DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
The following is Office Action on the merits in response to the communication received on 1/17/25.
Claim status:
Amended claims: none
Canceled claims: none
Added New claims: None
Pending claims: 1-20
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 because the claimed invention is not directed to statutory subject matter. Specifically, the invention of claims 1-20 is directed to an abstract idea without significantly more.
Independent claims 1, 9, and 15 are directed to a system (claim 1), a method (claim 9), and a non-transitory, computer-readable storage media (claim 15). Therefore on its face, claims 1, 9, and 15 are directed to a statutory category of invention under Step 1 of the 2019 PEG. However claims 1, 9, and 15 are also directed to an abstract idea without significantly more, under Step 2A (Prong One and Prong Two) and Step 2B of the 2019 PEG, which is a judicial exception to 35 U.S.C. 101, as detailed below. Using the language of independent claim 1 to illustrate the claim recites the limitations of, (i) enabling a claimant to initiate an insurance replacement rental reservation after submission of an initial loss claim, (ii) retrieve, policyholder insurance data using a claim identifier associated with the initial loss claim submission, and a policyholder identifier; (iii) generate a customized link including a representation of the claim identifier and the policyholder identifier, wherein the customized link is executable to cause display of a searchable interface that is prepopulated, (iv) using the representation of the claim identifier and the policyholder identifier and without additional input from the claimant, based on the retrieved policyholder insurance data, the searchable interface configured to enable the claimant to search for rentable vehicles from a plurality of vendors; (v) transmit, the customized link; (vi) and in response to receiving the customized link, provide the prepopulated searchable interface including rental vehicle data to be displayed to enable the claimant to view available rental option under the broadest reasonable interpretation (BRI) covers methods of organizing human activity specifically commercial or legal interactions such as, legal obligations, but for the recitation of generic computer components. (Independent claims 9 and 15 recite similar limitations and the analysis is the same).
That is, other than reciting a rental self-service (“RSS”) computer system, a processor, a memory, an insurance provider database and a user device nothing in the claim precludes the steps from being directed to organizing human activity specifically commercial or legal interactions such as, legal obligations, but for the recitation of generic computer components. If a claim limitation under its BRI, covers methods of organizing human activity but for the recitation of generic computers, then the limitations fall within the “methods of organizing human activity” grouping of abstract ideas. Therefore, claim 1 recites an abstract idea under Step 2A Prong One of the Revised Patent Subject Matter Eligibility Guidance 84 Fed.Reg 50 (“2019 PEG”).
These “methods of organizing human activity” are not integrated into a practical application under Step 2A prong Two of the 2019 PEG. In particular the claim recites the following additional elements of, a rental self-service (“RSS”) computer system, a processor, a memory, an insurance provider database and a user device. This judicial exception is not integrated into a practical application. In particular, the claim only recites the additional elements – a rental self-service (“RSS”) computer system, a processor, a memory, an insurance provider database and a user device.
The rental self-service (“RSS”) computer system, processor, memory, insurance provider database and user device are recited at a high-level or generality (i.e. as a generic computer performing generic computer functions) such that, they amount to no more than instructions to apply the abstract idea with a general computer (see MPEP 2106.05(h). Accordingly these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea.
Under Step 2B of the 2019 PEG independent claim 1 does not include additional elements that are sufficient to amount to significantly more than the abstract idea. The claim(s) 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 using, a rental self-service (“RSS”) computer system, a processor, a memory, an insurance provider database and a user device, enabling a claimant to initiate an insurance replacement rental reservation after submission of an initial loss claim, retrieve, policyholder insurance data using a claim identifier associated with the initial loss claim submission, and a policyholder identifier; generate a customized link including a representation of the claim identifier and the policyholder identifier, wherein the customized link is executable to cause display of a searchable interface that is prepopulated, using the representation of the claim identifier and the policyholder identifier and without additional input from the claimant, based on the retrieved policyholder insurance data, the searchable interface configured to enable the claimant to search for rentable vehicles from a plurality of vendors; transmit, the customized link; and in response to receiving the customized link, provide the prepopulated searchable interface including rental vehicle data to be displayed to enable the claimant to view available rental option, amount to instructions to apply the abstract idea with a general computer. The claims are not patent eligible.
The dependent claims have been given the full two part analysis including analyzing the additional limitations individually. The Dependent claim(s) when analyzed individually are also held to be patent ineligible under 35 U.S.C. 101 because for the same reasoning as above and the additional recited limitation(s) fail to establish that the claim(s) are not directed to an abstract idea. The additional limitations of the dependent claim(s) when considered individually do not amount to significantly more than the abstract idea. Claims 2-8, 10-14 and 16-20 merely further explain the abstract idea.
When viewed individually the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly claims 1-20 are ineligible.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,254,510 Although the claims at issue are not identical, they are not patentably distinct from each other because they claim patentably indistinct inventions and the claimed invention and the patent were commonly owned.
Claim 1 of the Examined Application And Claim 1 of U.S. Patent No. 12,254,510
The two independent claims are substantially similar to one another. Both are directed to a system that includes, a rental self-service ("RSS") computer system for enabling a claimant to initiate an insurance replacement rental reservation after submission of an initial loss claim, the RSS computer system comprising a processor in communication with a memory, the processor programmed to: retrieve, from an insurance provider database, policyholder insurance data using a claim identifier associated with the initial loss claim submission, and a policyholder identifier, generate a customized link including a representation of the claim identifier and the policyholder identifier, wherein the customized link is executable on a user device to cause display of a searchable interface that is prepopulated by the processor, using the representation of the claim identifier and the policyholder identifier and without additional input from the claimant, based on the retrieved policyholder insurance data, the searchable interface configured to enable the claimant to search for rentable vehicles from a plurality of vendors; transmit, to the user device, the customized link and in response to receiving the customized link from the user device cause rental vehicle data to be displayed on the user device to enable the claimant to view available rental options. However, the 510 Patent has additional limitations and is a species of the present application. Thus, under an anticipation analysis in MPEP 804(II)(B)(2), the differences between claim 1 of the 510 Patent and claim 1 herein would have been obvious to an ordinarily skilled artisan at the time of the invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARLA HUDSON whose telephone number is (571)272-1063. The examiner can normally be reached M-F 9:30 a.m. - 5:30 p.m. ET.
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/M.H./Examiner, Art Unit 3694
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694
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