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 .
This communication is a Non-Final in response to the Pre-Appeal Conference decision dated 5/1/2025 for Application No. 16/433128, filed on 6/6/2026. The decision was made to reopen prosecution and withdraw the previous rejection under 35 USC 103.
A new rejection under 35 USC 101 and 35 USC 112(a) has been added and addressed below. Thereby, claims 31-37 and 44-52 are currently pending and have been examined.
Claims 1-30, 38-43, and 53-61 are cancelled.
Claims 31-37 and 44-52 have been rejected as follows.
Specification
The amendment filed 5/13/2021 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: paragraphs 0027-0030 have been added from the originally filed specification filed on 6/6/2019. The examiner also notes that the amended specification filed on 5/13/2021 is not marked up to show the amended portions of the specification. (see MPEP R1.121 “Manner for Making Amendments in Applications”).
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 31-37 and 44-52 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 31 recites the limitations of “a. displaying of a QR code, associated with a webpage that is loaded with a database of compatibility for the in-store automotive part and/or the in-store automotive accessory, on the in-store automotive part, packaging, and/or the in-store automotive accessory packaging, the in-store automotive part display and/or the in-store automotive accessory display, a shelf related to the in-store automotive part and/or the in-store automotive accessory, an aisle related to the in-store automotive part and/or the in-store automotive accessory, wherein the webpage is configured to provide compatibility information consisting of: of at least one of the in-store automotive part and/or the in-store automotive accessory for at least one vehicle model; b. guiding the in-store customer to the webpage to check compatibility information, wherein the in-store customer scans the QR code for the compatibility information consisting of: at least one of the in-store automotive part/and or the in-store automotive accessory wherein the webpage prompts the in-store customer to select a make, a model and a year of at least one vehicle after scanning the QR code,
wherein the webpage pairs the information selected by the in-store customer to the database and displays a reference information of at least one of the in-store automotive part and/or the in-store automotive accessory on the in-store customer's internet-enabled handheld personal device;” and the support for these limitations is found only in the newly added paragraphs 0027-30 which as stated above is new matter. The original specification mentions the scanning of a barcorde to redirect to a webpage in [0012] and [0019]. The drawings show in Figure 3 a QR code on a display and Figure 2 states a customer is in the store and then they are guided to a webpage, however the drawings and brief mention of the barcode and webpage does not provide the level of detail to show in such a way as to reasonably convey to one skilled in the relevant art that the inventor at the time the application was filed, had possession of the claimed invention. As applicant is required to cancel the new matter, claim 31 and its dependent claims 32-37 would not be supported by the disclosure and are rejected under 35 USC 112(a).
Claim 44 recites “a. displaying of an address of a webpage associated with a database of compatibility for the in-store automotive part and/or the in-store automotive accessory, on the in-store automotive part, packaging, and/or the in-store automotive accessory packaging, the in- store automotive part display and/or in-store automotive accessory display, a shelf related to the in-store automotive part and/or the in-store automotive accessory, an aisle related to the in-store automotive part and/or the in-store automotive accessory, wherein the webpage is configured to provide compatibility information consisting of at least one of the in-store automotive part and/or the in-store automotive accessory at least one vehicle model;
b. displaying and guiding the in-store customer to the webpage to check compatibility information consisting of at least one of the in store automotive part and/or the in store automotive accessory, wherein the webpage prompts the in-store customer to select a make, a model and a year of at least one vehicle, wherein the webpage pairs the information selected by the in-store customer to the database and displays a reference information of at least one of the in-store automotive part and/or the in-store automotive accessory on the in-store customer's internet-enabled handheld personal device;” and the support for these limitations is found only in the newly added paragraphs 0027-30 which as stated up is new matter. The specification does not describe displaying an address of a webpage. The original only specification mentions the scanning of a barcorde to redirect to a webpage in [0012] and [0019]. The drawings show in Figure 3 a QR code on a display and Figure 2 states a customer is in the store and then they are guided to a webpage, however the drawings do not provide the level of detail to show in such a way as to reasonably convey to one skilled in the relevant art that the inventor at the time the application was filed, had possession of the claimed invention. As applicant is required to cancel the new matter, claim 44 and its dependent claims 45-52 would not be supported by the disclosure and are rejected under 35 USC 112(a).
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.
Step 1: The claims 31-37 and 44-52 are a method. Thus, each independent claim, on its face, is directed to one of the statutory categories of 35 U.S.C. §101. However, the claims 31-37 and 44-52 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A Prong 1: The independent claims recite:
Claim 31 recites: An in-store automotive part and/or an in-store automotive accessory compatibility guidance method to an in-store customer inside a physical store using the in- store customer's internet-enabled handheld personal device comprising the following steps:
a. displaying of a QR code, associated with a webpage that is loaded with a database of compatibility for the in-store automotive part and/or the in-store automotive accessory, on the in-store automotive part, packaging, and/or the in-store automotive accessory packaging, the in-store automotive part display and/or the in-store automotive accessory display, a shelf related to the in-store automotive part and/or the in-store automotive accessory, an aisle related to the in-store automotive part and/or the in-store automotive accessory, wherein the webpage is configured to provide compatibility information consisting of: of at least one of the in-store automotive part and/or the in-store automotive accessory for at least one vehicle model;
b. guiding the in-store customer to the webpage to check compatibility information, wherein the in-store customer scans the QR code for the compatibility information consisting of: at least one of the in-store automotive part/and or the in-store automotive accessory, wherein the webpage prompts the in-store customer to select a make, a model and a year of at least one vehicle after scanning the QR code, wherein the webpage pairs the information selected by the in-store customer to the database and displays a reference information of at least one of the in-store automotive part and/or the in-store automotive accessory on the in-store customer's internet-enabled handheld personal device;
c. consisting of providing at least one of the in-store automotive part and/or the in-store automotive accessory associated with the reference information and compatible with the make, the model and the year of the at least one vehicle to the in-store customer to purchase inside the physical store.
Claim 44 recites: An in-store automotive part and/or an in-store automotive accessory compatibility guidance method to an in-store customer inside a physical store using the in- store customer's internet-enabled handheld personal device comprising the following steps:
a. displaying of an address of a webpage associated with a database of compatibility for the in-store automotive part and/or the in-store automotive accessory, on the in-store automotive part, packaging, and/or the in-store automotive accessory packaging, the in- store automotive part display and/or in-store automotive accessory display, a shelf related to the in-store automotive part and/or the in-store automotive accessory, an aisle related to the in-store automotive part and/or the in-store automotive accessory, wherein the webpage is configured to provide compatibility information consisting of at least one of the in-store automotive part and/or the in-store automotive accessory at least one vehicle model;
b. displaying and guiding the in-store customer to the webpage to check compatibility information consisting of at least one of the in store automotive part and/or the in store automotive accessory, wherein the webpage prompts the in-store customer to select a make, a model and a year of at least one vehicle, wherein the webpage pairs the information selected by the in-store customer to the database and displays a reference information of at least one of the in-store automotive part and/or the in-store automotive accessory on the in-store customer's internet-enabled handheld personal device;
c. consisting of providing the at least one of the in-store automotive part and/or the in-store automotive accessory associated with the reference information and compatible with the make, the model and the year of the at least one vehicle to the in-store customer to purchase inside the physical store.
These limitations, except for the italicized portions, under their broadest reasonable interpretations, recite certain methods of organizing human activity for managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) as well as commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). The claimed invention recites steps for acquiring additional products and product related information from scanning a scannable code that directs the user to a webpage with more information regarding a product. The steps under its broadest reasonable interpretation specifically fall under sales activities. The Examiner notes that although the claim limitations are summarized, the analysis regarding subject matter eligibility considers the entirety of the claim and all of the claim elements individually, as a whole, and in ordered combination.
Prong 2: This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of
using the in- store customer's internet-enabled handheld personal device
a database
webpage
scans the QR code and scanning the QR code,
The recitation of these additional elements merely indicates a field of use or technological environment in which the judicial exception is performed. Although these additional elements limit the identified judicial exception, which involves a webpage in communication with a database in response to data received from scanning a QR code, this type of limitation merely confines the use of the abstract idea to a particular technological environment (QR code and webpages/internet environment) and thus fails to add an inventive concept to the claims. See MPEP 2106.05(h). These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore does not integrate the abstract idea into a practical application (see MPEP 2106.05(g)).
Accordingly, these additional elements when considered individually or as a whole do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The independent claims are directed to an abstract idea.
Step 2B: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed with respect to Step 2A Prong two, the additional elements in the claims amount to no more than generally linking the judicial exception to a particular technological environment.
Dependent claims 31-37 and 45-52 when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. §101 because the additional recited limitations fail to establish that the claims are not directed to the same abstract idea of Independent Claims 31 and 44 without significantly more.
The dependent claims recite:
32. (previously presented) The compatibility guidance method of claim 31, wherein at least one of the in-store customer is provided at least one of the following: I. at least one automotive accessory compatible to the at least one vehicle; II. at least one automotive replacement part compatible to the at least one vehicle; III. at least one automotive maintenance part the at least one vehicle.
33. (previously presented) The compatibility guidance method of claim 31, wherein the in- store customer is provided at least one of the following: a. at least one automotive filter; b. at least one wiper blade size; c. at least one oil grade and type; d. at least one steering cover; e. at least one spark plug; f. at least one oil filter or engine air filter or cabin air filter; g. at least one automotive cover; h. at least one license plate bracket; i. at least one transmission fluid; j. at least one tire; k. at least one car sunshade; 1. at least one automotive pet automotive accessory; m. an automotive license plate automotive accessory; n. an automotive storage automotive accessory; o. an automotive sun visor automotive accessory; p. an automotive snow cover; q. an automotive window automotive accessory; r. an automotive mirror automotive accessory; s. an automotive mobile automotive accessory.
34. (previously presented) The compatibility guidance method of claim 31, wherein the in- store customer is provided at least one of following:
a. a video guidance on the website to install the in-store automotive part and/or the in- store automotive accessory to the at least one vehicle; b. providing information about a scheduled maintenance on the website for the vehicle and the in-store automotive part required to perform the maintenance on the at least one vehicle; identifying of at least one automotive tool of the in-store automotive part and/or automotive accessory and/or automotive tool needed to perform a service and/or a repair on the at least one vehicle; c. a maintenance service related information for the at least one vehicle and providing the reference information of compatible at least one of the in-store automotive part and/or the in-store automotive accessory.
35. (currently amended) The compatibility guidance method of claim 31, wherein a website associated with the webpage of the QR code is configured to initiate at least one of the following: a. provide a location of the in-store automotive part and/or the in-store automotive accessory; b. allowing a camera of the in-store customer's internet-enabled handheld personal device to scan a UPC or the in-store automotive part and/or the in-store automotive accessory to provide confirmation of its association with the reference information.
36. (previously presented) The compatibility guidance method to of claim 31, wherein the in-store customer is provided the compatibility guidance only if the QR code is scanned using an authorized application installed on the in-store customer's internet-enabled handheld personal device.
37. (previously presented) The compatibility guidance method of claim 31, wherein the in- store customer is provided the compatibility guidance only if a location of the in-store customer's internet-enabled handheld personal device is within a set proximity to the physical store.
45. (previously presented) The compatibility guidance method of claim 44, wherein the in- store automotive part and/or automotive accessory and/or the automotive tool's compatibility guidance, for the at least one vehicle, is for at least one of the following: I. at least one automotive accessory compatible to the at least one vehicle; II. at least one automotive replacement part compatible to the at least one vehicle; III. at least one automotive maintenance part the at least one vehicle; IV. a video guidance to perform a repair or a maintenance on the at least one vehicle; V. an identification of at least one of automotive tools needed to perform the service and/or repair on the at least one vehicle; VI. a guide about for a maintenance intervals for the at least one vehicle; VII. a maintenance service related information for the at least one vehicle; IX. providing guidance to perform the service of the at least one vehicle by directing to a video; X. proving information about a maintenance and parts required to perform the maintenance on the at least one vehicle.
46. (previously presented) The compatibility guidance method of claim 44, wherein the in- store customer is provided at least one of the following: a. at least one automotive filter; b. at least one wiper blade size; c. at least one oil grade and type; d. at least one steering cover; e. at least one spark plug; f. at least one oil filter or engine air filter or cabin air filter; g. at least one car cover; h. at least one license plate bracket; i. at least one transmission fluid; j. at least one tire; k. at least one automotive window sunshade; 1. at least one automotive pet automotive accessory; m. an automotive license plate automotive accessory; n. an automotive storage automotive accessory; o. an automotive sun visor automotive accessory.
47. (previously presented) The compatibility guidance method of claim 44, wherein a website associated with the webpage of the webpage is configured to initiate at least one of the following: a. provide a location of the in-store automotive part and/or automotive accessory and/or automotive tool in the physical store; b. allowing a camera of the in-store customer's internet-enabled handheld personal device to scan the product UPC or the product and provide confirmation.
48. (previously presented) The compatibility guidance method of claim 44, wherein the in- store customer is provided the compatibility guidance is provided by populating at least two of the in-store automotive part and/or automotive accessory and/or automotive tool compatible with the at least one vehicle.
49. (previously presented) The compatibility guidance method of claim 44, wherein the in- store customer is provided a drop down selection to share at least one vehicle information on the webpage.
50. (previously presented) The compatibility guidance method of claim 44, wherein the compatibility guidance method identifies two or more of the in-store automotive part and/or automotive accessory and/or automotive tool compatible with the at least one vehicle.
51. (previously presented) The compatibility guidance method of claim 44, wherein the compatibility guidance method identifies two or more of the automotive tool needed to perform a repair to the at least one vehicle provided on the webpage by the in-store customer.
52. (previously presented) The compatibility guidance method of claim 44, wherein the in- store customer is provided the compatibility guidance only if a location of the in-store customer's internet-enabled handheld personal device is within a set proximity to the physical store.
The claims above merely further limit the abstract idea reciting additional details about the data collected from the customer and data sent to the customer. The claims add only the additional elements of a store camera and an authorized application which are recited at a high level of generality and therefore the additional elements do not integrate the judicial exception into a practical application.
For these reasons the claims are rejected under 35 USC 101.
Subject Matter Free of Prior Art
Claims 31-37 and 44-52 are found to recite subject matter free of prior art, however remain rejected under 35 USC 101.
The closest prior arts of record were found to be the following:
Gentile (US 9721223) discloses a system for scanning the QR code on a product, retrieving context information about the product, and display a webpage with more information about the product to an end user. Further, the end user can provide inputs to indicate which category of data they wish to see more information for regarding the product. (see Figures 1,3, and 4).
Caruso (US 20180137553) discloses a kiosk at the point of sale location of a retailer that receives input from a customer about a project. From scanning a code, the kiosk can help the user identify product to buy either in the store or on the store’s website (see paragraph 0041)
Evans (US 20150019371) discloses a system for recommending vehicle parts to a customer based on their vehicle and driving data (paragraph 0039). The customer is able to select products they wish to purchase in the webpage interface an once the selection is made, a machine readable code can be generated to allow to user to recall their selection at another device (abstract and paragraph 0038).
NPL: NAPA Auto Parts (dated 5/13/20216 NAPA Auto Parts - Accessories, Repair Guides & More) shows the customer being able to enter their vehicle information to find auto parts specific to their vehicle (shown in image capture below).
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While the references listed disclose portions of the claimed subject matter, the references alone do not disclose the claimed invention, nor would it have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have motivation to combine with references. Specifically, the references alone or in combination do not disclose:
Claim 31: An in-store automotive part and/or an in-store automotive accessory compatibility guidance method to an in-store customer inside a physical store using the in- store customer's internet-enabled handheld personal device comprising the following steps:
a. displaying of a QR code, associated with a webpage that is loaded with a database of compatibility for the in-store automotive part and/or the in-store automotive accessory, on the in-store automotive part, packaging, and/or the in-store automotive accessory packaging, the in-store automotive part display and/or the in-store automotive accessory display, a shelf related to the in-store automotive part and/or the in-store automotive accessory, an aisle related to the in-store automotive part and/or the in-store automotive accessory, wherein the webpage is configured to provide compatibility information consisting of: of at least one of the in-store automotive part and/or the in-store automotive accessory for at least one vehicle model;
b. guiding the in-store customer to the webpage to check compatibility information, wherein the in-store customer scans the QR code for the compatibility information consisting of: at least one of the in-store automotive part/and or the in-store automotive accessory wherein the webpage prompts the in-store customer to select a make, a model and a year of at least one vehicle after scanning the QR code,
wherein the webpage pairs the information selected by the in-store customer to the database and displays a reference information of at least one of the in-store automotive part and/or the in-store automotive accessory on the in-store customer's internet-enabled handheld personal device;
c. consisting of providing at least one of the in-store automotive part and/or the in-store automotive accessory associated with the reference information and compatible with the make, the model and the year of the at least one vehicle to the in-store customer to purchase inside the physical store.
As stated by applicant in the Pre-Appeal Brief Remarks dated 6/12/2024, “Applicant respectfully points out that claims are in fact limited to the in-store automotive part and/or the in-store automotive accessory for at least one vehicle model because the claims specifically recites “consisting of”. This is a closed phrase which excludes other types of elements. Therefore everything else except the in-store automotive part and/or the in-store automotive accessory is excluded. The transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) MPEP 2111.03”. The examiner finds the remarks persuasive and therefore has withdrawn the rejection under 35 USC 103.
These reasons also apply to claim 44 as it recites similar subject matter with the limiting language.
Dependent claims 32-37 and 44-52 are also free of prior art for the reasons set forth above, however remain rejected under 35 USC 101.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA E. FRUNZI whose telephone number is (571)270-1031. The examiner can normally be reached Monday- Friday 7-4 (EST).
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, Marissa Thein can be reached at (571) 272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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VICTORIA E. FRUNZI
Primary Examiner
Art Unit TC 3689
/VICTORIA E. FRUNZI/Primary Examiner, Art Unit 3689 5/21/2025