DETAILED ACTION
1. 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 .
2. Status of Application and Claims
Claims 1, 3, 5-8, 10-16, 18 and 20-25 are pending.
Claims 1, 3, 8, 10, 15, 16 and 20-25 were amended and/or newly added in the Applicant’s filing(s) on 6/22/2026.
Claims 2, 4, 9, 17 and 19 were cancelled in the Applicant’s filing(s) on 6/22/2026.
This office action is being issued in response to the Applicant's filing(s) on 6/22/2026.
3. Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit its scope when given their broadest reasonable interpretation. see MPEP §2013(I)(C). Specifically, the “broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See MPEP §2111, citing In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984).
As a general matter, grammar and the plain meaning of terms, as understood by one having ordinary skill in the art, used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP §2013(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. See MPEP §2013(I)(C).
As such, claim limitations that contain statement(s) such as “if,” “may,” “might,” “can,” and “could” are treated as containing optional language. See MPEP §2013(I)(C). As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. See MPEP §2013(I)(C).
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. See MPEP §2111.04(II). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternative interpretation is that the claim limitations based upon the condition are not triggered or performed.
In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See MPEP §2143.03, citing Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009).
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble. See MPEP §2111.02;
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby.” See MPEP §2111.04;
Contingent limitations. See MPEP §2111.04(II);
Printed matter. See MPEP §2111.05; and
Functional language associated with a claim term. See MPEP §2181.
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized, underlined and/or boldened language is interpreted as not further limiting the scope of the claimed invention.
Additionally, the following italicized, underlined and emboldened language is not necessarily an exhaustive list of claim language that is interpreted as not further limiting the scope of the claimed invention. The Applicant should review all claims for additional claim interpretation issues.
Claim 8 recites a system to perform operations comprising:
monitoring, using one or more processors and one or more computer-readable storage media having instructions stored thereon executable by the one or more processors, context information associated with a user having a protection service plan that (a) protects an asset of the user and (b) is structured based on the asset being in a first service region;
Method claims are defined by the method steps being actively performed (i.e., monitoring context data). However, the claim, as written, does not define the context data.
The claim recites that the context data is associated with (i.e., related to) a user. The claim then defines the user (i.e., a user having a protection service plan). And then the claim defines the protection service plan (i.e., a plan that protects an asset of the user and is structured based on the asset being in a first service region).
But this is not defining the context data itself.
Claims 1 and 16 have similar issues due to similar language.
Claim 12 recites a method wherein the protection service plan includes a plurality of services for a plurality of assets in a plurality of service regions having one or more of different service requirements, different service availabilities, or different recommended services associated with the asset.
Claim elements (i.e., contents or provisions of the protection service plan) pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claim 21 has similar issues regarding the existence of a threshold established for the first service region. The claim is not establishing the threshold nor utilizing the threshold. The claim merely recites that a threshold (i.e., a data element) exists.
Claim 13 recites a method wherein the protection service plan is linked to the user within a database using a user index code that is not associated with a physical address.
Method claims are defined by the method steps being actively performed, not method steps performed in the past (i.e., linked to the user). Claiming method steps in the past tense can be interpreted as the method steps performed in the past are outside the scope of the claimed method. Alternatively stated, the scope of the claimed method are the active method steps which are building off a pre-existing state. The method steps performed for creation of the pre-existing state are outside the scope of the claimed invention.
Claim 14 has similar issues pertaining to “data pulled from” a device.
Claim 23 recites a system wherein the location information is captured by one or more sensors integrated into the asset, and wherein the context information is monitored on a continuous or periodic basis without manual input from the user device.
Claim 1 is for a protection service management computer system that monitors context information. The claims, as written, do not recite that the sensor(s) are a component element of the protection service management computer system. They may be a source of the context information received by the protection service management computer system but the sensor(s), themselves, are not a component element of the claimed system.
As such, the functions performed by the sensor(s) (i.e., capturing location information) and their integration into the asset are outside the scope of the claimed system, the computer system receiving the context information.
Claim 6 recites a system wherein the prompt further includes an estimated cost of the modification.
Claim elements (i.e., contents of the prompts) pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claim 18, due to similar claim language, results in a similar claim interpretation.
Claim 21 has similar issues regarding the existence of a threshold established for the first service region. The claim is not establishing the threshold nor utilizing the threshold. The claim merely recites that a threshold (i.e., a data element) exists.
Claim 22 has similar issues regarding the contents of the notification.
4. 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, 3, 5-8, 10-16, 18 and 20-25 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
STEP 2A – PRONG ONE
The claim(s) recite(s) a method, a system to perform a method and/or computer-readable medium containing instructions, when executed, causes a computer to perform a method comprising:
monitoring, …, context information associated with a user having a protection service plan that (a) protects an asset of the user and (b) is structured based on the asset being in a first service region;
determining, …, based at least on location information included in the context information, that the asset has been located in a second service region different than the first service region for an amount of time that exceeds a threshold established for the second service region;
… detecting, …, a change in the context information based at least on determining that the asset has been located in the second service region for the amount of time that exceeds the threshold;
determining, …, a proposed modification of the protection service plan of the user in response to detecting the change in the context information;
providing, …, a prompt to a user … in response to determining the proposed modification, the prompt indicating the proposed modification of the protection service plan and requesting approval;
receiving, …, from the user …, an indication of the approval of the proposed modification; and
initiating, …, the proposed modification in response to receiving the indication of the approval from the user ….
These limitations, as drafted, under their broadest reasonable interpretation, cover a series of steps instructing how to monitor an asset and modify insurance for said asset which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Additionally, these limitations, as drafted, under its broadest reasonable interpretation, cover a series of steps instructing how to modify a protection service plan (e.g., an insurance policy) which qualifies as a commercial or legal interaction, a subcategory of certain methods of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(B).
Examiner notes that “processing an application for financing a loan” is a court-provided example of a commercial or legal interaction. see MPEP §2106.04(a)(2)(II)(B) citing Credit Acceptance v. Westlake Services (Fed. Cir. 2017) and Dealertrack v. Huber (Fed. Cir. 2021). Examiner asserts that processing paperwork for a protection service plan (e.g., an insurance policy) is analogous to processing paperwork for a loan.
Examiner also notes that “processing insurance claims for a covered loss or policy event under an insurance policy” is a court-provided example of a commercial or legal interaction. see MPEP §2106.04(a)(2)(II)(B) citing Accenture Global Services v. Guidewire Software, Inc. (Fed. Cir. 2013). Examiner asserts that processing a proposed modification for a protection service plan (e.g., an insurance policy) is analogous to processing paperwork for a proposed claim under said protection service plan.
Additionally, these limitations, as drafted, under their broadest interpretation, cover a series of steps that can be practically performed in the human mind (e.g., observations, evaluations, judgments and opinions) which is a mental process, a second enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(III).
Examiner notes that “’collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind” is a court-provided example of a mental process. See MPEP §2106.04(a)(2)(III)(A) citing Electric Power Group v. Alstom, SA. (Fed. Cir. 2016).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of memory device(s) (Claim(s) 1), processor(s) (Claim(s) 1), a user device (Claim(s) 1, 8 and 16), a computer-readable medium (Claim(s) 16) and performing functions/method steps automatically (Claim(s) 1, 8 and 16).
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are recited at a high level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. See MPEP §2106.05(f). Alternately, the additional elements amount to no more than generally linking the exception to a particular technological environment or field of use. See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed toward an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. See MPEP §2106.07(a)(II). The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
DEPENDENT CLAIMS
Dependent Claim(s) 3, 5-7, 10-15, 18, and 20-25 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 1, 8 and 16. As such, the dependent claims are also grouped as an abstract idea utilizing the same rationale as previously asserted against the independent claims.
Dependent Claim(s) recite additional elements (i.e., computer elements) of a device that provides telematics information (Claim(s) 7), a database (Claim(s) 13), a device that provides GPS data (Claim(s) 14), sensor(s) (Claim(s) 23), a communication network (Claim(s) 24), a communications interface (Claim(s) 24), transceivers (Claim(s) 24), and electrical signal(s) (Claim(s) 24).
In each case, the additional element(s) are recited at a high level of generality such that these additional element(s) amount to no more than mere instructions to apply the exception using a generic computer component.
The dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination utilizing the same rationale as previously asserted against the independent claims.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
5. Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 3, 5-8, 10-12, 14, 16, 20, 21 and 23-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hunt (US Patent 10,387,965).
Regarding Claim 8, Hunt discloses a method for performing dynamic context-based service plan modifications, the computer-implemented method comprising:
monitoring, using one or more processors and one or more computer-readable storage media having instructions stored thereon executable by the one or more processors, context information (vehicle’s location) associated with a user having a protection service plan (insurance policy) that (a) protects an asset (vehicle) of the user and (b) is structured based on the asset being in a first service region (first rating area). (see abstract);
determining, using the one or more processors, based at least on location information (vehicle’s location) included in the context information, that the asset has been located in a second service region (second rating area) different than the first service region (first rating area) for an amount of time that exceeds a threshold (threshold period of time or amount of time) established for the second service region (second rating area). (see abstract; col. 7, line 57 - col. 8, line 14; Claims 3, 9 and 17);
automatically detecting, using the one or more processors, a change in the context information (vehicle’s location) based at least on determining that the asset (vehicle) has been located in the second service region (second rating area) for the amount of time that exceeds the threshold (threshold period of time or amount of time). (see abstract; col. 7, line 57 - col. 8, line 14; Claims 3, 9 and 17);
determining, using the one or more processors, a proposed modification (revision) of the protection service plan of the user in response to detecting the change in the context information (vehicle’s location). (see col. 2, line 43 – col. 3, line 3);
providing, using the one or more processors, a prompt to a user in response to determining the proposed modification (revision), the prompt indicating the proposed modification of the protection service plan and requesting approval. (see col. 2, line 43 – col. 3, line 3);
receiving, using the one or more processors, an indication of the approval of the proposed modification. (see col. 2, line 43 – col. 3, line 3); and
initiating, using the one or more processors, the proposed modification in response to receiving the indication of the approval from the user. (see col. 2, line 43 – col. 3, line 3).
Hunt does not explicitly teach a method wherein the method provides a prompt to or receives a response from a user device, although Hunt does disclose communication with the system via a user device (computing device). (see col. 7, lines 5 – 27).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hunt to communicate with a user via a user device, as disclosed by Hunt, thereby utilizing a standard and conventional means by which to communicate with the user.
Regarding Claim 10, Hunt discloses a method wherein determining the proposed modification of the protection service plan includes determining at least one of a required service (repair costs), an optional service, or a recommended service for the asset based upon the location information (rating area). (See Claims 7 and 13).
Regarding Claim 11, Hunt discloses a method wherein the asset is one of a vehicle, a property or a business. (see abstract).
Regarding Claim 12, Hunt discloses a method wherein the protection service plan includes a plurality of services for a plurality of assets (automobiles, motorcycles, aircraft, and watercraft) in a plurality of service regions (rating areas) having one or more different service requirements (repair costs), different service availabilities or different recommended services associated with the asset. (see col. 6, lines 44-63; Claim 7 and 13)
Regarding Claim 14, Hunt discloses a method wherein the location information is one of global positioning system (GPS) data pulled from at least one of the user device of the user or another device associated with the asset or a received user input indicating one or more of a previous location, a current location, or a future location of the asset. (see col. 7, lines 5-27).
Regarding Claim 1 and 3, such claim(s) recite substantially similar limitations as claimed in previously rejected claim(s) and, therefore, would have been obvious based upon previously rejected claim(s).
Regarding Claim 5, Hunt discloses a system wherein initiating the modification of the protection service plan includes adding or removing at least one of a required service, an optional service, or a recommended service (adding a new policy) for the asset to or from the protection service plan. (see col. 8, lines 15-41).
Regarding Claim 6, Hunt discloses a system wherein the prompt further includes an estimated cost (new premium) of the modification. (see col. 8, lines 15-41).
Regarding Claims 7, 16 and 20, such claim(s) recite substantially similar limitations as claimed in previously rejected claim(s) and, therefore, would have been obvious based upon previously rejected claim(s).
Regarding Claim 21, Hunt does not explicitly teach a system wherein the threshold established for the second service region is different than a threshold established for the first service region.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Hunt by duplicating claim elements contained in Hunt (e.g., the first threshold for the first service region) to create additional claim elements (e.g., a second threshold for a second service region) wherein each additional claim element would serve the same function as the original claim element. In the combination each element, original element and additional element, would merely have performed the same function as it did previously, and one of ordinary skill in the art at the effective filing date of the invention would have recognized that the results of the combination were predictable. see MPEP §2144.04 (VI)(B).
Regarding Claims 23-25, such claim(s) recite substantially similar limitations as claimed in previously rejected claim(s) and, therefore, would have been obvious based upon previously rejected claim(s).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hunt, as applied to Claim 8 above, and further in view of Bayer (US Patent 9,697,544).
Regarding Claim 13, Hunt does not teach a method wherein the protection service plan is linked to the user within a database using a user index code that is not associated with a physical address.
Bayer discloses a method wherein the protection service plan (insurance information) is linked to the user within a database using a user index code that is not associated with a physical address (but with the vehicle identification number). (see col. 6, lines 22-39; col. 16, lines 46-52;
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hunt to incorporate a database wherein data is not indexed to a physical address, as disclosed by Bayer, thereby indexing the protection service plan pertaining to an asset to the asset itself.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hunt, as applied to Claim 8 above, and further in view of Healey (US Patent 9,830,665).
Regarding Claim 15, Hunt does not teach a method comprising receiving, using the one or more processors, a service cost estimate request including a planned location of the asset and a planned amount of time for the asset to be in the planned location; determining, using the one or more processors, one or more of a required service or a recommended service for the asset based upon the planned location and the planned amount of time; and determining, using the one or more processors a cost of the one or more of the required service or the recommended service; and provide the cost to the user.
Healey discloses a method comprising:
receiving, using the one or more processors, a service cost estimate request including a planned location (destination location, or route connecting a current location and a destination location) of the asset and a planned amount of time (prescribed time period or travel time) for the asset to be in the planned location. (see col. 8, lines 7-25 and col. 10, lines 29-42);
determining, using the one or more processors, one or more of a required service or a recommended service (insurance coverage) for the asset based upon the planned location (coverage zone) and the planned amount of time (predetermined time period). (see col. 16, lines 50-53); and
determining, using the one or more processors, a cost of the one or more of the required service or the recommended service. (see fig. 3 and 4; col. 9, line 7 – col. 10, line 43); and
provide the cost to the user. (see fig. 3 and 4; col. 9, line 7 – col. 10, line 43).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hunt to incorporate an ability to plan for a change in location of an asset in advance, as disclosed by Healey, thereby enabling a user to anticipate and/or plan for any future changes in the location of an asset prior to actual an actual change in location of the asset.
6. Response to Arguments
Applicants’ arguments with respect to the pending claims have been considered. Some arguments have been rendered moot based upon new references utilized in the current rejection. However, some arguments remain relevant, as they apply to a reference and/or rejection still utilized in the current rejection. Such arguments have been fully considered but are not persuasive and are addressed below.
§101 Rejection
Step 2A Prong One
Applicant argues that the claimed invention does not recite a judicial exception and, as such, satisfies Step 2A Prong One of the §101 Guidelines. See Arguments, pp. 11-14.
Specifically, Applicant argues:
For instance, amended claim 1 recites a protection service management computer system that, among other operations, "monitor[s] context information," "determin[es], based at least on location information included in the context information, that the asset has been located in a second service region different than the first service region for an amount of time that exceeds a threshold established for the second service region," and "automatically ... detect[s] a change in the context information based at least on" that threshold determination. Applicant respectfully submits that a computer system including an automatic monitoring of machine-collected data and threshold-based detection of a change in service region do not recite nor relate to any contractual or paperwork-processing activity, but rather the computer system is a specific automated technique for detecting a location- and duration-based change in machine-monitored data. See Arguments, p. 12.
The Examiner respectfully disagrees.
As argued by the Applicant, Claim 1 recites a protection service (i.e., insurance) management computer system that, among other operations, "monitor[s] context information" pertaining to an protection service plan (i.e., insurance policy), "determin[es], based at least on location information included in the context information, that the [insured] asset has been located in a second service region different than the first service region for an amount of time that exceeds a threshold established for the second service region," and "automatically ... detect[s] a change in the context information based at least on" that threshold determination to generate a proposed modification to the protection service plan (i.e., insurance policy).
Claim 1 recites monitoring an insurance plan and assets covered by an insurance plan, and, based upon determinations made about the covered assets, proposing modifications of the insurance plan.
Insurance is a legal and contractual relationship between an insurer and an insured party that defines how risks are transferred and compensated.
Insurance is a commercial relationship as it is a business connection between an insurer and the insured, a relationship tied to trade, services, or business activities rather than personal or non-commercial purposes.
As such, the claim recites a commercial or legal interaction between an insurer and the insured.
Applicant further argues:
Second, and as noted above, the Office Action alleges that the claims recite a "commercial or legal interaction." Applicant respectfully disagrees, and notes that MPEP § 2106.04(a)(2)(II)(B) provides examples of commercial or legal interactions include, for example, "processing an application for financing a loan," "processing insurance claims for a covered loss or policy event under an insurance policy," which Applicant respectfully submits are dissimilar from the automated monitoring and threshold-based detection recited in amended claim 1. Moreover, page 2 of the USPTO Memorandum on "Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101," dated August 4, 2025 (referred to as the "August 2025 Memo"), provides that the Office should be "careful to distinguish claims that recite an exception ... from claims that merely involve an exception (which are eligible and do not require further eligibility analysis)." See Arguments, p. 12.
The Examiner respectfully disagrees.
MPEP §2106.04(a) recites:
To facilitate examination, the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent, as is explained in MPEP § 2106.04(a)(2). This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types.
The court-identified examples are examples, instances serving to illustrate the enumerated groupings of abstract ideas. The court-identified examples do not define the limits of each enumerated grouping of abstract ideas.
Examiner believes that the cited examples are illustrative concerning the concepts considered within the scope of commercial and legal relationships.
Accenture Global Services v. Guidewire Software, Inc. (Fed. Cir. 2013) pertains to processing insurance claims in which an insurance policy and an asset are analyzed to determine coverage for said asset.
The claimed invention in the instant case recites analyzing an insurance policy and an asset to determine whether the insurance policy requires modification to cover said asset.
Credit Acceptance v. Westlake Services (Fed. Cir. 2017) and Dealertrack v. Huber (Fed. Cir. 2021) pertains to processing an application for financing a loan, thereby establishing the parameters of the commercial and legal relationship between the lender and the borrower.
The claimed invention in the instant case recites processing information pertaining to an insurance policy and an asset to determine whether the insurance policy requires modification to cover said asset, the modification establishing the parameters of the commercial and legal relationship between the insurer and the insured.
Applicant argues that the claimed invention does not recite a mental process as it cannot be practically performed in the human mind and, as such, satisfies Step 2A Prong One of the §101 Guidelines. See Arguments, pp. 13-14. Specifically, Applicant argues:
The MPEP specifies that "[c]laims do not recite a mental process when they do not contain limitations that can practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations." MPEP § 2106.04(a)(2)(III)(A). Applicant respectfully submits that the claims are not directed to a mental process, but rather recite the use of a computer system that (i) automatically monitors machine-collected context information that is "automatically determined without the user being required to manually provide the context information," and (ii) determines and detects a change in service region from that data. As described in the as-filed Application, according to non-limiting example implementations, this context information can include telematics and geolocation data captured by sensors and devices associated with the asset and the user device (such as GPS data, vehicle acceleration, braking, heading, speed, and route information). In some exemplary embodiments, the system further monitors on a continuous or periodic basis and cross-correlates with regulatory information from disparate third-party sources. See at least paragraphs [0024], [0031]-[0033], [0068] of the present Application. Applicant respectfully submits that the human mind is not equipped to ingest and continuously analyze these streams of machine-generated sensor data, nor to determine in real time from that data that an asset has crossed from one service region into another and has remained there beyond a region-specific threshold. See Arguments, p. 13.
As a preliminary matter, although the claims are interpreted utilizing the broadest reasonable interpretation, in light of the specification, limitations from the specification are not read into the claims. See MPEP §2111 and §2111.01.
As such, the claimed invention, at least as recited in the independent claims, does not recite utilizing machine-generated information, that the information is "automatically determined without the user being required to manually provide the context information" (those claim elements were deleted in the Applicant’s filing(s) on 6/22/2026), or cross-correlating said information with regulatory information from disparate third-party sources.
Additionally, even if limitations from the specification were to be imported, “context information can include telematics and geolocation data captured by sensors and devices,” does not mean that the context information includes telematics and geolocation data captured by sensors and devices. And, as asserted by the Applicant, these are “non-limiting example implementations.”
A human being can monitor context information, even machine-collected context information. A human being can determine and detect a change in service region from that data. This is a mental process that can practically be performed within the human mind.
MPEP §2106.04(a)(2)(III)(A) recites:
In contrast, claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include:
a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016);
The claimed invention recites the performance of a method comprising collecting information (i.e., machine-generated context information) and performing computations based upon the received information (i.e., detecting a change in the service region from the data). This method is a mental process that can practically be performed in the human mind and is analogous to the mental process performed in Electric Power Group vs. Alstom, S.A. (Fed. Cir. 2016).
Admittedly, the claimed invention is utilizing a computer to perform the abstract idea. But these are additional elements (i.e., computerized elements) and additional elements are examined under Step 2A Prong Two, to determine whether any additional elements in the claim integrate the abstract idea into a practical application, not Step 2A Prong One. See MPEP §2106.05(f)(2).
Utilization of computerized elements to perform the mental process does not necessarily negate a finding that the claimed invention recites a mental process.
On this point, MPEP § 2106.04(a)(2)(III)(C) recites:
In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification. For instance, examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process.
The claimed invention recites a mental process even though the claimed invention recites that the mental process is being performed on a computer. The claims merely recite that the “concept is performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept.”
Applicant further argues:
Specifically, Applicant respectfully submits that a human mind would be incapable of at least "determining, based at least on location information included in the context information, that the asset has been located in a second service region different than the first service region for an amount of time that exceeds a threshold established for the second service region" and "automatically ... detecting a change in the context information based at least on determining that the asset has been located in the second service region for the amount of time that exceeds the threshold," as recited in amended claim 1.
The above-recited claim language of amended claim 1 includes limitations that cannot reasonably be characterized as being practically performed in the human mind. For instance, the recited automatic detection is triggered by the system's own threshold determination applied to continuously monitored machine data, not by a human observation, evaluation, judgment, or opinion, and is therefore different than "collecting information, analyzing it, and displaying ... results" at issue in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), on which the Office Action relies. Considered as an ordered combination, and as a whole, amended claim 1 is not capable of being practically performed in the human mind and, as such, is not directed to a mental process under Step 2A, Prong One. Claims 8 and 16, due to similar claim language, are not directed to a mental process for at least the same reasons. See Arguments, p. 14.
The Examiner respectfully disagrees.
A human being can determine, based at least on location information included in the context information, that the asset has been located in a second service region different than the first service region for an amount of time that exceeds a threshold established for the second service region and detect a change in the context information based at least on determining that the asset has been located in the second service region for the amount of time that exceeds the threshold.
If human being detects a change in the context information, the human being has analyzed the context information, as in in Electric Power Group, LLC v. Alstom S.A.
As Examiner has previously argued, utilizing a computer to perform the mental process does not negate a finding that the claimed invention recites a mental process. The computer is just performing the mental process that is traditionally performed within the human mind.
Step 2A Prong Two
Applicant argues that the claimed invention recites a practical application, specifically “[a]pplying or using the judicial exception in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception,” and, as such, satisfies Step 2A Prong Two of the §101 Guidelines. See Arguments, pp. 14-17.
The Examiner respectfully disagrees.
MPEP §2106.04(d) recites:
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f).
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
Examiner asserts that the additional elements amount to merely (1) including instructions to implement an abstract idea on a computer or merely using a computer as a tool to perform an abstract idea, or alternatively, (2) linking the use of a judicial exception to a particular technological environment or field of use.
Applicant further argues:
Applicant respectfully submits that using the information obtained to take a particular action (such as transmitting a prompt for approval and then initiating a corresponding modification of the protection service plan responsive to that approval) is an "other meaningful limitation" that integrates any alleged exception into the overall scheme and practically applies it. Moreover, the claimed "transmitting a prompt to a user device associated with the user, the prompt requesting approval of the modification" and "initiating the modification ... responsive to receiving the approval of the modification from the user device" are analogous to the corrective action found to integrate the exception in Example 46 (Livestock Management) of the USPTO's Subject Matter Eligibility Examples.
In Example 46, using the result of the recited analysis to operate equipment (e.g., a feed dispenser or a sorting gate) was found to be an "other meaningful limitation" that practically applies the exception. Similarly, the limitations of claim 1 impose meaningful limits on any alleged exception, such that the claims are "more than a drafting effort designed to monopolize the exception," MPEP § 2106.04(d)(I), rather than merely linking the alleged exception to a particular technological environment or field of use. See Arguments, pp. 15-16.
The Examiner respectfully disagrees.
As a preliminary matter, the Examiner notes that Office Examples are meant to be for training purposes and do not have the force of legal precedent.
Example 46 was found to integrate the abstract idea into a practical application by virtue of operating and controlling other devices (i.e., feed dispenser and sorting gate), as noted by the Applicant.
In the instant case, the claimed invention is transmitting a prompt to a user device, receiving an approval from the user device and implementing modifications in response to the approval. The claimed invention is not operating or controlling the user device as in Example 46.
Step 2B
Applicant argues that the additional elements amount to “significantly more” than the abstract idea as the additional elements are not “well-understood, routine, conventional activity previously known to the industry” and, as such, satisfies Step 2B of the §101 Guidelines.
The Examiner respectfully disagrees.
Claim limitations that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception include (i) adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a compute, (ii) simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, (iii) adding insignificant extra-solution activity to the judicial exception, or (iv) generally linking the use of the judicial exception to a particular technological environment or field of use. See MPEP §2106.05(I)(A).
Examiner asserts that the additional claim element(s) amount to (i) adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer not (ii) simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. As such, no analysis under Berkheimer is necessary, as Berkheimer analysis pertains to whether appended activities constitute “well-understood, routine, conventional activities previously known to the industry.”
7. Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON M. BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RYAN D. 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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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 October 11, 2026
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