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 .
Claim Rejections - 35 USC § 101
2. 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.
3. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more.
Using the language in claim(s) 1 to illustrate, the limitations of create a first plurality of training datasets including historical vehicle driving-related data; build a computer model using the first plurality of training datasets and one or more machine learning programs; collect current user data of a candidate user associated with driving a vehicle; create a second plurality of training datasets by updating the first plurality of training datasets to include the collected current user data; continuously update the computer model by inputting, into the computer model, at least one of the second plurality of training datasets or additional plurality of training data sets created by the computing device; and execute the updated computer model to output, from the updated computer model, a determination of a current coverage level for the candidate user including a likelihood of an accident involving the vehicle, as drafted, is a process that, under its broadest reasonable interpretation, covers certain methods of organizing human activity, in particular, fundamental economic practices (including hedging, insurance, mitigating risk), but for the recitation of generic computer components. The claims as a whole recite a method of organizing human activity. The claimed invention allows for modeling telematics, positioning, and environmental data to be used in liability assessment associated with insurance policies which is a fundamental economic practice.
The mere nominal recitation of a generic computing device comprising at least one processor in communication with at least one memory device and using one or more machine learning programs do not take the claim out of the methods of organizing human activity grouping. Thus, under Eligibility Step 2A, prong one, (MPEP §2106.04(a)), the claims recite an abstract idea.
Under Eligibility Step 2A, prong two, (MPEP §2106.04(d)), this judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements— computing device comprising at least one processor in communication with at least one memory device. The computing device comprising at least one processor in communication with at least one memory device is recited at a high-level of generality (i.e., as a generic processor performing a generic computer functions of creating training datasets, build a computer model, collecting user data, continuously update the computer model, and executing the updated computer model to output a determination) such that they amount to no more than mere instructions to apply the exception using generic computer components (see MPEP §2106.05(f)).
Although a machine learning model is used, such use is generic. The object of the claim limitations is to create datasets for building a model using one or more generic machine learning programs not to produce technology enabling a machine learning model to operate. The claims call for generic use of such a model in the manner such models customarily operate. Simply reciting a particular technological module or piece of equipment in a claim does not confer eligibility.
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.
Similar arguments can be extended to independent claims 8 and 15 and hence claims 8 and 15 are rejected on similar grounds as claim 1. In addition, claim 8 recites a computer implemented method including a processor and memory device and claim 15 recites a non- transitory machine-readable medium that amount to generic computer implementation.
The claims are directed to an abstract idea.
Under Eligibility Step 2B, (MPEP §2106.05), the claim(s) does/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 computing device comprising at least one processor in communication with at least one memory device, and using one or more machine learning models amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. The claims are not patent eligible.
The dependent claims have been given the full two part analysis including analyzing the additional limitations both individually and in combination. The dependent claim(s) when analyzed both individually and in combination 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(s) to establish that the claim(s) is/are not directed to an abstract idea. Dependent claims 2-7, 9-14, 16-20 simply help to define the abstract idea. The additional limitations of the dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Viewing the claim limitations as an ordered combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly, claim(s) 1-20 is/are ineligible.
Claim Rejections - 35 USC § 103
4. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
5. Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Matus et. al (US 2018/0077538) in view of Walsh et al. (US 2020/0211303).
Claim 1: Matus discloses:
create a first plurality of training datasets including historical vehicle driving-related data (historical movement datasets-[0011]);
build a computer model using the first plurality of training datasets and one or
more machine learning programs (plurality of user datasets-[0033] for training, updating and processing computational models-[0033]; machine learning programs-[0060]);
collect current user data of a candidate user associated with driving a vehicle (determining vehicle movement characteristics [0055-0059], see also [0037-0038] and Fig. 3 and related text);
create a second plurality of training datasets by updating the first plurality of training datasets to include the collected current user data (driver behavior can be updated-[0236],[0046][0050]);
update the model by applying the second plurality of training datasets to the model (Different models (e.g., generated with different algorithms, with different sets of features, with different input and/or output types, etc.) can be used (e.g., determined; selected, stored, retrieved, executed, updated, etc.) based on any one or more of the types of data associated with the method 100; -[0061]; updating datasets -[0037] [0040] [0059]);
Although Matus discloses that the system can be used for insurance processing in [0055], [0063], Matus does not disclose executing the updated model to determine a current coverage level for the candidate user including a likelihood of an accident involving the vehicle.
Walsh however, discloses an insurance service system comprising processing claims and policy information in [0060], determining likelihood of damage due to an accident [0029], and coverage amount [0031].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Matus to include that insurance processing comprises a determination of current coverage amount and likelihood of accident as taught by Walsh in order to determine coverage amounts and associated policy charges.
Claim 2. Matus discloses retrieve, from the at least one memory device, the historical vehicle driving-related data, wherein the historical vehicle driving-related data is associated with a plurality of users and wherein the historical vehicle driving-related data includes historical user data. (historical datasets [0048]).
Matus fails to disclose historical liability data. Walsh however teaches a database storing information associated with the driver of a vehicle including insurance policy information, and previous liability issues.-[0049].
It would have been obvious to one having ordinary skill in the art to include in the vehicle tracking an monitoring system of Matus the ability to retrieve previous liability issues stored in a database as taught by Walsh since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 3. Matus discloses wherein the current user data includes current vehicle telematics data associated with the vehicle.-[0033] vehicle data including one or more of radar, light detection, laser scanner vehicle camera data, odometer.
Claim 4. Matus discloses wherein the current vehicle telematics data is gathered by one or more sensors during operation of the vehicle, and wherein the one or more sensors include at least one of a GPS device, an accelerometer, a gyroscope, a camera, or a sensor installed within the vehicle or located remotely from the vehicle.
(Vehicle data can include any one or more of: proximity sensor data (e.g., radar, electromagnetic sensor data, ultrasonic sensor data, light detection and ranging, light amplification for detection and ranging, line laser scanner, laser detection and ranging, airborne laser swath mapping, laser altimetry, sonar, etc.), vehicle camera data (e.g., in-car cameras, exterior cameras, back-up cameras, dashboard cameras, front-view cameras, side-view cameras, image recognition data, infrared camera, 3D stereo camera, monocular camera, etc.), car speed, RPM data, odometer, altimeter, location sensor data (e.g., GPS data, compass data, etc.), motion sensor data (e.g., from an accelerometer, gyroscope, etc.),- [0033]).
Claim 5. Walsh, not Matus, disclose wherein the at least one processor is further configured to transmit the determined current coverage level to at least one third party computing device, and wherein the at least one third party computing device includes an insurance computing device. (transmitting insurance policy data to third party server systems [0020]).
It would have been obvious to one having ordinary skill in the art to include in the vehicle tracking and monitoring system of Matus the ability to transmit insurance policy data to a third party as taught by Walsh in order to provide data needed to receive policy quotes from insurance providers.
Claim 6. Although Matus discloses that the invention facilitates insurance processing in [0064], Walsh, not Matus teaches, wherein the historical vehicle driving-related data including historical insurance data.(Walsh-[0032]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Matus to include historical insurance data as taught by Walsh in order to consider historical claims, policy performance when evaluating risk and setting premiums.
Claim 7. Matus discloses wherein the current user data further includes current personal information and current environmental data ([0046], [0048],[0052]).
Claims 8 and 15 have similar limitations found in claim 1 above, and therefore are rejected by the same art and rationale.
Claims 9, 16 have similar limitations found in claim 2 above, and therefore are rejected by the same art and rationale.
Claims 10, 17 have similar limitations found in claim 3 above, and therefore are rejected by the same art and rationale.
Claims 11 has similar limitations found in claim 4 above, and therefore is rejected by the same art and rationale.
Claims 12, 18 have similar limitations found in claim 5 above, and therefore are rejected by the same art and rationale.
Claims 13, 19 have similar limitations found in claim 6 above, and therefore are rejected by the same art and rationale.
Claims 14, 20 have similar limitations found in claim 7 above, and therefore are rejected by the same art and rationale.
Double Patenting
6. The non-statutory 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 non-statutory 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 non-statutory 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 1-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12387273. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims speak to systems and methods for modeling telematics, positioning and environmental data associated with insurance policies.
Regarding claims 1,8, 15 the language in these claims can be found within claims 1, 8, 15 of U.S. Patent 12387273. Claim 1 of U.S. Patent 12387273 teaches limitations omitted from claim 1 of the instant application. It would have been obvious to omit the limitations because omission of an element and its function is obvious if the function of the element is not desired. See Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989) (Claims at issue were directed to a method for inhibiting corrosion on metal surfaces using a composition consisting of epoxy resin, petroleum sulfonate, and hydrocarbon diluent. The claims were rejected over a primary reference which disclosed an anticorrosion composition of epoxy resin, hydrocarbon diluent, and polybasic acid salts wherein said salts were taught to be beneficial when employed in a freshwater environment, in view of secondary references which clearly suggested the addition of petroleum sulfonate to corrosion inhibiting compositions. The Board affirmed the rejection, holding that it would have been obvious to omit the polybasic acid salts of the primary reference where the function attributed to such salt is not desired or required, such as in compositions for providing corrosion resistance in environments which do not encounter fresh water.). See also In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965) (Omission of additional framework and axle which served to increase the cargo carrying capacity of prior art mobile fluid carrying unit would have been obvious if this feature was not desired.); and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (deleting a prior art switch member and thereby eliminating its function was an obvious expedient)..
Regarding claims 2-4, the language in these claims can be found within claim 1 of U.S. Patent 12387273.
Regarding claim 5, the language in this claim can be found within claim 6 of U.S. Patent 12387273.
Regarding claim 6, the language in this claim can be found within claim 4 of U.S. Patent 12387273.
Regarding claim 7 the language in this claim can be found within claim 5 of U.S. Patent 12387273.
Regarding claims 9-11 the language in this claim can be found within claim 8 of U.S. Patent 12387273.
Regarding claim 12, the language in this claim can be found within claim 13 of U.S. Patent 12387273.
Regarding claim 13, the language in this claim can be found within claim 11 of U.S. Patent 12387273.
Regarding claim 14, the language in this claim can be found within claim 12 of U.S. Patent 12387273.
Regarding claims 16-17, 19 the language in these claims can be found within claim 15 of U.S. Patent 12387273.
Regarding claim 18, the language in this claim can be found within claim 19 of U.S. Patent 12387273.
Regarding claim 20, the language in this claim can be found within claim 18 of U.S. Patent 12387273.
8. Claims 1-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11790458. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims speak to systems and methods for modeling telematics, positioning and environmental data associated with insurance policies..
Regarding claims 1, 8, 15 the language in this claim can be found within claims 1, 7, 13 of U.S. Patent 11790458. Claims 1, 7, 13 of U.S. Patent 11790458 teach limitations omitted from claims 1, 8, 15 of the instant application. It would have been obvious to omit the limitations because omission of an element and its function is obvious if the function of the element is not desired. See Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989) (Claims at issue were directed to a method for inhibiting corrosion on metal surfaces using a composition consisting of epoxy resin, petroleum sulfonate, and hydrocarbon diluent. The claims were rejected over a primary reference which disclosed an anticorrosion composition of epoxy resin, hydrocarbon diluent, and polybasic acid salts wherein said salts were taught to be beneficial when employed in a freshwater environment, in view of secondary references which clearly suggested the addition of petroleum sulfonate to corrosion inhibiting compositions. The Board affirmed the rejection, holding that it would have been obvious to omit the polybasic acid salts of the primary reference where the function attributed to such salt is not desired or required, such as in compositions for providing corrosion resistance in environments which do not encounter fresh water.). See also In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965) (Omission of additional framework and axle which served to increase the cargo carrying capacity of prior art mobile fluid carrying unit would have been obvious if this feature was not desired.); and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (deleting a prior art switch member and thereby eliminating its function was an obvious expedient)..
Regarding claims 2-4, 6-7 the language in these claims can be found within claim 1 of U.S. Patent 11790458.
Regarding claim 5 the language in this claim can be found within claim 3 of U.S. Patent 11790458.
Regarding claims 9-11, 13-14 the language in these claims can be found within claim 7 of U.S. Patent 11790458.
Regarding claim 12, the language in this claim can be found within claim 9 of U.S. Patent 11790458.
Regarding claims 16-17, 19-20, the language in these claims can be found within claim 13 of U.S. Patent 11790458.
Regarding claim 18, the language in this claim can be found within claim 15 of U.S. Patent 11790458.
Response to Arguments
9. Applicant’s arguments with respect to the rejection of the claim(s) under 35 USC §103 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The remaining arguments filed 7/22/2026 have been fully considered but they are not persuasive.
On pages 8- 9 of the Remarks, Applicants contend that the claims are not directed to an abstract idea and under PTO guidance do not fall into one of the groupings of abstract ideas. The Examiner respectfully disagrees.
The Patent Office has issued guidance about this framework. -See MPEP§ 2106 (9th ed. Rev. 10.2019, rev. June 2020), in particular, Sections 2103 through 2106.07(c). As indicated in the MPEP § 2106, to decide whether a claim is directed to an abstract idea, we evaluate whether the claim (1) recites one of the abstract ideas listed in the Revised Guidance (“Prong One”) and (2) fails to integrate the recited abstract idea into a practical application (“Prong Two”).
Beginning with Prong One, step 2A of the eligibility analysis, we must determine whether the claims at issue are directed to one of those patent-ineligible concepts. One of the subject matter groupings identified as an abstract idea in the Guidance is “[certain methods of organizing human activity—fundamental economic principles or practices (including . . . mitigating risk, insurance); commercial. . . interactions (including agreements in the form of contracts; . . . sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including . . . following rules or instructions)].” See MPEP 2106.04(a).
Here, apart from the recited systems, i.e., a generic computing device comprising at least one processor in communication with at least one memory device, the claims recite abstract ideas in the category of “methods of organizing human activity.” In the 101 analysis in the rejection above, the Examiner identifies and considers each of the underlying steps for the claims as a basis for describing and explaining the recited abstract idea. For example, the Examiner identifies the underlying steps of claim 1—i.e., creating training datasets, build a computer model, collecting user data, continuously update the computer model, and executing the updated computer model to output a determination —and explains that they describe the concept of allowing for modeling telematics, positioning, and environmental data to be used in liability assessment associated with insurance policies which is a fundamental economic principal or practice. The Examiner’s approach here is consistent with USPTO guidance.
On page 9 of the Remarks, Applicants argue that similar to Example 47, the pending claims are directed to specific improvements in machine learning technology. and that the claims do not merely recite using a computer to perform an abstract insurance-related activity. Applicants further argue that the claims recite generating particular training datasets, building a computer model using those datasets and machine learning programs, updating those datasets with current user data, and retraining or updating computer model using the updated datasets and by doing so, the claimed system improves the resulting predictive model by enabling the model to identify patterns in vehicle-related data and produce more accurate outputs.
The argument is not persuasive. As an initial matter, many of the examples in the Guidance are hypothetical and are intended to be illustrative of the analysis only. While some of the fact patterns draw from U.S. Supreme Court and U.S. Court of appeal for the Federal Circuit decisions, the examples do not carry the weight of the court decisions and therefore are non-precedential. Nonetheless, the Examiner finds no parallel between Applicants' claims and the hypothetical, patent-eligible claim described in Example 47 on the Guidance.
The example showing the patent eligibility of claim 3, describes that the claimed invention reflected an improvement in the technical field of network intrusion detection. Steps (d)-(f) provide for improved network security using the information from the detection to enhance security by taking proactive measures to remediate the danger by detecting the source address associated with the potentially malicious packets. Specifically, the claim reflects the improvement in step (d), dropping potentially malicious packets in step (e), and blocking future traffic from the source address in step (f). These steps reflect the improvement described in the background. Thus, the claim as a whole integrates the judicial exception into a practical application such that the claim is not directed to the judicial exception.
Here, the claims do not recite detecting a source address associated with a malicious network packet in real time, dropping potential malicious packets and blocking future traffic from the source address.
The processor here is recited at a high-level of generality (i.e., as a generic processor performing generic computer functions such that it amounts to no more than mere instructions to apply the exception using generic computer components. 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.
Although a machine learning model is used in the instant application, such use is generic. The object of the claim limitations is to create datasets for building a model using one or more generic machine learning programs not to produce technology enabling a machine learning model to operate. The claims call for generic use of such a model in the manner such models customarily operate. Simply reciting a particular technological module or piece of equipment in a claim does not confer eligibility.
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.
On page 11 of the remarks, Applicants contend that the claims are directed to “significantly more” than the abstract idea and that the claims clearly recite more than well understood, routine and conventional activities at least with respect to the claimed machine learning operations. The argument is not convincing because as indicated in the rejection above, mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
On page 12 of the Remarks, Applicants argue that that the claims are not abstract and instead are directed to a novel improvement to a specific technology. The argument is not convincing. Novelty is a question of whether the claimed invention is new. Inventiveness in the Alice/Mayo framework is the search for “an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Alice, 134 S. Ct. at 2355. The inventiveness inquiry of §101 should therefore not be confused with the separate novelty inquiry of §102 or obviousness inquiry of § 103. A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
Conclusion
10. 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 ELDA MILEF whose telephone number is (571)272-8124. The examiner can normally be reached Monday-Thursday 6:30am-3:30pm; Friday 7am-12pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached at (303)297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELDA G MILEF/Primary Examiner, Art Unit 3694
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