DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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 Amendment
2. The Applicant filed Amendments on 12/18/2025. Claims 1, 3-8, 10-15, and 17-20 are pending and are rejected for the reasons set forth below.
Claim Rejections - 35 USC § 101
3. 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.
4. Claims 1, 3-8, 10-15, and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
5. Analysis:
Step 1: Statutory Category?: (is the claim(s) directed to a process, machine, manufacture or composition of matter?) - YES: In the instant case, claims 8, 10-14 are directed to a computer-implemented method (i.e., process), claims 1, 3-7 are directed to a computer device (i.e., machine), and claims 15, 17-20 are directed at least one non-transitory computer-readable storage medium (i.e., machine).
Regarding independent claim 1:
Step 2A - Prong 1: Judicial Exception Recited?: (is the claim(s) recited a judicial exception (an abstract idea enumerated in the 2019 PEG, a law of nature, or a natural phenomenon) – YES: Independent claim 1 recites the at least following limitations of “… … associated with a plurality of insurers, … : prior to starting a trip to be taken by a user of the vehicle… , generate a trip request message including trip information associated with the trip: receive, … , a plurality of digital bids in response to transmitting the trip request message …, each received digital bid associated with an insurer of the plurality of insurers and including information requested in the trip request message; transmit an approval of one of the plurality of digital … receive, …, a smart contract associated with the approved digital bid; store the smart contract in a first block in the blockchain structure, the blockchain structure … to periodically update the blockchain structure and the smart contract; and create a new block in the blockchain structure based upon updated information received …, the new block associated with the first block and the smart contract.” These recited limitations of the claim, as drafted, under its broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they cover performance of the limitations in fundamental economic principles or practices (including insurance) and/or commercial interactions (including agreements in the form of contracts) for generating and managing usage-based insurance contracts that allow a driver to pay for insurance as they need it. Accordingly, the claim recites an abstract idea.
Step 2A - Prong 2: Integrated into a Practical Application?: (is the claim(s) recited additional elements that integrate the exception into a practical application of the exception) - NO: This judicial exception is not integrated into a practical application. In particular, independent claim 1 further to the abstract idea includes additional elements of “a computer device”, “at least one memory device”, “at least one processor in communication with the blockchain structure” “at least one remote server belonging to an auction computer network including a plurality of computer nodes”, and “one or more sensors of the vehicle”. However, the additional elements recite generic computer components such as a computer, computing devices, a server, and/or software programing that are recited a high-level of generality that merely perform, conduct, carry out, implement, and/or narrow the abstract idea itself. Accordingly, the additional elements evaluated individually and in combination do not integrate the abstract idea into a practical application because they comprise or include limitations that are not indicative of integration into a practical application such as adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea -- See MPEP 2106.05(f). The claim is directed to an abstract idea.
2B: Claim provides an Inventive Concept?: (is the claim(s) recited additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception) - NO: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of “a computer device”, “at least one memory device”, “at least one processor in communication with the blockchain structure” “at least one remote server belonging to an auction computer network including a plurality of computer nodes”, and “one or more sensors of the vehicle” evaluated individually and in combination do not amount to more than a recitation of the words "apply it" (or an equivalent) or are not more than mere instructions to implement an abstract idea or other exception on a computer, or are not more than merely using a computer as a tool to perform an abstract idea. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more - See MPEP 2106.05(f)(2). None of the additional elements taken individually or when taken as an ordered combination amount to significantly more than the abstract idea. Accordingly, the claim is patent-ineligible.
Regarding independent claim 8:
Step 2A - Prong 1: Judicial Exception Recited?: (is the claim(s) recited a judicial exception (an abstract idea enumerated in the 2019 PEG, a law of nature, or a natural phenomenon) – YES: Independent claim 8 recites the at least following limitations of “… … storing smart contracts relating to vehicle trips within a blockchain structure, … prior to starting a trip to be taken by a user of the vehicle, generating a trip request message including trip information associated with the trip; receiving, …, a plurality of digital bids in response to transmitting the trip request message …, each received digital bid associated with an insurer of the plurality of insurers and including information requested in the trip request message; transmitting an approval of one of the plurality of digital bids …; receiving, …, a smart contract associated with the approved digital bid; storing the smart contract in a first block in the blockchain structureThese recited limitations of the claim, as drafted, under its broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they cover performance of the limitations in fundamental economic principles or practices (including insurance) and/or commercial interactions (including agreements in the form of contracts) for generating and managing usage-based insurance contracts that allow a driver to pay for insurance as they need it. Accordingly, the claim recites an abstract idea.
Step 2A - Prong 2: Integrated into a Practical Application?: (is the claim(s) recited additional elements that integrate the exception into a practical application of the exception) - NO: This judicial exception is not integrated into a practical application. In particular, independent claim 8 further to the abstract idea includes additional elements of “a computer device associated with a vehicle”, “at least one memory device”, “at least one processor in communication with the blockchain structure” “at least one remote server belonging to an auction computer network including a plurality of computer nodes”, and “one or more sensors of the vehicle”. However, the additional elements recite generic computer components such as a computer, computing devices, a server, and/or software programing that are recited a high-level of generality that merely perform, conduct, carry out, implement, and/or narrow the abstract idea itself. Accordingly, the additional elements evaluated individually and in combination do not integrate the abstract idea into a practical application because they comprise or include limitations that are not indicative of integration into a practical application such as adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea -- See MPEP 2106.05(f). The claim is directed to an abstract idea.
2B: Claim provides an Inventive Concept?: (is the claim(s) recited additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception) - NO: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of “a computer device associated with a vehicle”, “at least one memory device”, “at least one processor in communication with the blockchain structure” “at least one remote server belonging to an auction computer network including a plurality of computer nodes”, and “one or more sensors of the vehicle” evaluated individually and in combination do not amount to more than a recitation of the words "apply it" (or an equivalent) or are not more than mere instructions to implement an abstract idea or other exception on a computer, or are not more than merely using a computer as a tool to perform an abstract idea. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more - See MPEP 2106.05(f)(2). None of the additional elements taken individually or when taken as an ordered combination amount to significantly more than the abstract idea. Accordingly, the claim is patent-ineligible.
Regarding independent claim 15:
Step 2A - Prong 1: Judicial Exception Recited?: (is the claim(s) recited a judicial exception (an abstract idea enumerated in the 2019 PEG, a law of nature, or a natural phenomenon) – YES: Independent claim 15 recites the at least following limitations of “… … storing smart contracts relating to vehicle trips within a blockchain structure, … :prior to starting a trip to be taken by a user of the vehicle, generate a trip request message including trip information associated with the trip; receive, …, a plurality of digital bids in response to transmitting the trip request message … , each received digital bid associated with an insurer of the plurality of insurers and including information requested in the trip request message; transmit an approval of one of the plurality of digital bids … ; receive, …, a smart contract associated with digital bid ; store the smart contract in a first block in the blockchain structure, the blockchain structure … to periodically update the blockchain structure and the smart contract; and create a new block in the blockchain structure based upon updated information received …, the new block associated with the first block and the smart contract.” These recited limitations of the claim, as drafted, under its broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they cover performance of the limitations in fundamental economic principles or practices (including insurance) and/or commercial interactions (including agreements in the form of contracts) for generating and managing usage-based insurance contracts that allow a driver to pay for insurance as they need it. Accordingly, the claim recites an abstract idea.
Step 2A - Prong 2: Integrated into a Practical Application?: (is the claim(s) recited additional elements that integrate the exception into a practical application of the exception) - NO: This judicial exception is not integrated into a practical application. In particular, independent claim 15 further to the abstract idea includes additional elements of “at least one non-transitory computer-readable storage medium”, “at least one processor of a computer device”, “at least one memory device”, “at least one remote server belonging to an auction computer network including a plurality of computer nodes”, and “one or more sensors of the vehicle”. However, the additional elements recite generic computer components such as a computer, computing devices, a server, and/or software programing that are recited a high-level of generality that merely perform, conduct, carry out, implement, and/or narrow the abstract idea itself. Accordingly, the additional elements evaluated individually and in combination do not integrate the abstract idea into a practical application because they comprise or include limitations that are not indicative of integration into a practical application such as adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea -- See MPEP 2106.05(f). The claim is directed to an abstract idea.
2B: Claim provides an Inventive Concept?: (is the claim(s) recited additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception) - NO: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of “at least one non-transitory computer-readable storage medium”, “at least one processor of a computer device”, “at least one memory device”, “at least one remote server belonging to an auction computer network including a plurality of computer nodes”, and “one or more sensors of the vehicle” evaluated individually and in combination do not amount to more than a recitation of the words "apply it" (or an equivalent) or are not more than mere instructions to implement an abstract idea or other exception on a computer, or are not more than merely using a computer as a tool to perform an abstract idea. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more - See MPEP 2106.05(f)(2). None of the additional elements taken individually or when taken as an ordered combination amount to significantly more than the abstract idea. Accordingly, the claim is patent-ineligible.
Dependent claims 3-7, 10-14, and 17-20 have been given the full two-part analysis, analyzing the additional limitations both individually and in combination. The dependent claims, when analyzed individually and in combination, are also held to be patent-ineligible under 35 U.S.C. 101.
Dependent claims 3, 10, and 17: simply provide further definition to “the trip request message” recited in independent claims 1, 8, and 15. Simply stating that wherein the trip request message requests one or more bids for coverage of the trip do not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application, a play interface) that results in the claims being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Dependent claims 4, 11, and 18: simply provide further definition to “the at least one processor” recited in independent claims 1, 8, and 15. Simply stating that wherein the at least one processor is further configured to transmit the trip request message to the auction computer network amounts to no more than merely applying generic computer components and/or software programing to implement the abstract idea on a computer (i.e., the at least one processor, the auction computer network).Thus, the dependent claims do not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application) that results in the claims being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Dependent claims 5 and 12: simply provide further definition to “the at least one processor” recited in independent claims 1 and 8. Simply stating that wherein the at least one processor is further configured to receive, via an user interface of the computer device, the approval of the digital bid amounts to no more than merely applying generic computer components and/or software programing to implement the abstract idea on a computer (i.e., the at least one processor, an user interface of the computer device).Thus, the dependent claims do not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application) that results in the claims being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Dependent claims 6, 13, and 19: simply provide further definition to “the blockchain structure” recited in independent claims 1, 8, and 15. Simply stating that wherein the blockchain structure includes a plurality of blockchain nodes configured to store copies of the smart contract in the blockchain structure amounts to no more than merely applying generic computer components and/or software programing to implement the abstract idea on a computer (i.e., the blockchain structure).Thus, the dependent claims do not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application, a play interface) that results in the claims being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Dependent claims 7, 14, and 20: simply provide further definition to “the at least one processor” recited in independent claims 1, 8, and 15. Simply stating that wherein the at least one processor is further configured to transmit sensor information associated with the trip, wherein the sensor information is collected by one or more sensors, and wherein the sensor information includes data related to operation of the vehicle during the trip amounts to no more than merely applying generic computer components and/or software programing to implement the abstract idea on a computer (i.e., the at least one processor, one or more sensors associated with the vehicle).Thus, the dependent claims do not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application, a play interface) that results in the claims being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Double Patenting
6. 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. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); 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); 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) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
7. Claims 1, 3-8, 10-15, and 17-20 of the instant application are rejected on the ground of nonstatutory anticipated-type double patenting as being unpatentable over claims 1-20 of Patent No. 12,106,377.
Although claims 1, 3-8, 10-15, and 17-20 of the instant application and claims 1-20 of Patent No. 12,106,377 are not identical, they are not patentably distinct from each other because claims 1, 3-8, 10-15, and 17-20 of the instant application are anticipated by claims 1-20 of Patent No. 12,106,377.
Claims 1, 3-8, 10-15, and 17-20 of the instant application and claims 1-20 of Patent No. 12,106,377 recite a computer device, a computer-implemented method, and at least one non-transitory computer-readable storage medium for generating and managing a usage-based insurance contract in a blockchain structure.
For independent claims 1, 8, and 15 of the instant application: Independent claims 1, 8, and 15 of Patent No. 12,106,377 is a narrower version of independent claims 1, 8, and 15 of the instant application with additional allowed claim limitations of “the trip request message for requesting one or more bids for coverage of the trip; transmit the trip request message to an auction computer network including a plurality of computer devices associated with a plurality of insurers; receive, from a user based auto insurance management (UBAIM) server associated with the auction computer network, a smart contract associated with the bid; updated information received from the UBAIM server.” Therefore, claims 1, 8, and 15 of Patent No. 12,106,377 are in essence a “species” of the generic invention of the instant application independent claims 1, 8, and 15. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
For dependent claims 6, 13, and 19 of the instant application: Dependent claims 2, 9, and 16 of Patent No. 12,106,377 are the same version of dependent claims 6, 13, and 19 of the instant application.
For dependent claims 7, 14, and 20 of the instant application: Dependent claims 6, 13, and 20 of Patent No. 12,106,377 are the same version of dependent claims 7, 14, and 20 of the instant application.
Response to Applicant’s Arguments
8. 35 U.S.C. §101 Rejections: Applicant’s arguments with respect to amended claims 1, 3-8, 10-15, and 17-20 that are rejected under 35 U.S.C. 101 have been considered but they are not persuasive because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
1. Applicant’s Argument: A. Applicant's Claims Are Not Directed to an Abstract Idea, from Applicant Arguments/Remarks, Applicant respectfully disagrees and submits that the claims do not recite an abstract idea. In particular, the claims recite a computer device associated with a vehicle and including at least one processor that is in communication with a blockchain structure and at least one remote server belonging to an auction computer network including a plurality of computer nodes associated with a plurality of insurers, … create a new blockchain block based upon updated information received from the one or more sensors. Clearly, the above steps are rooted in computer network technology including a combination of computer resources (e.g., a computer device associated with a vehicle and including at least one memory device and at least one processor that is in communication with a blockchain structure and at least one remote server belonging to an auction computer network including a plurality of computer nodes associated with a plurality of insurers) and should not be construed as a certain method of organizing human activity … the claim limitations recite a unique combination of computer resources that enables the claimed system to generate custom trip request message and securely modify and update a blockchain structure based upon updated information received from one or more sensors of a vehicle having access to the blockchain structure, as stated above. For at least the reasons set forth above, Applicant respectfully submits that the pending claims are patent-eligible under the first prong of Step 2A (See Applicant Arguments/Remarks Pages 2-3).
In response to Applicant’s arguments, Examiner respectfully submits that the present claims for example independent claims 1, 8, and 15 recite limitations, as drafted, under its broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they cover performance of the limitations in fundamental economic principles or practices (including insurance) and/or commercial interactions (including agreements in the form of contracts) for generating and managing usage-based insurance contracts that allow a driver to pay for insurance as they need it. See details of Claim Rejections - 35 USC § 101 in the section above.
2. Applicant’s Argument: A. Applicant's Claims Are Not Directed to an Abstract Idea, from Applicant Arguments/Remarks, Applicant respectfully disagrees and submits that even assuming arguendo that the pending claims recite a judicial exception (which Applicant does not concede), the present claims are subject-matter eligible under the second prong. In the second prong, the Office evaluates whether a claim as a whole integrates the judicial exception into a practical application of the exception … The claimed system addresses the technical problems identified in Applicant's by implementing a computer device associated with a vehicle and including at least one processor that is in communication with a blockchain structure and at least one remote server belonging to an auction computer network including a plurality of computer nodes associated with a plurality of insurers … create a new blockchain block based upon updated information received from the one or more sensors … Accordingly, in this case, "the specification sets forth an improvement in technology ... the claim includes the components or steps of the invention that provide the improvement described in the specification," which is sufficient to establish a practical application. See MPEP § 2104.04(d)(1). Accordingly, the present claims are eligible under the second prong of Step 2A. In summary, the claims at issue here are not "directed to" a judicial exception. Accordingly, the Section 101 rejection should be withdrawn because the pending claims are not directed to an abstract idea (See Applicant Arguments/Remarks Pages 3-5).
In response to Applicant’s arguments, Examiner respectfully submits that the present claims for example independent claims 1, 8, and 15 further to the abstract idea includes additional elements of “a computer device”, “at least one memory device”, “at least one processor in communication with the blockchain structure” “at least one remote server belonging to an auction computer network including a plurality of computer nodes”, and “one or more sensors of the vehicle”. However, the additional elements recite generic computer components such as a computer, computing devices, a server, and/or software programing that are recited a high-level of generality that merely perform, conduct, carry out, implement, and/or narrow the abstract idea itself. Accordingly, the additional elements evaluated individually and in combination do not integrate the abstract idea into a practical application because they comprise or include limitations that are not indicative of integration into a practical application such as adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea -- See MPEP 2106.05(f). See details of Claim Rejections - 35 USC § 101 in the section above.
3. Applicant’s Argument: B. Applicant's Claims Are Directed to "Significantly More" Than the Abstract Idea, from Applicant Arguments/Remarks, Applicant respectfully disagrees and submits that even assuming for the sake of argument that the pending claims are directed to an abstract idea (which Applicant does not concede), the claims are directed to something "significantly more" than the idea itself … In the instant Application, the pending claims clearly recite more than well-understood, routine, or conventional activities at least with respect to addressing the technical deficiencies in monitoring and data-processing architectures of conventional computer systems deployed in usage-based insurance (UBI) environments. Specifically, the claimed system implements a computer device associated with a vehicle and including at least one processor that is in communication with a blockchain structure and at least one remote server belonging to an auction computer network including a plurality of computer nodes associated with a plurality of insurers … create a new blockchain block based upon updated information received from the one or more sensors. Notably, the claimed combination of processor-implemented operations, distributed network communications, and blockchain-based data structures operates in a non-conventional and non-generic manner to perform real-time monitoring and data processing of vehicle usage information, thereby overcoming the technical limitations of prior UBI computer systems. The fact that the pending claims overcome the prior art, as discussed in the Section 102 traversal below, strengthens the conclusion that these recited limitations are not well understood, routine, and conventional. In summary, at a minimum, Applicant respectfully submits that the Section 101 rejection should be withdrawn because the claimed invention recites significantly more than the alleged abstract idea. Accordingly, for these additional reasons, Applicant respectfully requests that the Section 101 rejection of the pending claims be withdrawn (See Applicant Arguments/Remarks Pages 5-6).
In response to Applicant’s arguments, Examiner respectfully submits that the present claims for example independent claims 1, 8, and 15 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of “a computer device”, “at least one memory device”, “at least one processor in communication with the blockchain structure” “at least one remote server belonging to an auction computer network including a plurality of computer nodes”, and “one or more sensors of the vehicle” evaluated individually and in combination do not amount to more than a recitation of the words "apply it" (or an equivalent) or are not more than mere instructions to implement an abstract idea or other exception on a computer, or are not more than merely using a computer as a tool to perform an abstract idea. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more - See MPEP 2106.05(f)(2). None of the additional elements taken individually or when taken as an ordered combination amount to significantly more than the abstract idea. See details of Claim Rejections - 35 USC § 101 in the section above.
9. 35 U.S.C. §102 Rejections: Applicant’s arguments with respect to amended 1, 3-8, 10-15, and 17-20 that are rejected under 35 U.S.C. 102(a)(2) as being anticipated by NAGLA et al. (U.S. Pub. No. 2018/0018723), hereinafter, “NAGLA”, have been considered and they are persuasive (See Applicant Arguments/Remarks Pages 7-8).
Examiner notes that the amended limitations “prior to starting a trip to be taken by a user of the vehicle, generate a trip request message including trip information associated with the trip: receive, from the at least one remote server, a plurality of digital bids in response to transmitting the trip request message to the at least one remote server, each received digital bid associated with an insurer of the plurality of insurers and including information requested in the trip request message; store the smart contract in a first block in the blockchain structur, the blockchain structure being in communication with one or more sensors of the vehicle to periodically update the blockchain structure and the smart contract and create a new block in the blockchain structure based upon updated information received from the one or more sensors, the new block associated with the first block and the smart contract” of amended independent claims 1, 8, and 15 are deemed not to be found in the prior art and updated search. Therefore, the Examiner hereby withdraws the 35 U.S.C. §102 Rejections of these claims and their respective dependent claims.
10. Double Patenting: Applicant submits that the rejection of Claims 1-20 under the judicially created doctrine of obviousness-type double patenting as being unpatentable over Claims 1-20 of U.S. Patent No. 12,106,377 is respectfully traversed. Applicant will consider filing a terminal disclaimer to obviate the rejection when it is the last remaining rejection in the Application and the presently pending claims have been indicated as allowable, but for the rejection (See Applicant Arguments/Remarks Page 1).
Examiner hereby maintains the Double Patenting Rejections of amended claims 1, 3-8, 10-15, and 17-20 because the amended claims 1, 3-8, 10-15, and 17-20 did not overcome the Double Patenting Rejections. See details of Double Patenting Rejections of claims 1, 3-8, 10-15, and 17-20 in the section above.
Relevant Prior Art
11. The prior art made of record and not relied upon are considered pertinent to applicant's disclosure:
McClellan et al. (U.S. Pub. No. 2009/0024419) teach system and method for categorizing driving behavior using driver mentoring and/or monitoring equipment to determine an underwriting risk.
Collopy et al. (U.S. Pub. No. 2010/0131305) teach insurance visibility.
Christidis et al. (U.S. Pub. No. 2018/0096360) teach method and apparatus to enforce smart contract execution hierarchy on blockchain.
Conclusion
12. 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 extension fee 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 date of this final action.
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Liz Nguyen whose telephone number is (571) 272-5414. The examiner can normally be reached on Monday to Friday 8:00 A.M to 5:00 P.M.
14. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart, can be reached on (571) 272-3955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
15. Information regarding the status of an application may be obtained from the Patent Center system (visit: https://patentcenter.uspto.gov). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call (800) 786-9199 (USA or CANADA) or (571) 272-1000.
/LIZ P NGUYEN/
Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
Prosecution Insights