/25DETAILED 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 .
Application Status
This is a Continuation (CON) of 17/085,752 now U.S. Patent 11,748,763.
Response to Amendment
The amendment filed 12/16/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
“A system configured to automatically programmatically initiate a claim for an unregistered device caused by a database asynchronization between a device protection program subscriber database associated with a fulfillment subsystem and a third-party profile database associated with a third-party device management system,”
Applicant’s comment that the support for the amendment may be found in the specification at least at pars. [0137]-[0138] is noted but not persuasive.
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Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Status
Claims 1-54, 73 and 76-96 have been canceled.
Claims 55-72, 74-75, and 97 are pending. They comprising of 3 groups:
1) System1: 55-64, 97, and
2) Method1: 65-72 and 74, and
3) Article1: 75.
They all of similar scope.
As of 12/27/2025, independent system claim 55 is as followed:
55. (Currently Amended) A system configured to automatically programmatically initiate a claim for an unregistered device caused by a database asynchronization between a device protection program subscriber database associated with a fulfillment subsystem and a third-party profile database associated with a third-party device management system, the system comprising at least one processor and at least one memory, the at least one memory comprising computer coded instructions therein, wherein the computer coded instructions are configured to, when executed by the processor, cause the system to:
[1] receive, at [[a]] the fulfillment subsystem, a claim data object associated with a subscriber identifier data object, the claim data object comprising a device identification data object;
[2] query [[a]] the device protection program subscriber database associated with the fulfillment subsystem for an enrolled subscriber profile data object associated with the subscriber identifier data object;
[3] receive result data indicative that the device protection program subscriber database does not include the enrolled subscriber profile data object;
[4] generate a third-party enrollment status request data object comprising the subscriber identifier data object and the device identification data object;
[5] transmit the third-party enrollment status request data object to [[a]] the third-party device management system, causing the third-party device management system to query [[a]] the third- party profile database for an associated third-party subscriber profile data object;
[6] receive a third-party enrollment status response data object from the third-party device management system indicating a matching third-party enrollment status with the subscriber identifier data object, wherein the third-party enrollment status is indicative of a third-party subscriber profile data object stored in the third-party device management system; and
[7] automatically initiate a claim processing instruction set associated with the claim data object based on the third-party enrollment status request data object.
Note: numbers [1]-[7] are added to the beginning of each step for referential purpose.
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 55-72, 74-75, and 97 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.
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.,
(1) process,
(2) machine,
(3) manufacture or product, or
(4) 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.,
(1) law of nature,
(2) natural phenomenon, and
(3) 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:
(i) a method of organizing human activities,
(2i) an idea of itself, or
(3i) a mathematical relationship or formula.
Step 1:
In the instant case, with respect to claims 55-72, 74-75, and 97:
Claim categories:
System: 55-64, and 97,
Method: 65-72, and 74, and
Article: 75.
Analysis:
Method: claims 65-72, and 74, are directed to a computer-implemented method for fulfilling a claim for an unregistered device, comprising steps: [1] receive a claim data object, [2] query a device protection program subscriber database, [3] receive result data, [4] generate a 3rd party enrollment status request data object, [5] transmit a third-party enrollment status request, [6] receive a third-party enrollment status response data object, and [7] initiate a claim processing instruction set associated with the claim data object without the subscriber profile data object. (Step 1:Yes).
System: claim 55-64 and 97 are directed to a system comprising (1) a processor and (2) A memory storing instruction for carrying out the steps for fulfilling a claim for an unregistered device, comprising steps: [1] receive a claim data object, [2] query a device protection program subscriber database, [3] receive result data, [4] generate a 3rd party enrollment status request data object, [5] transmit a third-party enrollment status request, [6] receive a third-party enrollment status response data object, and [7] initiate a claim processing instruction set associated with the claim data object without the subscriber profile data object. (Step 1:Yes).
Article: 75, is directed to an article for fulfilling a claim for an unregistered device, comprising steps: [1] receive a claim data object, [2] query a device protection program subscriber database, [3] receive result data, [4] transmit a third-party enrollment status request, [5] transmit a third-party enrollment status request, [6] receive a third-party enrollment status response data object, and [7] initiate a claim processing instruction set associated with the claim data object without the subscriber profile data object. (Step 1:Yes).
Thus, the claims are generally directed towards one of the four statutory categories under 35 USC § 101.
Actual Analysis:
Claims 55-72, 74-75 and 97 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Method claim 65, as exemplary, recites the abstract idea of for method for
fulfilling a claim for an unregistered device, comprising steps: [1] receive a claim data object, [2] query a device protection program subscriber database, [3] receive result data, [4] transmit a third-party enrollment status request, [5] transmit a third-party enrollment status request, [6] receive a third-party enrollment status response data object, and [7] initiate a claim processing instruction set associated with the claim data object without the subscriber profile data object. (Step 1:Yes).
These recited limitations fall within the “Certain Methods of Organizing Human activities” grouping of abstract ideas as it relates to business process for managing a business wherein an entity files a claim for an unregistered device. Accordingly, the claim recites an abstract idea.
(ii) commercial or legal interactions (including agreements in the form of contracts; Legal obligations; Advertising, marketing or sales activities or behaviors; business relations);
Alternatively, the recited limitations also fall within the “Mental process” grouping of abstract ideas as it relates to an managing a business process of filing a claim for a device. Accordingly, the claim recites an abstract idea.
B. Step 2A, Prong Two:
The judicial exception is not integrated into a practical application because it deals with a method for method for fulfilling a claim for an unregistered device, by carrying out steps of:
The claims recites the additional elements of:
Steps: Types
[1] receive, …, a claim data (data) Data gathering, insignificant extra-solution activity (IESA)
[2] query … subscriber profile data (data) Data gathering, IESA.
[3] receive result data (data). Data gathering, IESA.
[4] generate a status request (data) Data gathering, IESA.
[5] transmit enrollment status request data. Data transmit, IESA.
[6] receive … response data (data). Data gathering, IESA.
[7] initiate a claim processing instruction set. Business activity.
Steps [1]-[6] are data gathering and transmitting, which are considered as insignificant extra-solution activity steps.
Step [7] is a business activity step.
The claim does not result in an improvement to the functioning of the computer system or to any other technology or technical field. Further, the claim limitations are not indicative of integration into a practical application by applying or using the judicial exception in some other meaningful way. The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer devices or modules or software, data processing system, i.e. an electronic device having a processing unit with a software application thereon. Accordingly, even in combination, 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. The claim is directed to an abstract idea for (data) comprising step of fulfilling a claim for an unregistered device, comprises the steps cited above, which does not integrate a judicial exception into a practical application. See MPEP 2106.05(f).
C. Step 2B:
The additional elements do not add an inventive element to the claim. The claims recites the additional elements of steps [1]-[7] above.
Steps [1]-[6] are data gathering and transmitting, which are considered as insignificant extra-solution activity steps.
Step [7] is a business activity step.
The additional elements do not result in an improvement to the functioning of the computer system or to any other technology or technical field. The generic computer components merely perform generic computer functions: c[1] receive a claim data object, [2] query a device protection program subscriber database, [3] receive result data, [4] transmit a third-party enrollment status request, [5] transmit a third-party enrollment status request, [6] receive a third-party enrollment status response data object, and [7] initiate a claim processing instruction set associated with the claim data object without the subscriber profile data object.
Further, the claim limitations are not indicative of integration into a practical application by applying or using the judicial exception in some other meaningful way. The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer network devices, i.e. a software application for fulfilling a claim for an unregistered device. Accordingly, even in combination, 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. The claim is directed to an abstract idea. See MPEP 2106.05(f).
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above, the additional elements, steps [1]-[7], when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea(s). As for the system or article claims, mere instructions to apply an exertion using generic computer components cannot provide an inventive concept. These generic computer components, i.e. a processor, a memory to store a set of instructions. The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer network devices, i.e. a software for fulfilling a claim for an unregistered device, are claimed at high level of generality to perform their basis functions which amount to no more than generally linking the use of the judicial exception to the particular technological environment of field of use and further see insignificant extra-solution activity MPEP 2106.05 (f), (g) and (h). The Symantec, TLI, and OIP Techs, court decisions cited in MPEP 2106.05(d)(II) indicate that mere receipt or transmission of data over a network, sorting data, analyzing data, and transmitting the data is a well-understood, routine and conventional function when it is claimed in a merely generic manner (as it is here). The claim are basically collect data, analyze data, and provide set of results, which are not patent eligible, see Electric Power Group, LLC. For these reasons, there is no inventive concept in the claim, and thus the claim is not patent eligible.
As for dep. claims 66-67 (part of 65 above), which deal with further details of the fraud and relationship features, these further limits the abstract idea of the fraud and relationship, without including: (a) an improvement to another technology or technical field, (b) an improvement to the functioning of the computer itself, or (c ) meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, claims 66-67 are not considered as being “significantly more”, and thus does not facilitate the claim to meet the “inventive concept”.
As for dep. claims 68-69 (part of 65 above), which deal with further details of the third party involvement features, these further limits the abstract idea of the third party involvement, without including: (a) an improvement to another technology or technical field, (b) an improvement to the functioning of the computer itself, or (c ) meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, claims 68-69 are not considered as being “significantly more”, and thus does not facilitate the claim to meet the “inventive concept”.
As for dep. claims 70-72, 74 (part of 65 above), which deal with further details of the third party involvement features, these further limits the abstract idea of the third party involvement, without including: (a) an improvement to another technology or technical field, (b) an improvement to the functioning of the computer itself, or (c ) meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Note that the phrase in dep. claim 74 “initiating a system synchronizing event” wherein the term “initiating” means to “cause (a process or action) to begin” means to initiate or set something in motion,” is broad and the term “event” based on the 3rd party enrollment status response data object is also broad. Therefore, claims 70-72 and 74 are not considered as being “significantly more”, and thus does not facilitate the claim to meet the “inventive concept”.
Therefore, claims 55-72 and 74-75 and 97 are not drawn to eligible subject matter as they are directed to an abstract idea without significantly more. step 2B: NO
Response to Arguments
Applicant's arguments filed 12/17/2025 have been fully considered but they are not persuasive.
Applicant’s comments on pages 13-15 are noted but not found to be persuasive in view of the “new matter” issue above. Moreover, the claim fails to include the step of “synchronizing the databases between a device protection program subscriber database associated with a fulfillment subsystem and a third-party profile database associated with a third-party device management system” and therefore, an improvement in the functioning of a computer or the database technology cannot be carried out.
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The 101 rejection was withdrawn in the Final rejection of 12/31/2024 because the system configured to (1) automatically programmatically initiate a claim for an unregistered device caused by a database asynchronization and (2) resolve the database asynchronization problem by synchronizing the respective databases in the system. These features are not shown in the amended claims. The feature “synchronizing the respective databases in the system” is critical to overcome the rejection because it resolves a technical problem.
Citations of Prior Art
Claim for a system/method/article for automatically programmatically initiate a claim for an unregistered device caused by database asynchronization issues, as shown in independent system1 claim 55, and respective method1 claim 65, and article claim 75, is neither anticipated by, nor obvious in view of,
Name Publication
(1) OZANIAN US 2020/0.322.800, and
(2) OBERHEIDE et al. US 2015/0.046.989, and
(3) SINGH et al. US 5,758,083.
since claimed invention, which teaches:
55. (Currently Amended) A system configured to automatically programmatically initiate a claim for an unregistered device caused by a database asynchronization between a device protection program subscriber database associated with a fulfillment subsystem and a third-party profile database associated with a third-party device management system, the system comprising at least one processor and at least one memory, the at least one memory comprising computer coded instructions therein, wherein the computer coded instructions are configured to, when executed by the processor, cause the system to:
[1] receive, at [[a]] the fulfillment subsystem, a claim data object associated with a subscriber identifier data object, the claim data object comprising a device identification data object;
[2] query [[a]] the device protection program subscriber database associated with the fulfillment subsystem for an enrolled subscriber profile data object associated with the subscriber identifier data object;
[3] receive result data indicative that the device protection program subscriber database does not include the enrolled subscriber profile data object;
[4] generate a third-party enrollment status request data object comprising the subscriber identifier data object and the device identification data object;
[5] transmit the third-party enrollment status request data object to [[a]] the third-party device management system, causing the third-party device management system to query [[a]] the third- party profile database for an associated third-party subscriber profile data object;
[6] receive a third-party enrollment status response data object from the third-party device management system indicating a matching third-party enrollment status with the subscriber identifier data object, wherein the third-party enrollment status is indicative of a third-party subscriber profile data object stored in the third-party device management system; and
[7] automatically initiate a claim processing instruction set associated with the claim data object based on the third-party enrollment status request data object.
which references neither disclose nor suggest.
Conclusion
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.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tan "Dean" D NGUYEN whose telephone number is (571)272-6806. The examiner can normally be reached M-F: 6:30 AM - 4:30 PM.
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/TAN D NGUYEN/Primary Examiner, Art Unit 3689