DETAILED ACTION
This is in response to the reply filed on 10/23/2025. Claims 1-3, 5-10, 12-17, 19, and 20 are pending in this Action. Claims 4, 11, and 18 had been previously cancelled.
Remark
In the response filed 10/23/2025, claims 8 and 14 have been amended, no claim has been cancelled, and no new claim has been added.
The Applicant’s Interview Summary is acknowledged and it is OK.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/10/20225 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Applicant’s arguments, filed 10/23/2025, with respect to 35 USC 101 rejections of claims 1, 8, and 15 have been fully considered but they are not persuasive.
With respect to Step 1, prong 1 analysis (pages 8-9 of the Remark), the applicant argues that in claim 1, the feature of:
verifying, at the processor, that the network participant has permission to access information stored on the permissioned blockchain using a requestor identifier included in the request dataset, wherein the requestor identifier comprises a hash value associated with a cryptographic key controlled by the network participant, and wherein the network participant is an insurance carrier, auto manufacturer, or auto dealership;
Applicant respectfully submits that this feature could not be practicably performed in the human mind alone. In particular, the feature "the requestor identifier comprises a
hash value associated with a cryptographic key controlled by the network participant" could not be practically performed in the human mind. That is, Applicant respectfully submits that a human cannot mentally generate or validate cryptographic hash values or process cryptographic keys in the claimed manner, nor could a human mind alone use such identifiers to effectively and securely verify permissions across a permissioned blockchain network as recited. These steps require the use of specialized computing resources and cryptographic algorithms, which inherently require more than mere mental steps.
The Examiner respectfully disagrees.
The MPEP 2106.II states:
It is essential that the broadest reasonable interpretation (BRI) of the claim be established prior to examining a claim for eligibility. The BRI sets the boundaries of the coverage sought by the claim and will influence whether the claim seeks to cover subject matter that is beyond the four statutory categories or encompasses subject matter that falls within the exceptions. See MyMail, Ltd. v. ooVoo, LLC, 934 F.3d 1373, 1379, 2019 USPQ2d 305789 (Fed. Cir. 2019) ("Determining patent eligibility requires a full understanding of the basic character of the claimed subject matter"), citing Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1273-74, 103 USPQ2d 1425, 1430 (Fed. Cir. 2012); In re Bilski, 545 F.3d 943, 951, 88 USPQ2d 1385, 1388 (Fed. Cir. 2008) (en banc ), aff'd by Bilski v. Kappos, 561 U.S. 593, 95 USPQ2d 1001 (2010) ("claim construction … is an important first step in a § 101 analysis"). Evaluating eligibility based on the BRI also ensures that patent eligibility under 35 U.S.C. 101 does not depend simply on the draftsman’s art. Alice, 573 U.S. 208, 224, 110 USPQ2d at 1984, 1985 (citing Parker v. Flook, 437 U.S. 584, 593, 198 USPQ 193, 198 (1978) and Mayo, 566 U.S. at 72, 101 USPQ2d at 1966). See MPEP § 2111 for more information about determining the BRI.
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Here, the Examiner given the BRI to the limitation of “verifying that the network participant has permission to access information stored on the permissioned blockchain using a requestor identifier included in the request dataset, wherein the requestor identifier comprises a hash value associated with a cryptographic key controlled by the network participant, and wherein the network participant is an insurance carrier, auto manufacturer, or auto dealership”, interprets “a hash value associated with a cryptographic key” as a number.
In this limitation the request includes a hash value (i.e., a number) associated with a network participant (e.g., an insurer). The hash value could simply be as a digital number. The hash value (i.e., digital number) is evaluated (such as by comparing and evaluating the number with reference numbers) to verify (i.e., judge) whether the network participant has a permission to access information. This step does not require a computer, and nothing in the step precludes it from being implemented in the human mind. Under BRI, said step involves observation, evaluation, and judgement concepts that could be practically performed in the human mind. A person can mentally “verify” whether an entity or a participant has a permission to access information by evaluating an identifier which is a has value (i.e., a number). As such, the above-mentioned step of “verifying that the network participant has permission to access information… a requestor identifier included in the request dataset, wherein the requestor identifier comprises a hash value…” as recited in at least claim 1 could be implemented in the human mind, and thus it is a mental process.
Moreover, the applicant in page 9 of the Remark argues that:
the claimed method is not a certain method of organizing human activity. Namely, claim 1 is not directed to a certain method of organizing human activity because its focus is on implementing a technical solution for secure data verification and fraud detection through a permissioned blockchain network, cryptographic mechanisms, and smart contracts. The claimed method addresses technological problems related to data integrity, access control, and automation within a distributed computer environment, rather than prescribing rules or methods for managing relationships or commercial interactions between people. Accordingly, the claim is centered on improvements in computer technology, not on organizing human activity.
At least for these reasons, Applicant respectfully submits that the Office Action has not established a prima facie case for rejection of claim 1 at Step 2A Prong 1.
The Examiner respectfully disagrees.
MPEP § 2106.04(a)(2) explains that certain methods of organizing human activity
is used to describe concepts related to fundamental economic principles or practices (including hedging, insurance, mitigating risk). Here, the focus of the claimed invention is to verify fraudulent activities in automobile insurance claims. Claim 1 is related to a concept in which a person verifies whether another person is allowed to access the stored information, verifies the stored information associate with a VIN, determine whether multiple claims for the same VIN have been submitted, if yes, then trigger an alert (e.g., send a message or set a flag) indicating potential fraud. Thus, claim 1 relates to fundamental economic principle or practice of “insurance” in which an insurance provider detects potentially fraudulent activities by determining and verifying whether multiple claims are submitted for a same VIN utilizing well-known and conventional blockchain features in a computer network.
As such, the invention of claim 1 involves processing of verifying fraudulent activity (i.e., submitting multiple claims with the same VIN) in automobile insurance claims which is “a certain method of organizing human activity” enumerated one of the abstract idea groupings.
With respect to Step 1, prong 2 analysis (pages 10-11 of the Remark), the applicant alleges that
“claim 1 recites: ...in response to the network participant having permission to access the information stored on the permissioned blockchain:...transmitting a request notification by generating the request notification using a success indicator indicating whether an insurance coverage dataset was sent to at least one other network participant...applicant further respectfully submits that this shows improves “technical
functioning (e.g., by improving verification of communications in an electronic insurance
communication system)…Moreover, the above-mentioned features of claim 1 improve technical functioning.”
Applicant further alleges that the limitation of transmitting a success indicator indicating whether an insurance coverage dataset was sent to at least one other network participant specifically in response to the network participant having permission to access the information stored on the permissioned blockchain is not an extra solution activity or well-understood and conventional routine. “Particularly, these features transmit a success indicator indicating whether an insurance coverage dataset was sent to at least one other network participant specifically in response to the network participant having permission to access the information stored on the permissioned blockchain. These features improve technical functioning by adding verification in the electronic insurance communication system that the insurance coverage dataset was sent on the permissioned blockchain.”
The Examiner respectfully disagrees.
The Examiner holds that the limitation of “transmitting a request notification by generating the request notification using a success indicator indicating whether an insurance coverage dataset was sent to at least one other network participant,” recited in claim 1 is considered to be an insignificant extra-solution activity of automation of organizing particular human activities utilizing accessing and transmitting data which is not sufficient to show an improvement in computer-functionality. See MPEP 2106.04(d) and 2106.05(a) and (g). For example, a call or message (i.e., a notification) might be sent/transmitted to a participant (e.g., an insurance provider) that insurance data has
already been sent/transmitted to another participant (e.g., an auto dealership).
The term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. As it can be seen, this process is incidental and tangential to the main idea of detecting potentially fraudulent activities by determining and verifying whether multiple claims are submitted for a same VIN. It does not impose a meaningful limit on the claim such that it is not nominal or tangentially related to the invention. As such, above-mentioned functions accessing a network and sending notification to a user/participant are considered to be extra-solution activities.
The courts have indicated that mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017) or speeding up a loan-application process by enabling borrowers to avoid physically going to or calling each lender and filling out a loan application, LendingTree, LLC v. Zillow, Inc., 656 Fed. App'x 991, 996-97 (Fed. Cir. 2016) (non-precedential) may not be sufficient to show an improvement in computer-functionality.
As such, the recited functions of receiving request datasets, accessing a blockchain using a VIN, and transmitting a notification (e.g., message) that information sent to another party are activities incidental to the primary process of determining fraudulent activities based on submission of multiple claims using a same VIN that are merely a nominal or tangential additions to the claims. The additions of these insignificant extra-solution activities do not amount to an inventive concept, particularly when the activities are well-understood or conventional. These functions do not impose meaningful limits on the claims such that it is not nominally or tangentially related to the core invention. Thus, additions of aforementioned functions do not change a manner in which a computer functions or improve other technologies. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The additions of these well-understood or conventional activities do not amount to an inventive concept. As such, said additional limitations individually or in combination do not add significantly to more than abstract idea. Therefore, the claims are not patent eligible.
With respect to Step 2 analysis (pages 11-13 of the Remark), the applicant alleges that claim 1 is analogous to Example 35 claim 2 of the Patent Eligibility Guidance Subject Matter Eligibility Examples: Business Methods, issued December 2016 (hereinafter "PEG"). “More specifically, Example 35 claim 2 reduces fraud in an automated teller machine (ATM) transactions; analogously, claim 1 of the present application reduces fraud in insurance claim transactions.” And concludes that “[a]nalogously, the combination of features in claim of the present application address unique problems associated with electronic insurance system” and claim 1 should be found to be subject matter eligible at step 2B, analogously to Example 35 claim 2.
The Examiner disagrees.
The Examiner contends that, first, the Office no longer use Example 35 associated with the PEG 2016 as an example of subject matter eligibility.
Secondly, the current claim invention of claim 1 is not analogous to claim 2 of Example 35 because the current claim 1 relates to the feature of verifying whether participants access the stored information, verifying whether insurance information has been sent/transmitted to another participant, verifying that the stored information is associate with a VIN, determining whether multiple claims for the same VIN have been submitted, if yes, then triggering an alert (e.g., send a message or set a flag) indicating potential fraud. As it can be seen said steps involve mental processes and organizing particular human. The above-mentioned functions are merely using blockchain technology in a computer environment failing to improve technology or the manner in which a computer functions.
However, in analysis of claim 2 of Example 35, it was pointed out that the combination of the steps (e.g., the ATM providing a random code, the mobile communication devices’ generation of the image having encrypted code data in response to the random code, the ATM’s decryption and analysis of the code data, and the subsequent determination of whether the transaction should proceed based on the analysis of the code data) operates in a non‐conventional and non‐generic way to ensure that the customer’s identity is verified in a secure manner that is more than the conventional verification process employed by an ATM alone. In combination, these steps do not represent merely gathering data for comparison or security purposes, but instead set up a sequence of events that address unique problems associated with bank cards and ATMs (e.g., the use of stolen or “skimmed” bank cards and/or customer information to perform unauthorized transactions). Thus, like in BASCOM, the claimed combination of additional elements presents a specific, discrete implementation of the abstract idea. Further, the combination of obtaining information from the mobile communication device (instead of the ATM keypad) and using the image (instead of a PIN) to verify the customer’s identity by matching identification information does not merely select information by content or source, in contrast to Electric Power, but instead describes a process that differs from the routine and conventional sequence of events normally conducted by ATM verification, such as entering a PIN, similar to the unconventional sequence of events in DDR. The additional elements in claim 2 thus represent significantly more (i.e., provide an inventive concept) because they are a practical implementation of the abstract idea of fraud prevention that performs identity verification in a non‐conventional and non‐generic way, even though the steps use well‐known. Here, as it can be seen, these features are fundamentally different from the combination of features in claim 1 of the current invention.
The Examiner holds that using blockchain to verify insurance fraud in submitting multiple claims for a VIN as drafted in current claim 1 is not analogues to using an ATM machine and generating random code, obtaining customer confirmation code, and automatically sending a control signal to an input for the automated teller machine to provide access to a keypad when a match from the analysis verifies the authenticity of the customer’s identity, and to deny access to a keypad so that the transaction is terminated when the comparison results in no match, as recited in claim 2 of the Example 35. They are two different sets of claims with two different claimed features and two different industries and background.
Furthermore, the applicant assertion that the current invention “reduces fraud specifically in electronic insurance systems” is not considered to be an improvement in computer functionality or other technologies. The feature of reducing fraud in insurance industry does not improve the manner in which a computer function. At most, it is an improve in abstract idea itself. The additional limitations recited in the claims (e.g., a blockchain system, a processor, or memory, receiving and soring information) are merely used as a tool to generally link the user of recited abstract idea to a particular technological environment. The application or use of the judicial exception in this manner does not meaningfully limit the claim by going beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP 2106.04(d).
In conclusion, contrary to the applicant’s assertion, the Examiner established the prime face that the recited additional limitations analyzed under Step 2A, prongs1 and 2 and Step 2B. The claims are properly characterized as mental process and/or organizing particular human activities, under step 2A, prong 1. The claims as whole are directed to abstract idea. Under Step 2A, prong 2, the limitations of claims 1, 8, and 15 fail to integrate the abstract idea into practical application because they do not improve functions of a computer or any other technological field. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Therefore, rejections of claims 1-3, 5-10, 12-17, 19, and 20 under 35 USC 101 as being directed to non-statutory subject matter of 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 1-3, 5-10, 12-17, 19, and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter of abstract ideas.
Step 1:
Claims 1-3, 5-10, 12-17, 19, and 20 are directed to a method or a system which is one of the statutory categories of invention.
Step 2A:
Prong 1:
Claims 1, 8, and 15 are directed to an abstract idea without significantly more. The claims recite the steps of:
verifying that the network participant has permission to access information stored on the permissioned blockchain using a requestor identifier included in the request dataset, wherein the requestor identifier comprises a hash value associated with a cryptographic key controlled by the network participant, and wherein the network participant is an insurance carrier, auto manufacturer, or auto dealership; [Given the limitation its BRI, the step involves observation, evaluation, and judgement concepts that could be practically performed in the human mind. A person can mentally “verify” whether an entity or a participant has a permission to access information by evaluating an identifier which is a has value (i.e., a number)] and
performing verification of the existence of data stored in the permissioned blockchain associated with the Vehicle Identification Number [it involves observation, evaluation, and judgement concepts that could be practically performed in the human mind];
determining that multiple insurance claims have been submitted for a same Vehicle Identification Number; [it involves observation, evaluation, and judgement concepts that could be practically performed in the human mind] and
in response to the determination that multiple insurance claims have been submitted for the same Vehicle Identification Number, using a smart contract to trigger an alert indicating potentially fraudulent activity. [it involves observation, evaluation, and judgement concepts that could be practically performed in the human mind. A person can mentally and manually trigger an alert (e.g., send a message) showing a fraudulent activity]
The above processes involve a concept that could be “mental process” which is
one of the abstract idea groupings. The functions of “verifying”, “performing verification”, “determining”, and “triggering an alert” based on a determination involves concepts of observation, evaluation, and judgements that could be practically be performed in the human mind. A person (e.g., an insurance agent) can mentally verify whether another person can access the stored information (here the information stored in a computer), verify the stored information associate with a VIN, determine whether multiple claims for the same VIN have been submitted, if yes, then trigger an alert (e.g., send a message or set a flag) indicating potential fraud. MPEP 2106.04(a)(2)(III).
Furthermore, the above processes also involve “a certain method of organizing
human activity” which is also one of the abstract idea groupings. The above functions describe concepts relating to fundamental economic principle or practice of “insurance” in which an insurance provider detects potentially fraudulent activities by determining and verifying whether multiple claims are submitted for a same VIN utilizing well-known and conventional blockchain features in a computer network. See MPEP 2106.04(a)(2)(II)
That is, nothing in the claim element precludes the step from practically being performed in a human mind or with pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” and “Certain Method of Organizing Human Activity” grouping of abstract ideas (concepts performed in the human mind including an observation, evaluation, judgment, and opinion).
Prong 2:
The judicial exception(s) recited in claims 1, 8, and 15 is/are not integrated into a practical application. The claims recite additional generic computer components of: a "blockchain", “a processor”, or "a network interface", and “a memory” to implement the steps of the invention. Said generic computer components are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component and considered to be insignificant extra solution activities.
Furthermore, the claims recite the additional limitations of “receiving, at a processor coupled with a network interface, one or more request datasets from one or more network participants;” and “in response to the network participant having permission to access the information stored on the permissioned blockchain: accessing, at a memory coupled with the processor, the permissioned blockchain using a Vehicle Identification Number included in the request dataset” which are considered to be insignificant extra-solution activities of receiving accessing and gathering data. See MPEP 2106.04(d) and 2106.05(g).
Moreover, the claims recite the limitations of “transmitting a request notification by generating the request notification using a success indicator indicating whether an insurance coverage dataset was sent to at least one other network participant” which is considered to be an insignificant extra-solution activity of automation of organizing particular human activities utilizing accessing and transmitting data which is not sufficient to show an improvement in computer-functionality. See MPEP 2106.04(d) and 2106.05(a) and (g). For example, a call or message (i.e., a notification) might be sent/transmitted to a participant (e.g., an insurance provider) that insurance data has already been sent/transmitted to another participant (e.g., an auto dealership). As it can be seen, this process is incidental and tangential to the main idea of detecting potentially fraudulent activities by determining and verifying whether multiple claims are submitted for a same VIN. As such, above-mentioned functions accessing a network and sending notification to a user/participant are considered to be extra-solution activities.
The courts have indicated that mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017) or speeding up a loan-application process by enabling borrowers to avoid physically going to or calling each lender and filling out a loan application, LendingTree, LLC v. Zillow, Inc., 656 Fed. App'x 991, 996-97 (Fed. Cir. 2016) (non-precedential) may not be sufficient to show an improvement in computer-functionality.
The recited functions of receiving request datasets, accessing a blockchain using a VIN, and transmitting a notification (e.g., message) that information sent to another party are activities incidental to the primary process of determining fraudulent activities based on submission of multiple claims using a same VIN that are merely a nominal or tangential additions to the claims. The additions of these insignificant extra-solution activities do not amount to an inventive concept, particularly when the activities are well-understood or conventional. These functions do not impose meaningful limits on the claims such that it is not nominally or tangentially related to the core invention. As such, additions of aforementioned functions do not change a manner in which a computer functions or improve other technologies. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Step 2B:
The claims 1, 8, and 15 do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The claims recite additional generic computer components of: a "blockchain", “a processor”, or "a network interface", and “a memory” to implement the steps of the invention. Said generic computer components are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component and considered to be well-understood and routine
computer activities.
Furthermore, the claims recite the additional steps of “receiving, at a processor
coupled with a network interface, one or more request datasets from one or more network participants;” and “in response to the network participant having permission to access the information stored on the permissioned blockchain: accessing, at a memory coupled with the processor, the permissioned blockchain using a Vehicle Identification Number included in the request dataset” which are considered to be a well-understood, conventional, and routine computer activities of receiving and gathering data. See MPEP 2106.04(d) and 2106.05(g).
Moreover, the limitations of “transmitting a request notification by generating the request notification using a success indicator indicating whether an insurance coverage dataset was sent to at least one other network participant” is considered to be a well-understood, conventional, and routine computer activity of automation of organizing particular human activities utilizing accessing and transmitting data which is not sufficient to show an improvement in computer-functionality. See MPEP 2106.04(d) and 2106.05(a) and (g).
For example, a call or message (i.e., a notification) might be sent/transmitted to a participant (e.g., an insurance provider) that insurance data has already been sent/transmitted to another participant (e.g., an auto dealership). As it can be seen, this process is incidental and tangential to the main idea of detecting potentially fraudulent activities by determining and verifying whether multiple claims are submitted for a same VIN. As such, above-mentioned functions accessing a network and sending notification to a user/participant are considered to well-understood, conventional, and routine activities. Thus, automation of a mental process or organizing particular human activity does not amount to an inventive step and fail to amount to more than abstract idea.
Additionally, using a blockchain technology was a well-known feature to a person of ordinary skill in the art. For instance, see Kohn, US 2017//0243216 (at least paragraphs 24 and 32) and Dunlevy et al., US 2017/0372300 (at least paragraph 20).
As such, the additions of these well-understood or conventional activities do not amount to an inventive concept. As such, said additional limitations individually or in combination do not add significantly to more than abstract idea. Therefore, the claims are not patent eligible.
Regarding dependent claims 2-3, 9-10, 13, and 16-17
the dependent claims also lack additional elements that sufficient to amount to
significantly more than abstract idea found in the independent claims. The dependent claims additional generic additional data elements are non-functional descriptive material that do not amount significantly to more than abstract idea.
Regarding dependent claims 5, 12, and 19,
the dependent claims also lack additional elements that sufficient to amount to significantly more than abstract idea found in the independent claims. The claims recite the step of “performing a verification….,” which is a mental process. The claims further recite “when the request type is a modification request, transmitting…insurance coverage dataset” and “when the request type is a new transaction request, generating and transmitting… insurance coverage dataset” recited at a high level of generality. As such, they are considered to be insignificant extra-solution and/or well-understood and routine computer activities. Thus, the additional limitations of the claims do not amount
significantly to more than abstract idea.
Regarding dependent claims 7, 14, and 20,
the dependent claims also lack additional elements that sufficient to amount to
significantly more than abstract idea found in the independent claims. The claims further recite “transmitting a request notification based upon the verification to the one or more network participants by generating, at the processor, the request notification using the request type” recited at a high level of generality. As such, they are considered to be insignificant extra-solution and/or well-understood and routine computer activities. Thus, the additional limitations of the claims do not amount significantly to more than abstract idea.
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 extension fee 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.
Points of Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HARES JAMI whose telephone number is (571)270-1291. The examiner can normally be reached M-F 9:00a-5:00p.
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/Hares Jami/ Primary Examiner, Art Unit 2164
11/28/2025