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 .
Response to Arguments
Applicant's arguments filed 23 July 2025 with respect to the 101 rejection have been fully considered but they are not persuasive. Applicant argues the claims do not recite a judicial exception on pages 10-11 of the Remarks, specifically that the claims are not directed to a fundamental economic practice or a commercial or legal interaction. The Examiner disagrees because identifying gaps in insurance coverage that is required by a set of compliance requirements is a concept that includes both a fundamental economic practice, specifically that of insurance and mitigating risk to the lender, and a commercial or legal interaction, specifically determining the compliance requirements of a property and the requirements of the contract. Applicant further argues the claims integrate the abstract idea into a practical application on pages 12-13 of the Remarks, specifically that the claims recite a particular technical solution for transparent, secure, and high fidelity data retrieval without exposing user and/or parcel specific personal identifiable information. The Examiner disagrees because it is not clear in the claims where these specific technological and secure solutions are implemented and the specification only mentions that the smart contract allows retrieval of data without exposing PII without stating how that occurs. The smart contract appears to be used to implement the identified abstract idea, as the smart contract was not alleged to be invented or improved by the Applicant and being used as a tool similar to TLI in the MPEP 2106.05(f). Applicant argues on page 13 of the Remarks that the combination of features in the claims amount to significantly more than the abstract idea, specifically that the claims provide a particular technical solution to a technical problem. The reliance on the smart contract and blockchain technology is an example of implementing the abstract idea with a particular technological environment and does not integrate the abstract idea into a practical application when the technology is merely used to implement the concept, see MPEP 2106.05(f).
Applicant’s arguments, see pages 13-14, filed 23 July 2025, with respect to the rejection(s) of claim(s) 1-20 under 103 over Naqvi US 2022/0207615 in view of Breitweiser US 2023/0267694 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Brynes US 2022/0156861.
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 1-2 and 4-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In the instant case, claim 1 is directed to a “method for identifying gaps in insurance coverage”. Claim 1 is directed to the concept of “using rules to determine insurance compliance with contracts or laws” which is grouped under “organizing human activity… fundamental economic practice (mitigating risk is similar to insurance compliance in contracts) and commercial or legal interaction (legal obligations and agreements in the form of contracts is similar to insurance compliance in a contract)” in prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance). Claim 1 recites receiving an indication of a parcel and a set of property configuration parameters regarding the parcel; in response to receiving the indication of the parcel, transmitting, and based on the set of property configuration paraments, a compliance requirement request; receiving a set of compliance requirements for the set of property configuration parameters; generating, based on the set of compliance requirements, a parcel profile, wherein the parcel profile comprises a set of compliance values for the parcel for the set of property configuration parameters; and causing presentation of a compliance graphic illustrating the parcel and one or more data layers, wherein each data layer of the one or more data layers depicts a corresponding compliance value of the set of compliance values. Accordingly, the claim recites an abstract idea (See 2019 Revised Patent Subject Matter Eligibility Guidance). This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as a data fabric engine, a blockchain network, a smart contract and communications hardware represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use (MPEP 2106.05(f)&(h)). Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. implement) the acts of using rules to determine insurance compliance with contracts or laws. The smart contract on the blockchain is merely being used to implement the concept of using rules to determine insurance compliance with contracts or laws and does not integrate the abstract idea into a practical application.
When analyzed under step 2B (See 2019 Revised Patent Subject Matter Eligibility Guidance), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of using rules to determine insurance compliance with contracts or laws using computer technology (e.g. communications hardware). Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Dependent claims 2, 4-8, 10-14 and 16-20 do not remedy the deficiencies of the independent claims and are rejected accordingly. In this case, all claims have been reviewed and are found to be substantially similar and linked to the same abstract idea (see Content Extraction and Transmission LLC v. Wells Fargo (Fed. Cir. 2014)).
Claim Interpretation
In the interest of compact prosecution, Applicant should be aware that there is claim language that does not serve to differentiate the claims from the prior art and/or or provide an additional element that can be a consideration for eligibility1. See MPEP 2103(c).
Contingent/Optional Limitations
Contingent and optional limitations are generally not given patentable weight. For example, if a claim states that a step occurs if a condition is met, the broadest reasonable interpretation of the claim does not require that the contingent step occurs because the condition may not be satisfied. System claims differ in that even if a condition that is required to perform a function is not met, the structure for performing the contingent limitation is given patentable weight. See MPEP 2111.04(II); see also Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016); MPEP 2103(I)(C) (“Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation.”).
The following limitations are contingent and/or optional:
Claim 2 recites “determining … whether the update alters the set of property configuration parameters regarding the parcel”
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-2 and 4-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naqvi US 2022/0207615 in view of Breitweiser US 2023/0267694 in further view of Brynes US 2022/0156861.
As per claim 1: Naqvi discloses a method for identifying gaps in insurance coverage, the method comprising: receiving, by communications hardware, an indication of a parcel and a set of property configuration parameters regarding the parcel (¶¶ [0072], [0074], [0064], [0066]); in response to receiving the indication of the parcel, transmitting, by the communications hardware and based on the set of property configuration paraments, a compliance requirement request (¶¶ [0063]-[0067], Figs 14 & 15);
receiving, by communications hardware […], a set of compliance requirements for the set of property configuration parameters (¶ [0043], [0063]-[0066], Figs 14 & 15);
generating, by a data fabric engine and based on the set of compliance requirements, a parcel profile, wherein the parcel profile comprises a set of compliance values for the parcel for the set of property configuration parameters (¶¶ [0063]-[0067], Figs 14 & 15); and
Naqvi fails to disclose but Breitweiser does disclose causing, by an advisory circuitry and based on the parcel profile, presentation of a compliance graphic illustrating the parcel and one or more data layers, wherein each data layer of the one or more data layers depicts a corresponding compliance value of the set of compliance values (Figs 2-10).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include the graphical display elements as taught in Breitweiser in Naqvi since the claimed invention is merely a combination of old elements, and in combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Both are in the art of insurance and it would have been obvious to a person skilled in the art to combine the art to improve the output of Naqvi in order to include a visual display of the property insurance elements.
Naqvi fails to explicitly disclose but Brynes does disclose a compliance requirement request that invokes a function of a smart contract on a blockchain network, based on invoking the function (abstract, [0062]-[0066] using a smart contract that invokes a function to monitor and retrieve data, [0078] insurance databases) It would have been obvious to one of ordinary skill in the art before the effective filing date to include the graphical display elements as taught in Brynes in Naqvi since the claimed invention is merely a combination of old elements, and in combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Brynes is in the art of blockchain based data driven property management and it would have been obvious to a person skilled in the art to combine the art to improve the automation of Naqvi in order to include smart contracts elements, which are widely used in blockchain environments. As per claims 9 and 15: Claims 9 and 15 are rejected under the rationale of claim 1.
As per claim 2: Naqvi further discloses the method of claim 1, further comprising: receiving, by the communications hardware and via the blockchain network, an update notification, wherein the update notification indicates an update to the set of compliance requirements (¶¶ [0063]-[0067], Figs 14 & 15);
determining, by the data fabric engine, whether the update alters the set of property configuration parameters regarding the parcel (¶¶ [0063]-[0067], Figs 14 & 15); and
in an instance in which the update alters the set of property configuration parameters regarding the parcel: retrieving, by the communications hardware via the blockchain network, an updated set of compliance requirements for the set of property configuration parameters (¶¶ [0063]-[0067], Figs 14 & 15), generating, by the data fabric engine and based on the update, an updated parcel profile, wherein the updated parcel profile comprises a set of updated compliance values for the parcel for the set of property configuration parameters (¶¶ [0063]-[0067], Figs 14 & 15), and causing, by the advisory circuitry and based on the updated parcel profile (¶¶ [0063]-[0067], Figs 14 & 15),
Naqvi fails to disclose but Breitweiser does disclose presentation of an updated compliance graphic illustrating the parcel and one or more updated data layers, wherein each updated data layer of the one or more updated data layers depict a corresponding updated compliance value for the set of updated compliance values (Figs 2-10).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include the graphical display elements as taught in Breitweiser in Naqvi since the claimed invention is merely a combination of old elements, and in combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Both are in the art of insurance and it would have been obvious to a person skilled in the art to combine the art to improve the output of Naqvi in order to include a visual display of the property insurance elements. As per claims 10 and 16: Claims 10 and 16 are rejected under the rationale of claim 2.As per claim 4: Naqvi fails to disclose but Breitweiser does disclose the method of claim 1, wherein causing presentation of the compliance graphic comprises: determining, by the data fabric engine, a transparency value for the one or more data layers, wherein the transparency value for each data layer is based on a compliance value corresponding to that data layer (Figs 2-10).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include the graphical display elements as taught in Breitweiser in Naqvi since the claimed invention is merely a combination of old elements, and in combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Both are in the art of insurance and it would have been obvious to a person skilled in the art to combine the art to improve the output of Naqvi in order to include a visual display of the property insurance elements.As per claims 11 and 17: Claims 11 and 17 are rejected under the rationale of claim 4.
As per claim 5: Naqvi fails to disclose but Breitweiser does disclose the method of claim 4, further comprises: determining, by the advisory circuitry, a format for each data layer (¶¶ [0107], [0116], Figs 2-10).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include the graphical display elements as taught in Breitweiser in Naqvi since the claimed invention is merely a combination of old elements, and in combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Both are in the art of insurance and it would have been obvious to a person skilled in the art to combine the art to improve the output of Naqvi in order to include a visual display of the property insurance elements.As per claims 12 and 18: Claims 12 and 18 are rejected under the rationale of claim 5.
As per claim 6: Naqvi fails to disclose but Breitweiser does disclose the method of claim 5, wherein determining the format comprises: applying, by the advisory circuitry, a model to the one or more data layers, wherein the model prohibits duplication of data layer formatting (¶¶ [0107], [0116], Figs 2-10). It would have been obvious to one of ordinary skill in the art before the effective filing date to include the graphical display elements as taught in Breitweiser in Naqvi since the claimed invention is merely a combination of old elements, and in combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Both are in the art of insurance and it would have been obvious to a person skilled in the art to combine the art to improve the output of Naqvi in order to include a visual display of the property insurance elements.
As per claims 13 and 19: Claims 13 and 19 are rejected under the rationale of claim 6.
As per claim 7: Naqvi fails to disclose but Breitweiser does disclose the method of claim 6, wherein combining formats for a plurality of data layers creates a composite format, wherein the composite format indicates an overall compliance status for the plurality of data layers (¶¶ [0107], [0116], Figs 2-10).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include the graphical display elements as taught in Breitweiser in Naqvi since the claimed invention is merely a combination of old elements, and in combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Both are in the art of insurance and it would have been obvious to a person skilled in the art to combine the art to improve the output of Naqvi in order to include a visual display of the property insurance elements.
As per claim 8: Naqvi fails to disclose but Breitweiser does disclose the method of claim 1, further comprising: receiving, by the communications hardware, a data layer request regarding a specific data layer, wherein the data layer request is associated with a user interaction with the compliance graphic (¶¶ [0107], [0116], Figs 2-10); and causing, by the communications hardware and based on the data layer request, display of information about a compliance status of the specific data layer (¶¶ [0107], [0116], Figs 2-10). It would have been obvious to one of ordinary skill in the art before the effective filing date to include the graphical display elements as taught in Breitweiser in Naqvi since the claimed invention is merely a combination of old elements, and in combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Both are in the art of insurance and it would have been obvious to a person skilled in the art to combine the art to improve the output of Naqvi in order to include a visual display of the property insurance elements.As per claims 14 and 20: Claims 14 and 20 are rejected under the rationale of claim 8.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P SHARVIN whose telephone number is (571)272-9863. The examiner can normally be reached M-F 9 am - 5 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Donlon can be reached at 571-270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID P SHARVIN/Primary Examiner, Art Unit 3692
1 See MPEP 2106.04(d)(2) (“Examiners should keep in mind that in order to qualify as a "treatment" or "prophylaxis" limitation for purposes of this consideration, the claim limitation in question must affirmatively recite an action that effects a particular treatment or prophylaxis for a disease or medical condition. An example of such a limitation is a step of "administering amazonic acid to a patient" or a step of "administering a course of plasmapheresis to a patient." If the limitation does not actually provide a treatment or prophylaxis, e.g., it is merely an intended use of the claimed invention or a field of use limitation, then it cannot integrate a judicial exception under the "treatment or prophylaxis" consideration. For example, a step of "prescribing a topical steroid to a patient with eczema" is not a positive limitation because it does not require that the steroid actually be used by or on the patient, and a recitation that a claimed product is a "pharmaceutical composition" or that a "feed dispenser is operable to dispense a mineral supplement" are not affirmative limitations because they are merely indicating how the claimed invention might be used.”)