DETAILED 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/9/2026 has been entered.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it contains legal phraseology such as “ Other embodiments are described”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Response to the Arguments
Applicant’s representative argues that the claims integrate the abstract idea into a practical application. Applicant’s representative also states that their claims recite an improvement to other technology or technical field, and also recite use of the ideas in a meaningful way beyond generally linking to a particular technological environment.
In response, the claims as now amended still fail to recite technological implementation details of how the claimed functions are being realized. Claims of this nature are almost always found to be ineligible for patenting under Section 101." Beteiro, LLC V. DraftKings Inc., 104 F.4th 1350, 1356 (Fed. Cir. 2024). The specification does not even provide details of a specific architecture or means or structures or specific computer executed modules for performing the claimed functions. Taken claim 1 as an example, Claim 1 now recites an improvement to a system for a telematics data marketplace for a plurality of users.
The claims "do[es] not improve the functioning of the processor comprising of the communication component (which is a component found in most generic computing system), the matching component (which is similar to a comparing function) or make[s] it operate more efficiently, or solve any technological problem." Trading Techs. Int'l, Inc. V. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019). "Nothing in the claim[s], understood in light of the specification, calls for anything but preexisting computers and displays, programmed using techniques known to skilled artisans, to present the new arrangement of information." Brumfield V. IBG LLC, 97 F Ath 854, 868 (Fed. Cir. 2024). The claims also do not show a technical improvement in the architecture of the processor using generic computer components. The recited functions involve generic or conventional functions and setup of a basic computer system.
The mere recitation of a generic computing system performing its functions cannot transform a patent-ineligible abstract idea into a patent-eligible invention as stated in Alice Corp., 134S.Ct. at 2358; DDR Holdings, LLC V. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cri. 2014) ("And after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible. (citation omitted)). Thus, if a patent's recitation of a computer amounts to a mere instruction to 'implement' an abstract idea 'on a computer', that addition cannot impart patent eligibility." Alice Corp., 134 S. Ct. at 2358 (internal citation omitted).
The claimed computing system or processor is merely a field of use that attempts to limit the abstract idea to a particular technological environment.
Each of the independent claims uses generic computer technology (such as a generic computing system or processor with their generic components) for receiving data (which is a form of data gathering), matching data (which is a form of mental function or generic computer functions), and a communication component (which is present in most communication systems for the transmission of data of a resulting processed data), as such do not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F .3 d 1299, 1314-1315 (Fed. Cir. 2016) ( finding claims not abstract because they "focused on a specific asserted improvement in computer animation").
Applicant’s representative then argues that under the Revised Step 2B Analysis, amended Independent claims 1, 8, and 15 recite an inventive concept by adding specific limitations that are not Well-Understood, Routine or Conventional Activity in the Field.
Applicant’s representative also states that the ordered combination of limitations of
amended claims 1, 8 and 15 add specific limitations that are improvements beyond what is well-understood, routine or conventional in the field.
In response, it is noted that the cited prior art as noted, comprises a computing system device for performing the claimed invention.
The reliance of a computer or computing system to perform its routine tasks even more accurately is not sufficient to transform a claim into patent eligible subject matter as noted in Alice 134 S. Ct. at 2359. As indicated by the court "use of a computer to create electronic records, track multiple transactions and issue simultaneous instructions" was not an inventive incept. The claims or even the applicant's specification does not support or provide or claim any specifically inventive technology or algorithm for performing the claimed functions.
As noted in the applicant’s specification, there is not a specific structure or computer components to perform the claimed functions. The generic computing system device can be any known server or computer processor or software or hardware components. However, there is not a specific or new algorithm noted in the applicant’s specification to generate the claimed functions. The claimed computing system noted in the applicant's specification is a generic computer processors or computers performing generic computer functions.
Furthermore, there is not a specific showing or description of receiving data, matching data, or transmitting information, and providing the data to a computing system to effect specific improvements to the computing system or processor. Furthermore there is a lacking of evidence that the claims improve the manner in which the computing system receives data, matches data and transmits data, as the claims in Enfish had performed their claimed invention via a “self-referential table” for a computer database. Applicant is being referred to Enfish, 822, F.3d at 1327, 1337.
The instant claims merely receive data or information, match data, transmit data, and provide the data to a computing system. These are routine and generic computer functions for processing or effecting the abstract idea. Hence, there is not a significant improvement of the computing system or mobile device or the architecture of the overall system.
The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, are merely the combined and coordinated execution of generic computer functionalities which are well-understood, routine and conventional activities previously known to the industry.
Accordingly, the applicant’s arguments are not persuasive.
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 1-6, 8-13, 15-19 and 21-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (ie., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Subject Matter Eligibility Standard
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., process, machine, manufacture, or composition of matter.
Specifically, claims 8 and 15 are directed to a method. Claim 1 is directed to a system. Each of the claims falls under one of the four statutory classes of invention.
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., law of nature, natural phenomenon, and abstract idea).
The claims recite the following abstract idea absent the bolded limitations:
Claim 1 as an example recites:
A system for a telematics data marketplace for a plurality of users, the system comprising one or more processors, a database, a communication component, a matching component, and a processing component, the one or more processors configured to perform operations comprising:
receiving, via the communication component, a plurality of requests from a plurality of providers wherein each request of the plurality of requests includes a respective data specification from a respective provider of the plurality of providers;
for each request of the plurality of requests, searching, by the matching component user data stored in the database associated with the plurality of users based on the respective data specification to a determine one or more respective matched users of the plurality of users for which the user data associated with the one or more respective matched users matches the respective data specification from the respective provider;
for a first user of the plurality of users, determining, via the matching component, a list of matched providers of the plurality of providers for which the first user is one of the one or more respective matched users that are matched to the respective data specification from each respective provider of the list of matched providers;
transmitting, via the communication component, for display on a user interface of a user device associated with the first user, a prompt to the first user, wherein the prompt includes the list of matched providers and indicates that the list of matched providers request requests access to first user data of the user data associated with the first user, wherein the prompt enables the first user to select which providers of the list of matched providers to allow or deny access to the first user data;
receiving, via the communication component, a response to the prompt from the first user, wherein the response indicates one or more allowed providers of the list of matched providers for which the first user allows access to the first user data;
in response to receiving the response indicating the first user allows access to the first user data for the one or more allowed providers, transmitting, via the communication component to the one or more allowed providers, a portion of the first user data that satisfied the respective data specification of the one or more allowed providers and
tracking, by the processing component, the portion of the first user data transmitted to the one or more allowed providers.
Claim 2 recites: the user data associated with the plurality of users comprises data collected by one or more sensors of a plurality of user devices associated with the plurality of users.
Claim 3 recites: wherein: the one or more sensors comprise one or more of a GPS sensor, an accelerometer, or a gyroscope.
Claim 4 recites: wherein the operations further comprise: providing the first user with a reward based on the response indicating the first user allows access to the first user data to the one or more allowed providers.
Claim 5 recites: wherein the reward is based on a purchase price associated with the respective data specification.
Claim 6 recites: wherein each request of the plurality of requests comprises the purchase price.
Claim 8 recites: A method for a telematics data marketplace for a plurality of users, the method comprising:
receiving, via a communication component, a plurality of requests from a plurality of providers, wherein each request of the plurality of requests includes a respective data specification from a respective provider of the plurality of providers;
for each request of the plurality of requests, searching, by a matching component, user data stored in a database associated with the plurality of users based on the respective data specification to determine one or more respective matched users of the plurality of users for which the user data associated with the one or more respective matched users matches the respective data specification from the respective provider;
for a first user of the plurality of users, determining, by the matching component, a list of matched providers of the plurality of providers for which the first user is one of the one or more respective matched users that are matched to the respective data specification from each respective provider of the list of matched providers;
transmitting, via the communication component, for display on a user interface of a user device associated with the first user, a prompt to the first user, wherein the prompt includes the list of matched providers and indicates that the list of matched providers request provider requests access to first user data of the user data associated with the first user, wherein the prompt enables the first user to select which providers of the list of matched providers to allow or deny access to the first user data;
receiving, via the communication component, a response to the prompt from the first user, wherein the response indicates one or more allowed providers of the list of matched providers for which the first user allows access to the first user data;
in response to receiving the response indicating the first user allows access to the first user data for the one or more allowed providers, transmitting, via the communication component, to the one or more allowed providers, a portion of the first user data that satisfied the respective data specification of the one or more allowed providers; and
tracking, by a processing component, the portion of the first user data transmitted to the one or more allowed providers.
Claim 9 recites: wherein: the user data associated with the plurality of users comprises data collected by one or more sensors of a plurality of user devices associated with the plurality of users.
Claim 10 recites: wherein: the one or more sensors comprise one or more of a GPS sensor, an accelerometer, or a gyroscope.
Claim 11 recites:
providing the first user with a reward based on the response indicating the first user allows access to the first user data to the one or more allowed providers.
Claim 12 recites: wherein the reward is based on a purchase price associated with the respective data specification.
Claim 13 recites: wherein each request of the plurality of requests comprises the purchase price.
Claim 15 recites: One or more non-transitory computer-readable media storing instructions for a telematics data marketplace for a plurality of users, the instructions, when executed by one or more processors, in communication with a database, a communication component, a matching component, and a processing component, cause the one or more processors to perform operations comprising:
receiving, via the communication component, a plurality of requests from a plurality of providers wherein each request of the plurality of requests includes a respective data specification from a respective provider of the plurality of providers;
for each request of the plurality of requests, searching, by the matching component, user data stored in the database associated with the plurality of users based on the respective data specification to determine one or more respective matched users of the plurality of users for which the user data associated with the one or more respective matched users matches the respective data specification from the respective provider;
for a first user of the plurality of users, determining, by the matching component, a list of matched providers of the plurality of providers for which the first user is one of the one or more respective matched users that are matched to the respective data specification from each respective provider of the list of matched providers;
transmitting, via the communication component, for display on a user interface of a user device associated with the first user, a prompt to the first user, wherein the prompt includes the list of matched providers and indicates that the list of matched providers request access to first user data of the user data associated with the first user, wherein the prompt enables the first user to select which providers of the list of matched providers to allow or deny access to the first user data;
receiving, via the communication component, a response to the prompt from the first user, wherein the response indicates one or more allowed providers of the list of matched providers for which the first user allows access to the first user data;
in response to receiving the response indicating the first user allows access to the first user data for the one or more allowed providers, transmitting, via the communication component to the one or more allowed providers, a portion of the first user data that satisfied the respective data specification of the one or more allowed providers; and
tracking, by the processing component, the portion of the first user data transmitted to the one or more allowed providers.
Claim 16 recites: wherein: the user data associated with the plurality of users comprises data collected by one or more sensors of a plurality of user devices associated with the plurality of users.
Claim 17 recites: wherein: the one or more sensors comprise one or more of a GPS sensor, an accelerometer, or a gyroscope.
Claim 18 recites: The one or more non-transitory computer-readable media of claim 15, wherein the operations further comprise: providing the first user with a reward based on the response indicating the first user allows access to the first user data to the one or more allowed providers.
Claim 19 recites: wherein: the reward is based on a purchase price associated with the respective data specification; and each request of the plurality of requests comprises the purchase price.
Claim 21 recites: wherein the operations further comprise: storing the user data in the database wherein the database is a secure database.
Claim 22 recites: wherein the operations further comprise: storing the user data in the database, wherein the database is a secure database.
Claim 23 recites: storing the user data in the database, wherein the database is a secure database.
Claims 8 and 15 recite a similar function containing in claim 1.
Claims 2, 9 and 16 merely recite collecting of sensed data which is a data gathering function used to perform the functions of claim 1.
Claims 3, 10 and 17 merely describe the type of sensor being used.
Claims 4 and 11 and 18 recite or describe a reward to provide to a user. This is not a structure or module being executed by a processor, nor a means or apparatus, nor a function. This is similar to an award being based on a business decision.
Claims 5, 12 and 19 merely describe the reward recited in claim 4 as such, this is a data descriptive.
Claims 6 and 13 merely describe performing a request of a purchase price as such is a data gathering function.
As per the independent claims 1, 8 and 15, the claimed “receiving” function is similar to a data gathering function. The claimed identifying function is a generic mental or computer function. The claimed prompt is similar to a user asking another entity a question or a generic computer prompting for a question or query or answer. The claimed “searching” function to determine a result is similar to a mental process or a function with minimal computer function.
The concept of the claims also falls into the category of functions of organizing human activities such as managing commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).
The independent claims 1 and 15 also recite “a processor”, a communication component, a matching component, database and a “user device”. In particular, the claimed “processor” and “user device” are recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using a generic component.
As data elements in the dependent claims, claims 2, 9 and 16 recite a “user device”, claims 3, 10 and 17 recite a sensor, an accelerometer and a gyroscope.
Step 2A, Prong Two: The judicial exception is not integrated into a practical application, In particular, the clams recite the above noted bolded limitations understood to be the additional limitations.
Performing steps by a processor or user device or sensor merely limits the abstraction to a computer field by execution by generic computers. See MPEP 2106.05.
As noted in MPEP 2106.04(d), limitations which amount to instructions to implement an abstract idea on a computer or merely using a computer as a tool, limitations which amount to
insignificant extra-solution activity, and limitations which amount to generally linking to a particular technological environment do not integrate a practical exception into a practical application.
Searching and determining data are similar to Alappat, which as noted in MPEP 2106. 05(b)(1) is superseded, and the correct analysis is to look whether the added elements integrate the exception into a practical application or provide significantly more than the judicial exception. The claims in the instant application are performed by one or more processors or user devices or sensors.
Consideration of these steps as a combination does not change the analysis as they do not add anything compared to when the steps are considered separately. The claims recite a particular sequence of functions of identifying users based on a search result, transmitting a prompt to the user.
Performance of these steps or functions technologically may present a meaningful limit to the scope of the claim does not reasonably integrate the abstraction into a practical application.
Step 2B: The elements discussed above with respect to the practical application in Step 2A, prong 2 are equally applicable to consideration of whether the claims amount to significantly more. Accordingly, the claims fail to recite additional elements which, when considered individually and in combination, amount to significantly more. Reconsideration of these elements identified as insignificant extra-solution activity as part of Step 2B does not change the analysis.
Independent claim 8 recites a user device as an additional element.
Accordingly, the additional elements of a communication component and a matching component in claims 1, 8 and 15 do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claimed “processor” or “user device” is also seen as generic computer components for receiving, searching , identifying and transmitting and prompting for data as the processor performs generic functions without an inventive concept as such does not amount to significantly more than the abstract idea. The claimed processor as a claimed element is interpreted as being recited at a high level of generality and even if the claims recited in the affirmative. The type of data being manipulated does not impose meaningful limitations or render the idea less abstract. Looking at the element as a combination does not add anything more than the elements analyzed individually.
Therefore, the claims do not amount to significantly more than the abstract idea itself. Applicant is reminded that a statutory claim would recite an automated machine implemented method or system with specific structures for performing the claimed invention so as to provide an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Each claim as a whole, does not amount to significantly more than the abstract idea itself. This is because each claim does not effect an improvement to another technology or technical field; the claim does not amount to an improvement to the functioning of a computer itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment.
The judicial exception is not integrated into a practical application. In particular, the claimed “communication component”, “matching component”, “processor”, “user devices” and “sensors” are recited at a high level of generality such they amount to no more than mere instructions to apply the exception using generic components. Accordingly, the 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.
Accordingly, claim 1 is directed to an abstract idea. The remaining independent claims are rejected based on a similar rationale applied to claim 1.
The dependent claim(s) when analyzed and each taken as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations) fail(s) to establish that the claim(s) is/are not directed to an abstract idea.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970);and, In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 remain rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,033,176. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-20 of the instant application are directed to a similar subject matter contained in claims 1-20 of the '176 patent. The only difference between the instant application and the '176 patent is merely a labeling difference. It is noted that all the features of claims 1-20 are contained in claims 1-20 of the '176 patent.
Claims 1-20 remain rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,341,525. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-20 of the instant application are directed to a similar subject matter contained in claims 1-17 of the '525 patent. The only difference between the instant application and the '525 patent is merely a labeling difference. It is noted that all the features of claims 1-20 are contained in claims 1-17 of the '525 patent.
Conclusion
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/FP/
/FRANTZY POINVIL/Primary Examiner, Art Unit 3693
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