DETAILED ACTION
This office action is in response to Applicant’s communication of 9/9/2025. Claims 1, 11 and 21 have been amended. Claims 9, 10, 19, 20 and 22 were previously cancelled. Claims 1-8, 11-18 and 21 are pending and have been examined. The rejection and response to arguments are stated below.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/18/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-8, 11-18 and 21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims do fall within at least one of the four categories of patent eligible subject matter because claim 1 is directed to a process, claim 11 is directed to a system and claim 21 is directed to a non-transitory computer-readable medium; Step 1-yes.
Under Step 2A, prong 1, representative claim 1 recites a series of steps for deriving an insurance premium from telematic data, which is a fundamental economic practice, e.g. managing insurance, and commercial or legal interaction, e.g. business relations in the form of contracts, and thus grouped as “Certain Methods of Organizing Human Activity”. The claim as a whole and the limitations in combination recite this abstract idea. Specifically, the limitations of representative claim 1, bolded below and stripped of all additional elements, recite the abstract idea as follows.
1. (Currently Amended) A computer-implemented method for data portability using a blockchain, the method comprising:
generating, by one or more processors, an insurance smart contract that is configured to (i) detect a transaction indicating a request to calculate an insurance premium for an asset based upon a set of indications maintained by an asset smart contract, and (ii) automatically execute on the blockchain in response to detecting the request;
deploying, by the one or more processors, the insurance smart contract at a particular address on the blockchain;
detecting, by the one or more processors and from a requestor, the request to calculate the insurance premium for the asset associated with a record on the blockchain, wherein the record includes an indication of a location at which historical telematics data associated with the asset is located, wherein the historical telematics data is accessed based upon a set of permissions included in the asset smart contract;
modifying, by the one or more processors and in response to the request, the set of permissions in the asset smart contract to grant the requestor time-limited access to the historical telematics data, wherein the granted access is automatically revoked after a predetermined period of time; and
automatically executing, by the one or more processors, the insurance smart contract to perform a set of actions in response to detecting the request, wherein the set of actions includes:
obtaining the historical telematics data from the indicated location;
analyzing the historical telematics data to derive the insurance premium; and
transmitting an indication of the derived insurance premium to the requestor.
The claimed limitations, identified above, recite a process that, under its broadest reasonable interpretation, covers performance of a fundamental economic practice and commercial or legal interaction, but for the recitation of generic computer components. That is, other than the mere nominal recitation of “one or more processors”, “an insurance smart contract at a particular address on the blockchain” and “an asset smart contract” in claim 1 and similarly in claims 11 and 21, there is nothing in the claim element which takes the steps out of the methods of organizing human activity abstract idea grouping. Thus, claim 1 recites an abstract idea as do claims 11 and 21.
Under step 2A, prong 2, this judicial exception is not integrated into a practical application. In particular, the claim only recites using generic, commercially available, off-the-shelf computing devices, i.e. processors suitably programmed with smart contracts within a blockchain network, i.e. a decentralized database for receiving, retrieving, storing and updating data, see at least paragraph [0030] of the specification, for performing the abstract idea. Also see at least paragraphs [0055-0058] for creating a smart contract on the blockchain to execute code to perform automation of the abstract idea. The additional element of “accessed based upon a set of permissions included in the asset smart contract” and “modifying, by the one or more processors and in response to the request, the set of permissions in the asset smart contract to grant the requestor time-limited access to the historical telematics data, wherein the granted access is automatically revoked after a predetermined period of time;” provides no technical detail such that it is merely restricting access to data to specific entities for an amount of time and is well-known in blockchain technology or any database, see paragraphs [0037] and [0102]. Modifying permissions for accessing a database is claimed at a very high level of generality. The computer components are recited at a high-level of generality (i.e., as generic processors with memory suitably programmed communicating information over a generic network, see at least paragraphs [0071-0073], [0185], [0189], [0197], [0268] and [0272-0275] of the specification) such that it amounts no more than 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 the abstract idea, see MPEP 2106.05(f) and generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05 (h), such as leveraging blockchain technology and smart contracts, i.e. software, as it was designed to be used. Furthermore, the steps of “obtaining the historical telematics data from the indicated location;” and “transmitting an indication of the derived insurance premium to the requestor.” are considered adding insignificant extra-solution and post-solution activity to the judicial exception, see MPEP 2106.05 (g). Accordingly, the additional elements claimed do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Claim 1 is directed to an abstract idea as are claims 11 and 21.
Under step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using generic computer processors with memory suitably programmed communicating over a generic blockchain network programmed with smart contracts, i.e. software code triggered to execute an action as programmed, to perform the limitation steps amounts no more than 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 the abstract idea, see MPEP 2106.05(f) and generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05 (h), such as leveraging blockchain technology as it was designed to be used, e.g. as an immutable secure database for storing and accessing data. Furthermore, the steps of “obtaining the historical telematics data from the indicated location;” and “transmitting an indication of the derived insurance premium to the requestor.” are considered adding insignificant extra-solution and post-solution activity to the judicial exception, see MPEP 2106.05 (g). Mere instructions to apply an exception using generic computer components interacting in a conventional manner cannot provide an inventive concept. Claim 1 is not patent eligible and neither are claims 11 and 21.
For instance, in the process of claim 1, the limitation steps, claimed at a high level of generality, recite steps that are considered mere instructions to apply an exception akin to a commonplace business method or mathematical algorithm being applied on a general purpose computer, Alice Corp. Pty. Ltd.; Gottschalk and Versata Dev. Group, Inc.; see MPEP 2106.05(f)(2). Furthermore, the insignificant extra-solution and post-solution activity steps rely on well-understood, routine and conventional computing functionality carried out by a generic processor with memory such as data gathering/transmission over a generic communication network and data storage, akin to receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec,(utilizing an intermediary computer to forward information); TLI Communications LLC (using a telephone for image transmission); OIP Techs., Inc., (sending messages over a network) and buySAFE, Inc. (computer receives and sends information over a network) and 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; see MPEP 2106.05(d)(II).
Applicant has leveraged generic computing elements to perform the abstract idea of deriving an insurance premium from telematic data, without significantly more.
Dependent claims 2-8 and 12-18 when analyzed as a whole and in an ordered combination are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea, as detailed below. The additional recited limitations in the dependent claims only refine the abstract idea.
For instance, claims 2, 3, 12 and 13 further refine the abstract idea by assigning the data gathering for the asset, i.e. a vehicle or a house, through leveraging generic computing elements. The nominal recitation of the additional elements of “a mobile device associated with the vehicle or a vehicle control system of the vehicle.” and “a mobile device associated with the home, a smart device disposed at the home, and/or a home controller disposed at the home.” to generate the data to be gathered for use in the abstract idea does not make the abstract idea any less abstract. This is merely data gathering at a very high level of generality to apply to the abstract idea on a generic computer used as a tool. Claims 4 and 14 recite authorization to access data based on the request which is claimed at a very high level of generality and is further refining the abstract idea and data gathering step with nothing significantly more. Claims 5 and 15 further refine the abstract idea by reciting a programmed processor in the blockchain network with smart contracts. Smart contracts are self-executing computer programs programmed on blockchain nodes, i.e. generic computers, that are triggered to complete a task based on some other event occurring, such as an insurance contract execution. As such, this is merely automating, i.e. programming computer code, an otherwise manual process such as providing an authorization. Claims 6 and 16 further refine and define the abstract idea and automation of a manual process by reciting updating a business rule with certain data which is part of the abstract idea and transmitting a request to access data. Claims 7, 8, 17 and 18 recite encryption/decryption at a very high level of generality such that it is merely linking the abstract idea to a very general encrypt/decrypt protocol carried out by a generic computer used as a tool. There are no technical implementation details such that this is inventive or Applicant’s invention but merely using known technology in a very general manner, i.e. applying it on a computer.
Clearly, the additional recited limitations in the dependent claim only refines the abstract idea further. Further refinement of an abstract idea does not convert an abstract idea into something concrete.
The claims merely amount to the application or instructions to apply the abstract idea (i.e. a series of steps for deriving an insurance premium from telematic data) on one or more computers, and are considered to amount to nothing more than requiring a generic computer system (e.g. processors suitably programmed and communicating over a blockchain network programmed with smart contracts, i.e. software) to merely carry out the abstract idea itself. As such, the claims, when considered as a whole, are nothing more than the instruction to implement the abstract idea (i.e. a series of steps for deriving an insurance premium from telematic data) in a particular, albeit well-understood, routine and conventional technological environment.
Accordingly, the Examiner concludes that 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 or integrate the judicial exception into a practical application.
Response to Arguments
Applicant’s arguments filed in the Remarks of 3/20/2025, with respect to the 35 U.S.C. 101 rejection of the instant claims have been fully considered but they are not persuasive.
On page 7 of the Remarks, Applicant argues “Applicant respectfully submits that one technical problem addressed by the present application is that conventional telematics platforms lack effective mechanisms for granting finely controlled, revocable access to sensitive historical telematics data.” and on page 9 “In each embodiment, such access changes are transparently executed and immutably recorded, creating an immutable, auditable history of access and permissioning actions. This mechanism, including conditional granting, enforcement, and automated revocation, provides reliable, self-executing, and tamper- resistant access governance not achievable through manual or conventional server-based approaches.” Examiner respectfully disagrees.
Restricting access to certain data for certain entities for a specific amount of time is not a technical problem that arose from the advent of computers/databases and blockchain technology. Restricting access to certain data for a period of time has existed for centuries. Applicant has leveraged blockchain technology to automate a manual insurance quote problem. The security and immutability of updated records is due to the inherent details found in a blockchain. Also there are no technical details to how the access is provided and how access is revoked after a period of time or how the permissions are modified. For instance, a human can interact with the computer to modify permissions. Furthermore, restricting, updating or changing permission access to data on a blockchain, via smart contracts, was well known prior to Applicant’s priority date, see US 12,045,372 B2, Nation et al. Also see US 11,190,520 B2, Mercuri et al., see at least col.6. Again, Applicant has improved the abstract idea through leveraging generic computers programmed in a blockchain network. There is no granular “how” any technical improvement is arrived at.
On page 10 of the Remarks, Applicant argues “Moreover, the claim is tied to a practical application of blockchain smart contracts with dynamic permissioning, as opposed to reciting an abstract idea itself. The technical solution (e.g., modifying and revoking access based upon encoded conditions in a permissioned asset smart contract and its self-executing logic) reflects more than a result-oriented claim, but rather specifies the precise way the technology achieves secure, conditional data sharing.” and “Further regarding Step 2B, Applicant respectfully submits that at least the following features of claim 1 were not well-understood, routine or conventional in the relevant field:
...modifying, by the one or more processors and in response to the request, the set of permissions in the asset smart contract to grant the requestor time-limited access to the historical telematics data, wherein the granted access is automatically revoked after a predetermined period of time;...
In this regard, Applicant notes that the proper inquiry is whether "certain claim elements recite well understood, routine, conventional activities in the relevant field." See M.P.E.P. §2106.07(a)”’ Examiner respectfully disagrees.
Applicant has automated a manual process for deriving an insurance premium from telematic data. The smart contracts are programs to execute specific tasks based on a triggered event. The abstract idea is applied through the use of blockchain technology for its inherent security and immutability.
Furthermore, the steps of the claims, taken individually or as an ordered combination, have already been identified as corresponding to an abstract idea. The additional elements in the claims are “one or more processors”, “an insurance smart contract at a particular address on the blockchain” and “an asset smart contract”, all suitably programmed, to execute the claimed steps. This is made clear in Applicant’s specification, see at least paragraphs [0071-0073], [0185], [0189], [0197], [0268] and [0272-0275]. The claims at issue do not require any nonconventional computer, network, or other components, or even a non-conventional and non-generic arrangement of known, conventional pieces but merely call for performance of the claimed functions on a set of generic computer components. The elements of the instant process, when taken alone, each execute in a manner conventionally expected of these elements. The elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone.
The fact that a generic computing system, such as described above, can be suitably programmed to perform the claimed method without requiring any nonconventional computer, network, or other computing components, or even a “non-conventional and non-generic arrangement of known, conventional pieces” but instead merely call for performance of the claimed functions on a set of generic computer components, satisfies the Berkheimer memo requirement that the additional elements are conventional elements (as outlined in criterion 1 of the Berkheimer memo). The elements of the instant process, when taken alone, each execute in a manner conventionally expected of these elements. The elements of the instant process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. Hence these additional elements do not add anything significantly more than an abstract idea. Furthermore, US 11,190,520 B2, Mercuri et al., discloses a variety of criteria for modifying access such as a time period and ending access after the time has expired. As such, this was known at the time of Applicant’s invention.
In light of the Alice decision and the guidance provided in the 2019 PEG, the features listed in the claims, are not considered an improvement to another technology or technical field, or an improvement to the functioning of the computer itself. At best, these features may be considered to be a business solution, using computers, to a problem of deriving an insurance premium from telematic data. The alleged benefits that Applicants argue are due to business decisions, using computers within a blockchain network, rather than any improvement to another technology or technical field, or an improvement to the functioning of the computer itself. By relying on computing devices to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible (See Alice, 134 S. Ct. at 2359 “use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions” is not an inventive concept). As discussed in the rejection above, the components of the instant system, when taken alone, each execute in a manner conventionally expected of these components. At best, Applicant has claimed features that may improve an abstract idea. However, an improved abstract idea is still abstract, (SAP America v. Investpic *2-3 (‘“We may assume that the techniques claimed are “groundbreaking, innovative, or even brilliant,” but that is not enough for eligibility. Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89-90 (2012); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”’
There is a fundamental difference between computer functionality improvements, on the one hand, and uses of existing computers as tools to perform a particular task, on the other. There is nothing, for example, in the pending claims to suggest that the claimed additional elements, all suitably programmed, are somehow made more efficient or that the manner in which these elements carry out their basic functions is otherwise improved in any way. The alleged advantages that Applicants argue do not concern an improvement in computer capabilities but instead relate to an alleged improvement in deriving an insurance premium from telematic data, for which a computer is used as a tool in its ordinary capacity.
In summary, the computer is merely a platform on which the abstract idea is implemented. Simply executing an abstract concept on a computer does not render a computer “specialized,” nor does it transform a patent-ineligible claim into a patent-eligible one. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1280 (Fed. Cir. 2012). There are no improvements to another technology or technical field, no improvements to the functioning of the computer itself, transformation or reduction of a particular article to a different state or thing or any other meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment as a result of performing the claimed method. The claimed sequence of steps comprises only “conventional steps, specified at a high level of generality,” which is insufficient to supply an “inventive concept.” Id. at 2357 (quoting Mayo, 132 S. Ct. at 1294, 1297, 1300). Also, the addition of merely novel or non-routine components to the claimed idea does not necessarily turn an abstraction into something concrete (See Ultramercial, Inc. v. Hulu, LLC, _ F.3d_, 2014 WL 5904902, (Fed. Cir. Nov. 14, 2014). Hence the claims do not recite significantly more than an abstract idea.
For these reasons and those stated in the rejection above, rejection of the instant claims under 35 U.S.C. 101 is maintained by the Examiner.
Conclusion
THIS ACTION IS MADE FINAL. 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 CHRISTOPHER J BRIDGES whose telephone number is (571)270-5451. The examiner can normally be reached 7:00am-3:30pm M-F EDT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mike Anderson can be reached on 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTOPHER BRIDGES/Primary Examiner, Art Unit 3693