network-with no further specification-is not even arguably inventive.").
None of the steps and elements recited in the claims provide, and nowhere in the applicant’s shows any description or explanation as to how the claimed computer and network communication are intended to provide: (1) a “solution . . . necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks,” as explained by the Federal Circuit in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014); (2) “a specific improvement to the way computers operate,” as explained in Enfish, 822 F.3d at 1336; or (3) an “unconventional technological solution ... to a technological problem” that “improve[s] the performance of the system itself,” as explained in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1299-1300 (Fed. Cir. 2016).
The additional recited elements considered individually and as an ordered combination do not add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56.
Accordingly, the claims remain rejected as being directed to an abstract idea.
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 1-11 remain 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.
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.
Specifically, claims 1-11 are directed to a system. Each of the claims falls under one of the four statutory classes of invention under step 1.
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) under step 2.
Step 2A, Prong One: For example, claim 1 recites the following limitations as understood to recite an abstract idea absent the bolded limitations:
a computer comprising a processor and memory storing instructions which when executed by the processor cause the processor to:
establish a policy database that maintains up to date insurance policy-related information;
provide application programming interfaces (APIs) that electronically interface to both an insurance agency data management system and an insurance company policy administration system, such that the networked computer is configured to directly and automatically communicate with the insurance agency data management system and the insurance company policy administration system without the need for user input;
retrieve using an API the insured's policy information from the insurance company policy administration system;
store the retrieved insured’s policy information to the policy database, to develop and maintain up to date policy information in the policy database;
receive using an API a request for a certificate of insurance for the insured directly from a requesting party or from a third-party system that is configured to communicate with the computer, the request including insurance policy requirements for the insured;
retrieve at least some of the insured’s policy information from the policy database;
automatically, compare the insurance policy requirements of the request to the up to date retrieved insured’s policy information;
if there are discrepancies between the policy requirements of the request and the retrieved
insured's policy information, automatically and notify using an API the insurance agent and the requestor of the discrepancies;
if there are no discrepancies between the policy requirements of the request and
the insured's retrieved policy information, automatically and electronically generate a certificate of insurance (COI) based on the comparison; and then
automatically electronically transmit using an API at least one of the retrieved insured’s policy information and the generated COI to at least the requestor.
Claim 2 recites use an API to electronically obtain current and historic claim information to further validate the accuracy of insurance information.
Claim 3 recites utilizing obtained claim information to determine current policy limits and available reserves for future claims.
Claim 4 recites calculating recommended limit increases required to remain compliant with certificate holders.
Claim 5 recites when an insured is non-compliant with the requirements of a requestor due to a limit deficiency, automatically and electronically prompt the insured using an API, with the opportunity to increase their limits to become compliant.
Claim 6 recites when the policy database includes the carrier and the policy number, automatically and electronically provide using an API real-time quoting and binding of additional coverage to satisfy the requirement.
Claim 7 recites when an insured is non-compliant with the requirements of a requestor, and in cases where the insured and requestor have previously agreed to allow forced placement coverage in a separate, legally binding contract, allowing the requestor to force coverage upon the insured automatically after a designated time period of non- compliance.
Claim 8 recites calculate a score or rating of an insured based on a calculation utilizing at least the types of coverage and amounts, industry, frequency of coverage changes, and number of requestors.
Claim 9 recites utilize this score or rating with requestors and other third-party solution providers, or provide the score or rating to these third parties.
Claim 10 recites instantly verify based on a quick-response code (QR code) or another scannable or electronic unique identifier designated to an insured, coverage and other information relating to the insured.
Claim 11 recites electronically transmit, using an API coverage information to a third party.
The above limitations, under their broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in MPEP 2106.04(a)(2)(II), because they amount to limitations specifying steps for managing commercial or legal interactions and managing personal behavior or relationships or interactions between people by describing steps involving in exchanging information between parties in relation to considering potential transactions. The BRI of these limitations describes functions of obtaining a request for insurance policy verification from a requestor and transmitting at least one of policy information and the COI to the requestor.
Step 2A, Prong Two: This judicial exception is not integrated into a practical application. In particular, the claims recite the above bolded limitations understood to be the additional limitations.
These limitations perform steps automatically electrically or electronically by a computer with a processor and a memory. The insurance agency data management system (it is unclear whether or not it is a computerized system) is/are also not performing any functions in the independent claim nor in any of the dependent claims.
These limitations performing steps automatically by a computer electrically or electronically merely amount to instructions to implement an abstract idea on a computer or merely using a computer as a tool to perform an abstract idea– see MPEP 2106.05(f). Also see applicant's specification for guiding interpretation of these claimed features, describing implementation with generic commercially available devices or any machine capable of executing a set of instructions, similarly describing usage of general and special purpose computer. The various claimed systems are similarly understood in light of applicant's specification as mere usage of any arrangement of computer software or hardware intermediate components potentially using networks to communicate between systems which are properly understood to be mere instructions to apply the abstraction using a computer.
Performance of a receive or receiving step or function by a computer processor amounts to performing steps which amount to insignificant extra-solution activity of data gathering – see MPEP 2106.05(g).
Performing steps by a computer processor hardware or electrically merely limit the abstraction to a computer field by execution by generic computers – see MPEP 2106.05(h).
As noted in MPEP 2106.04(d), limitations which amount to instructions to implement an abstract idea on a computer or merely using a computer as a tool, limitations which amount to insignificant extra-solution activity, and limitations which amount to generally linking to a particular technological environment do not integrate a judicial exception into a practical application.
While the claims do not specify any particular manner of receiving and transmitting information, the breadth of the limitations reasonably includes collecting information by communicating between devices using an API.
Reciting the claimed "API" or “electronically” is understood to be similar to Alappat, which as noted in MPEP 2106.05(b)(I), is superseded, and the correct analysis is to look whether the added elements integrate the exception into a practical application or provide significantly more than the judicial exception.
The claims in the instant application are performed by a computer with a processor and memory with a database which receives a request for a certificate of insurance for an insured from a requesting party or from a third-party system. The computer then compares data and sends a result of the at least one of the up-to-date policy information and the certificate of insurance to the at least requestor.
Consideration of these steps as a combination does not change the analysis as they do not add anything compared to when the steps are considered separately. The claims recite a particular sequence of exchanging information pertaining to the comparison of data so as to transmit a certificate of insurance to a requestor. Performance of these steps technologically does present a meaningful limit to the scope of the claim which would reasonably integrate the abstraction into a practical application.
Step 2B: The elements discussed above with respect to the practical application in Step 2A, prong 2 are equally applicable to consideration of whether the claims amount to significantly more. Accordingly, the claims fail to recite additional elements which, when considered individually and in combination, amount to significantly more. Reconsideration of these elements identified as insignificant extra-solution activity as part of Step 2B does not change the analysis. Requesting and receiving information and transmitting information by computer hardware amounts to receiving and transmitting information over a network has been recognized by the courts as well-understood, routine, and conventional (See MPEP 2106.05(d)(II), citing Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages 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)).
Comparing data involves mental/manual processes and/or minimum and generic computer intervention. Positively reciting a computer with a processor and memory, a data management system, a third party system and a database does not change the analysis as these aspects are properly considered as additional elements which amount to instructions to apply it with a computer.
These claimed elements are also recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using a generic component.
In processing the claims, it is noted that the recitation of these additional elements do not impact the analysis of the claims because these elements in combination are noted only to be a general purpose computer for performing basic or routine computer functions. These claimed elements are noted to a be a generic computer for receiving data, storing data and performing routine and conventional functions such as comparing and transmitting data.
These additional elements do not overcome the analysis as these elements are merely considered as additional elements which amount to instructions to be applied to the generic computer. Accordingly, 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. The claimed elements are also seen as generic computer components receiving, storing data performing generic functions without an inventive concept as they do not amount to significantly more than the abstract idea. The claimed additional elements are interpreted as being recited at a high level of generality and even if the claims recited in the affirmative. The type of data being manipulated does not impose meaningful limitations or renders the idea less abstract. Looking at the elements as a combination, the elements do not add anything more than the elements analyzed individually. Therefore, the claims do not amount to significantly more than the abstract idea itself.
Applicant is reminded that a statutory claim would recite an automated machine implemented method or system with specific structures for performing the claimed invention so as to provide an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because the claims do not effect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, claims 1-11 are directed to an abstract idea.
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. See 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);and, 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) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-11 remain rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,501,379. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-11 of the instant application are directed to a similar subject matter contained in claims 1-8 of the '379 patent. The only difference between the instant application and the '379 patent is merely a labeling difference. It is noted that all the features of claims 1-11 are contained in claims 1-8 of the '379 patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANTZY POINVIL whose telephone number is (571)272-6797. The examiner can normally be reached on M-Th 7:00AM to 5:30PM.
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/FRANTZY POINVIL/Primary Examiner, Art Unit 3693
January 6, 2026