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 22 June 2026 with respect to the 101 rejection have been fully considered but they are not persuasive. Applicant argues on pages 10-11 that the claims do not recite a judicial exception, specifically that the claims are not directed to a fundamental economic practice or a commercial or legal interaction and are rooted in computer networking and distributed-ledger technology. The Examiner disagrees because absent the technology/hardware components, the method steps of 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, a compliance requirement request including at least an indication of the set of property configuration parameters; receiving the 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 can be performed by a human and are part of certain methods of organizing human activity such as 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). 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. The blockchain and smart contract functionality of the claims are considered under step 2A prong two as additional elements and the claim as a whole is directed to the concept of using rules to determine insurance compliance with contracts or laws and not the technology itself, that of blockchain and smart contract architecture. Applicant argues on pages 11-13, that the claims integrate the judicial exception into a practical application, specifically the claims recite a specific technical mechanism by which a requesting system actively invokes blockchain based functionality using supplied parameters to obtain current compliance requirements. 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). 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). The smart contract and blockchain network are no more than mere instructions to apply the judicial exception using a generic computer and are similar to the function and execution of retrieving information from a database, as the compliance requirements are on the blockchain, which is a distributed database, and are retrieved based on a request, which is similar to performing a querying on a database or searching compliance standards manually, except that the querying is performed by a smart contract function automatically in response to a request. Additionally, improving a workflow is analogous to improving a business process as opposed to a technical improvement that focuses on improvements in the tools, hardware, software, or machinery. Applicant further argues on page 13 that the claims recite significantly more than the judicial exception. The prior art analysis is separate from the 101 analysis and the problem allegedly addressed (obtaining up to date verified compliance requirements for a property on demand) is a business problem and not a technical problem. When viewed as an ordered combination, the additional elements and the claims as whole do not recite significantly more than the abstract idea.
Applicant’s arguments, see pages 13-16, filed 22 June 2026, with respect to 103 rejection have been fully considered and are persuasive. The 103 rejection of 19 February 2026 has been withdrawn. The prior art references fail to teach or disclose, individually or in combination, at least “a compliance requirement request including at least an indication of the set of property configuration parameters that invokes a function of a smart contract on a blockchain network, the smart contract being configured to automatically retrieve a set of compliance requirements associated with the set of property configuration parameters included in the compliance requirement request.”
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 MPEP 2106.04(a)(2)). 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, a compliance requirement request including at least an indication of the set of property configuration parameters; receiving the 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 MPEP 2106.04(a)(2)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See MPEP 2106.04(d)), 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 ‘Apply it’ 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 and does not integrate the abstract idea into a practical application. The additional element of the smart contract being configured to automatically retrieve a set of compliance requirements associated with the set of property configuration parameters included in the compliance requirement request amounts to mere instructions to implement an abstract idea on a computer, similar to TLI, see MPEP 2106.05(f). 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 MPEP 2106.05), 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 and does not integrate the abstract idea into a practical application 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. The dependent claims further refine the abstract idea of the independent claims and do not integrate the abstract idea into a practical application 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”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Naqvi US 2022/0207615, Breitweiser US 2023/0267694, Brynes US 2022/0156861.
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.”)
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