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 1-20 are pending.
This office action is being issued in response to the Applicant's filing(s) on 10/14/2024.
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 alternate interpretation is that merely 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. Applicant should review all claims for additional claim interpretation issues.
Claim 1 recites a system to perform operations comprising:
detecting a change in context information associated with a user having a protection service plan that protects an asset of the user, the context information being automatically determined without the user being required to manually provide the context information and including location information associated with the asset of the user.
Examiner notes that just because the user is not required to manually provide the context information does not mean that the user does not manually providing the context information. The claim language just means that there is no requirement that the user perform the function.
Examiner also assumes, based upon Claim 8, that “including location information associated with the asset of the user” means that the context information includes location information associated with the asset of the user.
Claims 8 and 16, due to similar claim language, result in a similar claim interpretation.
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 8 recites a method comprising:
initiating, using the one or more processors, the proposed modification in response to receiving an indication of approval from the user device of the user.
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent is not met. See MPEP §2111.04(II).
Usage of the term and/or phrase “in response to receiving an indication of approval from the user device of the user” in Claim 8 suggests that there remains the possibility that the contingent limitations are not performed as the condition(s) precedent is not met (i.e., no indication of approval is received). Therefore, the claim limitations based upon the condition are optional claim limitations. As a matter of linguistic precision, optional claim limitations do not narrow the scope of the invention, since they can always be omitted. See MPEP §2111.04(II).
As the Applicant does not address what happens should the optional claim limitation(s) fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
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).
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 1-20 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:
detecting, …, a change in context information associated with a user having a protection service plan that protects an asset, the context information including location information associated with the asset of the user;
determining, …, a proposed modification of the protection service plan of the user in response to detecting the change in the context information and without the user being required to request the proposed modification of the protection service plan;
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; and
initiating, …. the proposed modification in response to receiving an indication of approval from the user device of the user.
Additionally, these limitations, as drafted, under its broadest reasonable interpretation, covers 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 its broadest interpretation, covers a series of steps that can be practically performed in the human mind (e.g., observations, evaluations, judgments and opinions) which are 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 a memory device (Claim(s) 1), a processor (Claim(s) 1), a user device (Claim(s) 1, 8 and 16), and a computer-readable medium (Claim(s) 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 to 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) 2-7, 9-15 and 17-20 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 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) and a device that provides GPS data (Claim(s) 14).
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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Healey (US Patent 9,830,665) in view of Fitzgerald (US PG Pub. 2021/0056641).
Regarding Claim 1, Healy disclose a protection service management computer system comprising:
one or more memory devices having instructions stored thereon that, when executed by one or more processors, cause the one or more processors to perform operations comprising:
detecting a change in context information (vehicle location) associated with a user having a protection service plan (insurance policy) that protects an asset (vehicle) of the user, the context information being automatically determined without the user being required to manually provide the context information (automatically via telematics and geo-fencing) and including location information (location) associated with the (vehicle) asset of the user. (see col. 16, lines 24-37);
determining a modification (adjustment) of the protection service plan (insurance policy) of the user based upon the change in the context information (location). (see col. 16, lines 24-37);
initiating the modification (adjustment). (see col. 16, lines 24-37).
Healey does not teach a system performing operations comprising transmitting a prompt to a user device associated with the user, the prompt requesting approval of the modification; and initiating the modification upon receiving approval of the modification via the user device.
Fitzgerald discloses a system performing operations comprising:
transmitting the prompt requesting approval of the modification (whether the user wants to update existing coverage based on the occurrence of the event). (see para. 28); and
initiating the modification (update of user’s existing coverage) upon receiving approval of the modification via the user device. (see para. 28).
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 Healey to incorporate user prompts, as disclosed by Fitzgerald, thereby ensuring that the user has been apprised about and authorizes modifications to the protection service plan.
Regarding Claim 2, Healey discloses a system wherein the location information indicates that the asset (vehicle) of the user has moved from a first service region (location) to a second service region (location), the first service region and the second service region having one or more of different service requirements (different locations require adjustments to conform to state statutory minimum insurance coverage), different service availabilities, or different recommended services associated with the asset. (see col. 16, lines 24-37).
Regarding Claims 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 4, Healey discloses a system wherein determining that the location information indicates that the asset has moved from the first service region to the second service region includes determining that the asset has remained in the second service region for a predetermined amount of time (predetermined time period). (see col. 16, lines 50-53).
Regarding Claim 5, Healey does not teach 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 for the asset to or from the protection service plan.
Fitzgerald 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 (coverage), or a recommended service (coverage) for the asset to or from the protection service plan (insurance policy). (see para. 5, 42-45 and 68-69).
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 Healey and Fitzgerald to incorporate the addition and removal of services, as disclosed by Fitzgerald, as the addition and removal of services (i.e., coverages) is a standard and conventional part of modifying a service protection plan (i.e., insurance policy).
Regarding Claim 6, Healey discloses a system wherein the prompt further includes an estimated cost of the modification. (see fig. 3 and 4; col. 9, line 7 – col. 10, line 43).
Regarding Claim 7, Healey discloses a system wherein the context information includes telematics information received from a device associated with the asset and indicative of usage of the asset, and wherein determining the modification is performed based upon the location information and the telematics information. (see col. 16, lines 24-37).
Regarding Claims 8-10, 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 11, Healey discloses a method wherein the asset is one of a vehicle, a property, or a business. (see abstract).
Regarding Claim 12, 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 13, Healey 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.
Fitzgerald discloses a method wherein the protection service plan is linked to the user within a database (consumer information database) using a user index code (network interface device address/identification number) that is not associated with a physical address. (see para. 30).
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 Healey and Fitzgerald to incorporate a database, as disclosed by Fitzgerald, as storage of data in a database is standard and conventional.
Regarding Claim 14, Healey 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. 5, line 59 – col. 6, line 16).
Regarding Claim 15, Healey discloses a method comprising:
receiving 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 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);
determine 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).
Regarding Claim 16-20, 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).
6. Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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 March 16, 2026