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 .
DETAILED ACTION
The Office acknowledges the receipt of Applicant’s restriction election, filed December 23, 2025. Applicant elects Group I, claims 1-19, without traverse. Claims 1-19 are pending. Claim 20 is nonelected. Claims 1-19 are examined in the instant application. This restriction is made FINAL.
Specification
Applicant is required to update the status (pending, allowed, etc.) of all parent priority applications in the first line of the specification. The status of all citations of US filed applications in the specification should also be updated where appropriate.
Information Disclosure Statement
An initialed and dated copy of Applicant’s IDS form 1449 filed August 14, 2024, is attached to the instant Office action.
Claim Rejections - 35 USC § 101 Utility
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 7-19 are rejected under 35 U.S.C. 101. Based upon consideration of all of the relevant factors with respect to the claim as a whole, these claims are held to claim an abstract idea, and is/are therefore rejected as ineligible subject matter under 35 U.S.C. 101. In light of the recent Supreme Court decision in Bilski v. Kappos, 561 U.S. ___ (2010), the Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos provides factors to consider in determining whether a claim is directed to an abstract idea and is therefore not patent-eligible under 35 U.S.C. 101. Factors weighing toward eligibility include:
Recitation of a machine or transformation (either express or inherent).
The claim is directed toward applying a law of nature.
The claim is more than a mere statement of concept.
Factors weighing against eligibility include:
No recitation of a machine or transformation (either express or inherent).
Insufficient recitation of a machine or transformation.
The claim is not directed to an application of a law of nature.
The claim is a mere statement of a general concept.
An example of a method claim that would not qualify as a statutory process would be a claim that recited purely mental steps. Thus, to qualify as a § 101 statutory process, the claim could positively recite the other statutory class (the thing or product) to which it is tied, for example by identifying the apparatus that accomplishes the method steps, or positively recite the subject matter that is being transformed, for example by identifying the material that is being changed to a different state. Furthermore, the use of a particular machine or transformation of a particular article must involve more than insignificant extra-solution activity.
In light of the factors in the Supreme Court decision, Applicant’s method steps do not meet the requirements of 35 U.S.C. 101. There is no recitation of a processor or memory that is implementing the computer-implemented method. (Examiner’s Note the processor from claim 1 could fix this particular 101 rejection.) The dependent claims were also reviewed and none of them provided any structural elements to change the analysis.
Claims 1–19 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.
In sum, claims 1–19 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception to patentability (i.e., a law of nature, a natural phenomenon, or an abstract idea) and do not include an inventive concept that is something “significantly more” than the judicial exception under the January 2019 patentable subject matter eligibility guidance (2019 PEG) analysis which follows.
Under the 2019 PEG step 1 analysis, it must first be determined whether the claims are directed to one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of matter). Applying step 1 of the analysis for patentable subject matter to the claims, it is determined that the claims are directed to the statutory category of a process (claims 7-19) and a manufacture (claims 1-6), where the manufacture is substantially directed to the subject matter of the process. (See, e.g., MPEP §2106.03). Therefore, we proceed to step 2A, Prong 1.
Under the 2019 PEG step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more designated categories of patent ineligible subject matter (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability. Here, the claims recite the abstract idea of allocating a payment:
in association with a first term:
allocating, in cryptocurrency to a first premiums escrow, a respective first premium payment from each of a first plurality of policyholders of a first group, each respective first premium payment being a respective first amount according to a fixed coverage requirement for approved incident claims and a quantity of the first plurality of policyholders;
receiving a notification of a first approved incident claim associated with a first claimant of the first plurality of policyholders;
receiving payment instructions from the first plurality of policyholders, each payment instruction being digitally signed by an associated policyholder and being an authorization to pay an incident claim payment for the first approved incident claim using the respective first premium payment of the associated policyholder or being a defection request requesting a refund of the respective first premium payment of the associated policyholder;
paying, using cryptocurrency from the first premiums escrow and to a cryptocurrency payment address associated with the first claimant, the first claimant a first incident claim payment according to the fixed coverage requirement, the payment instructions, the quantity of the first plurality of policyholders, and a total amount of funds allocated to the first premiums escrow;
distributing to each non-defecting policyholder a respective rebate payment from the first premiums escrow;
storing a record of the incident claim in a publicly-available, non-repudiable distributed ledger; and
in association with a second term after the first term, allocating, in cryptocurrency to a second premiums escrow, a respective second premium payment from each policyholder of the non-defecting policyholders, each respective second premium payment being greater than the respective first premium payment according to at least one payment instruction being a defection request and the fixed coverage requirement.
Here, the recited abstract idea falls within one or more of the three enumerated 2019 PEG categories of patent ineligible subject matter, to wit: the category of certain methods of organizing human activity, which includes fundamental economic practices or principles and commercial or legal interactions (e.g., allocating a payment is a commercial or legal interaction).
Under the 2019 PEG step 2A, Prong 2 analysis, the identified abstract idea to which the claim is directed does not include limitations that integrate the abstract idea into a practical application, since the recited features of the abstract idea are being applied on a computer or computing device or via software programming that is simply being used as a tool (“apply it”) to implement the abstract idea. (See, e.g., MPEP §2106.05(f)). Data gathering and data storage would be considered insignificant extra-solution activity. (See, e.g., MPEP §2106.05 (g)). Therefore, the claim is directed to an abstract idea.
Under the 2019 PEG step 2B analysis, the additional elements are evaluated to determine whether they amount to something “significantly more” than the recited abstract idea. (i.e., an innovative concept). Here, the additional elements, such as: a “storing a record of the incident claim in a publicly-available, non-repudiable distributed ledger” do not amount to an innovative concept since, as stated above in the step 2A, Prong 2 analysis, the claims are simply using the additional elements as a tool to carry out the abstract idea (i.e., “apply it”) on a computer or computing device and/or via software programming. (See, e.g., MPEP §2106.05(f) or MPEP §2106.05 (g)). The additional elements are specified at a high level of generality to simply implement the abstract idea and are not themselves being technologically improved. (See, e.g., MPEP §2106.05 I.A.); Independent claim 1 is nearly identical to independent claim 7 and so the analysis for claim 7 also applies to claim 1.
Dependent claims 2–6 and 8-19 have all been considered and do not integrate the abstract idea into a practical application. Dependent claims 2 and 8 are substantially similar and recite limitations that further define the abstract idea noted in claim 7 as they describe what to for payment instruction comprising a defection request all of which were payments which are commercial or legal interactions. Dependent claims 3 and 9 are substantially similar and recite limitations that further define the abstract idea noted in claim 7 as they describe subgroups of policy holders to allocate payments which are commercial or legal interactions. Dependent claims 4 and 10 are substantially similarly and both recite limitations that further define the abstract idea noted in claim 7 as they describe further details of payments to be allocated in response to a defecting policyholder which are commercial or legal interactions. Dependent claims 5 and 11 are substantially similar and both recite limitations that further define the abstract idea noted in claim 7 as they describe what kind of payments to make in the event there were no defecting policyholders which are commercial or legal interactions. Dependent claims 6 and 15 are substantially similarly and both recite limitations that further define the abstract idea noted in claim 7 as they describe using digital signatures to confirm that the payment source is authorized this is arguably data gathering. (See at least MPEP §2106.05 (g)) This is the type of generic component being used to carry out the abstract idea noted in claim 7. Dependent claim 12 recites limitations that further define the abstract idea in claim 7 the first subgroup comprises 4 to 7 policyholders. Dependent claim 13 recites limitation that further define premium allocations which are commercial or legal interactions. Dependent claim 14 recites limitations that further define the abstract idea in claim 7 by using a token to make the payment for the first claimant. This is the type of generic component being used to carry out the abstract idea noted in claim 7. Dependent 16 recites limitations that further define the payments where are commercial or legal interactions. Dependent claim 17 recites limitations that further define the abstract idea in claim 7 the first group comprises are least 50 policy holders; and the first term is thirty-six days. Dependent claim 18 recites limitations that further define the abstract idea in claim 7 by defining the first incident claim as a sexual harassment claim, a police brutality claim, or a worker’s compensation claim. Depend claim 19 recites limitations that further define the abstract idea in claim 19 by defining the first and second premium escrow as the same.
The additional elements of the dependent claims merely refine and further limit the abstract idea of the independent claims and do not add any feature that is an “inventive concept” which cures the deficiencies of their respective parent claim under the 2019 PEG analysis. None of the dependent claims considered individually, including their respective limitations, include an “inventive concept” of some additional element or combination of elements sufficient to ensure that the claims in practice amount to something “significantly more” than patent-ineligible subject matter to which the claims are directed.
The elements of the instant process steps when taken in combination do not offer substantially more than the sum of the functions of the elements when each is taken alone. The claims as a whole, do not amount to significantly more than the abstract idea itself because the claims do not effect an improvement to another technology or technical field (e.g., the field of computer coding technology is not being improved); the claims do not amount to an improvement to the functioning of an electronic device itself which implements the abstract idea (e.g., the general purpose computer and/or the computer system which implements the process are not made more efficient or technologically improved); the claims do not perform a transformation or reduction of a particular article to a different state or thing (i.e., the claims do not use the abstract idea in the claimed process to bring about a physical change. See, e.g., Diamond v. Diehr, 450 U.S. 175 (1981), where a physical change, and thus patentability, was imparted by the claimed process; contrast, Parker v. Flook, 437 U.S. 584 (1978), where a physical change, and thus patentability, was not imparted by the claimed process); and the claims do not move beyond a general link of the use of the abstract idea to a particular technological environment (e.g., simply claiming the use of a computer and/or computer system to implement the abstract idea).
Prior Art Not Relied Upon
Floyd U.S. 11,416,944 Teaches a blockchain based social insurance system but did not appear to teach policyholders being able to defect and how to deal with that eventuality.
Davis et al. (USPG 2016/0335,533 A1) discloses a system and various methods for providing an autonomous entity for performing various tasks using smart contracts to implement the tasks, including receiving premiums for insurance and payouts associated therewith controlled by the smart contracts, and including use of cryptocurrency as a financial resource.
Wright et al. (USPG 2020/0005,254 A1) discloses a blockchain implemented system and various methods of using the same, including controlling deposits of cryptocurrency to a common address and payments to a distributed ledger, including allowing for refunds after a specified time has transpired.
Conclusion
Any inquiry concerning this communication from the examiner should be directed to Scott S. Trotter, whose telephone number is 571-272-7366. The examiner can normally be reached on 8:30 AM – 5:00 PM, M-F.
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/SCOTT S TROTTER/Primary Examiner, Art Unit 3696