DETAILED ACTION
Claims 1, 4-7, 9-10, 13-19, and 21-22 are pending. Claims dated 09/04/2025 are being examined.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/04/2025 has been entered.
Response to Arguments
35 U.S.C. § 101:
Applicant's arguments filed 09/04/2025 have been fully considered, but they are not persuasive.
Applicant argues the newly amended features cannot reasonably be characterized as reciting mental steps (p. 9 of remarks). However, the newly amended features are treated herein as additional elements and not as abstract ideas.
Applicant also argues that the invention provides “a technical improvement over conventional scan tools that merely report codes without analysis” (p. 9 of remarks). The Examiner maintains in the present claims, said analysis using “rule logic” and a “structured diagnostic algorithm” encompass mental processes that may be done by an end-user to arrive at a diagnostic solution. The ability to sort through and analyze codes can be done by an end-user well-versed in the use of a scan tool. In the present claims, the automation of arriving at a diagnostic solution does not provide for an improved technological process. The purported improvement, the analysis of the codes, relates to the abstract idea, and does not improve a computer, technology, or technological field. “It is important to note, the judicial exception alone cannot provide the improvement” (See MPEP 2106.05(a)). “The fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.” Bancorp Servs., 687 F.3d at 1278. The rejections under 101 are maintained.
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, 4-7, 9-10, 13-19, and 21-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
101 Analysis – Step 1:
Independent claim 1 is directed to a method. Therefore, claim 1 is within at least one of the four statutory categories. Claim 1 will be used as representative claims for the remainder of the 101 rejections.
101 Analysis – Step 2A, Prong I:
Regarding Prong I of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether they recite subject matter that falls within one of the following groups of abstract ideas: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes.
Independent claim 1 includes limitations that recite an abstract idea (emphasized below) and will be used as a representative claim for the remainder of the 101 rejections. Claim 1 recites:
(Claim 1) A vehicle diagnostic method based on an analysis of communication signals on a vehicle having a plurality of electronic control units (ECUs), the vehicle diagnostic method comprising the steps of:
establishing a data link between a data acquisition and transfer device (DAT) and a diagnostic port on the vehicle;
transmitting, by a processor of a diagnostic system executing software in memory, an ECU status request signal to the vehicle in a format transmissible via a diagnostic port on the vehicle via the DAT;
receiving, by the processor via the DAT, a status response signal from the vehicle, the status response signal identifying all ECUs on the vehicle associated with a shared communication network and being responsive to the transmitted ECU status request signal;
identifying, using vehicle identification information and a database of vehicle-specific ECU architecture, a comprehensive listing of all ECUs associated with the shared communication network and the vehicle based on vehicle identification information associated with the vehicle;
generating a state of health report including the comprehensive listing of all ECUs associated with the shared communication network and the vehicle, each ECU in the state of health report responsive to the transmitted ECU status request signal being associated with an active status, the remaining ECUs in the state of health report being associated with an inactive status;
receiving, by the processor via the DAT, diagnostic trouble codes (DTCs) from the vehicle, the received DTCs including communication DTCs and non-communication DTCs, each communication DTC being associated with at least one ECU;
sorting, using rule logic based on fault type, the communication DTCs from the non-communication DTCs;
identifying, by executing a structured diagnostic algorithm, a primary probable cause ECU as being one of the ECUs associated with a received communication DTC that is also associated with an inactive status;
receiving historical DTCs from the vehicle via the DAT;
determining a secondary probable cause based on an analysis of the historical DTCs;
comparing the primary probable cause ECU to the secondary probable cause; and
assigning a probability that the primary probable cause ECU is correct based on the comparison of the primary probable cause ECU to the secondary probable cause.
The Examiner submits that the foregoing bolded limitation(s) constitute “mental processes” – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III) because under its broadest reasonable interpretation, the claim covers performance of the limitation in the human mind.
Specifically, the limitation: “identifying…a comprehensive listing of all ECUs…” in the context of this claim encompasses mental observation. It is known that diagnostic trouble codes (DTCs) are standardized codes with the first letter identifying the system, i.e., P for powertrain (engine, transmission). A person, i.e., a mechanic well-versed in a scan tool, can mentally identify different ECUs in the vehicle from a list of gathered information as shown in FIG. 3.
The limitation: “generating a state of health report…” in the context of this claim encompasses mental observation and evaluation. A person, i.e., a mechanic well-versed in a scan tool, can mentally identify vehicle communication errors from a list of gathered information as shown in FIG. 3 and generate a report as to whether an ECU was able to receive communication(s) (“active status”) or has lost communication (“inactive status”).
The limitation: “sorting…” in the context of this claim encompasses mental evaluation. A person, i.e., a mechanic well-versed in a scan tool, can mentally sort different types of DTC’s based on checking the series of letter(s) and number(s) of received DTCs.
The limitation: “identifying… a primary probable cause ECU…” in the context of this claim encompasses mental evaluation and judgement. Para. [0013] of Applicant’s PGPUB discloses “identifying a primary probable cause may include identifying a communication network or an ECU associated with a highest number of received communication DTCs”. Under broadest reasonable interpretation in light of Applicant’s specification, a person, i.e., a mechanic well-versed in a scan tool, can mentally count from a list of gathered DTCs, which ECU has the highest number of DTCs, and identify that ECU as a primary probable cause ECU.
The limitations: “determining a secondary probable cause…”, “comparing….”, and “assigning a probability…” in the context of this claim encompasses mental evaluation by a person giving more weight (higher probability) to a primary probable cause when the primary probable cause ECU is the same as the secondary probable cause. Para. [0055] of Applicant’s PGPUB discloses “The historical DTCs may be associated with a “secondary” probable cause, which may be used to place higher probability on the primary probable cause results”. Under broadest reasonable interpretation in light of Applicant’s specification, a person, i.e., a mechanic well-versed in a scan tool, can recognize that the same error has happened in the past and give more weight to the determined primary probable cause if the current solution matches the past solution.
It has been held examples of claims that recite mental processes include: a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016);
The current limitations are directed to collecting ECU information and analyzing the ECU information via the “generating”, “sorting”, “identifying”, “determining”, “comparing”, and “assigning” steps, where said steps are recited at a high level of generality such that they could practically be performed in the human mind as reasoned above. Accordingly, each of the current bolded limitations recite at least one abstract idea.
101 Analysis – Step 2A, Prong II:
Regarding Prong II of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether the claim, as a whole, integrates the abstract idea(s) into a practical application. As noted in the 2019 PEG, it must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.”
In the present case, the additional limitations beyond the above-noted abstract idea are as follows (where the underlined portions are the “additional” limitations” while the bolded portions continue to represent the “abstract idea”):
(Claim 1) A vehicle diagnostic method based on an analysis of communication signals on a vehicle having a plurality of electronic control units (ECUs), the vehicle diagnostic method comprising the steps of:
establishing a data link between a data acquisition and transfer device (DAT) and a diagnostic port on the vehicle;
transmitting, by a processor of a diagnostic system executing software in memory, an ECU status request signal to the vehicle in a format transmissible via a diagnostic port on the vehicle via the DAT;
receiving, by the processor via the DAT, a status response signal from the vehicle, the status response signal identifying all ECUs on the vehicle associated with a shared communication network and being responsive to the transmitted ECU status request signal;
identifying, using vehicle identification information and a database of vehicle-specific ECU architecture, a comprehensive listing of all ECUs associated with the shared communication network and the vehicle based on vehicle identification information associated with the vehicle;
generating a state of health report including the comprehensive listing of all ECUs associated with the shared communication network and the vehicle, each ECU in the state of health report responsive to the transmitted ECU status request signal being associated with an active status, the remaining ECUs in the state of health report being associated with an inactive status;
receiving, by the processor via the DAT, diagnostic trouble codes (DTCs) from the vehicle, the received DTCs including communication DTCs and non-communication DTCs, each communication DTC being associated with at least one ECU;
sorting, using rule logic based on fault type, the communication DTCs from the non-communication DTCs;
identifying, by executing a structured diagnostic algorithm, a primary probable cause ECU as being one of the ECUs associated with a received communication DTC that is also associated with an inactive status;
receiving historical DTCs from the vehicle via the DAT;
determining a secondary probable cause based on an analysis of the historical DTCs;
comparing the primary probable cause ECU to the secondary probable cause; and
assigning a probability that the primary probable cause ECU is correct based on the comparison of the primary probable cause ECU to the secondary probable cause.
For the following reason(s), the Examiner submits that the above identified additional elements do not integrate the above-noted abstract idea into a practical application.
The processor and DAT amounts to generic computer components, and it has been held that mere instructions to apply an exception using generic computer elements do not provide an inventive concept. See MPEP § 2106.05.
The limitations of the vehicle serve to generally link the use of a judicial exception to a vehicular environment. It has been held that limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application (MPEP 2106.05(h)).
The additional limitations of “establishing a data link…”, “transmitting…an ECU status request signal…”, “receiving… a status response signal from the vehicle…”, “receiving… diagnostic trouble codes (DTCs) from the vehicle”, and “receiving historical DTCs from the vehicle”, amounts to mere data gathering and data transmitting. It has been held that limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include: Adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea, see MPEP 2106.05. Further, it has been held that “a transformation that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not provide significantly more (or integrate a judicial exception into a practical application)” (MPEP2106.05(c).
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitation(s) as an ordered combination or as a whole, the limitation(s) add nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole, that reflect an improvement in the functioning of a computer or an improvement to another technology or technical field, apply or use the above-noted judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is not more than a drafting effort designed to monopolize the exception (MPEP § 2106.05). Accordingly, the additional limitation(s) do/does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
101 Analysis – Step 2B:
Regarding Step 2B of the 2019 PEG, representative independent claim 1 does not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application.
Further, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B to determine if they are more than what is well understood, routine, conventional activity in the field. All the additional limitations are well-understood, routine, and conventional activity as evidenced by the cited case law and further supported by the cited art US-20230231784-A1 (hereinafter referred to as “Ritter”).
Regarding the computer elements:
As discussed with respect to Step 2A Prong Two, the additional elements of the processor and the DAT in the claim amounts to merely using a computer or other machinery as tools performing their typical functionality in conjunction with performing the above-noted at least one abstract idea (see MPEP § 2106.05(f)). The same analysis applies here in 2B, i.e., mere instructions to apply an exception on a computer cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Further the use of an on-board computer in a vehicle (“processor”) is well-known, routine, and conventional in the art as supported by Applicant’s PGPUB para. [0005] disclosing “many current on-board computers include diagnostic programs to monitor input sensors, switches, actuators and facilitate communication between on-board electrical systems”.
The use of a DAT is also well-known, routine, and conventional in the art as supported by Applicant’s remarks filed 09/04/2025 page 8 and/or Applicant’s PGPUB para. [0039] disclosing a DAT comprises components “known by those skilled in the art”.
Regarding the data gathering and transmitting steps:
Regarding the additional limitations of “establishing a data link…”, “transmitting…an ECU status request signal…”, “receiving… a status response signal from the vehicle…”, “receiving… diagnostic trouble codes (DTCs) from the vehicle”, and “receiving historical DTCs from the vehicle”, these additional limitations have been reevaluated, and it has been determined that such limitations are conventional as they merely consist of data gathering and data transmitting which are recited at a high level of generality. See OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); or buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network). See also MPEP 2106.05(d)(II), and the cases cited therein. All the additional elements are well understood, routine, conventional activity in the field.
Further, as supporting evidence of the well-known, routine, and conventional activity of the additional elements, Ritter teaches: “establishing a data link…”, ([0004] An exemplary embodiment includes a method of diagnosing a connection or communication issue with an industrial machine. The method includes connecting to an electronic processing system of an industrial machine)
“transmitting…an ECU status request signal…” (Fig. 1 CCH 30 transmitting CAN bus check request to vehicle industrial machine connected via data port; [0038] data ports; [0039] the communication system 22 can include a diagnostic connector on the machine which is accessible to a user; Fig. 4A CAN bus check 310; [0071] The CAN bus check (step 310) determines if there are hardware or wiring issues that need to be repaired, controller issues that need to be addressed, or communication issues such as bus loading, interfering devices, intermittent issues, etc.);
“receiving… a status response signal from the vehicle…” ([0015] FIG. 5 is a table showing controller response information; […] Additionally, the CCH 30 requests a response from all controllers on the network to compare the list based on actual responses with what is expected based on the database query);
“receiving… diagnostic trouble codes (DTCs) from the vehicle” ([0075] A table can be compiled which includes the troubleshooting information from the controller responses, as shown, for example, in FIG. 5; Fig. 5 receiving DTCs from active controllers categorized with SPN and FMI codes, i.e., SPN 629 FMI 12, SPN 629 FMI 13; [0075] The information includes: […] DTCs present for that controller (e.g., SAE J1939 defined suspect parameter number (SPN) and failure mode identifier (FMI); [0108] the system determines if the any of the controllers have error codes that indicate a loss of communication for an expected parameter group number […] Next it is determined if any controllers have error codes that indicate a loss of communication with another controller 812. Next it is determined if any controllers have error codes indicating a loss of communication with multiple controllers 814);
and “receiving historical DTCs from the vehicle” (Fig. 18 get previous or stored faults – DTCs),
Independent claim 10 is directed towards a device but recite similar limitations as the representative independent method claim 1. The “generate…”, “filter…”, “identify…”, “determine…”, “compare…”, and “assign…” limitations are treated as abstract ideas - mental processes in Step 2A, Prong I, and the “transmit…”, “receive…”, “receive…”, and “receive…” limitations are additional elements that are insignificant extra-solution activities in Step 2A, Prong II. All the additional limitations are well-understood, routine, and conventional activity as evidenced by the cited case law and further supported by the cited art Ritter.
Independent claim 19 is directed towards a method but recite similar limitations as the representative independent method claim 1. The “executing…”, “determining…”, “comparing…”, and “assigning…” limitations are treated as abstract ideas - mental processes in Step 2A, Prong I, and the “establishing…”, “transmitting…”, “receiving…”, “receiving…”, and “receiving…” limitations are additional elements that are insignificant extra-solution activities in Step 2A, Prong II. All the additional limitations are well-understood, routine, and conventional activity as evidenced by the cited case law and further supported by the cited art Ritter.
Dependent claims 4-7, 9, 13-18, and 21-22 do not recite any further limitations that cause the claims to be patent eligible. Rather, the limitations of dependent claims are directed toward additional aspects of the judicial exception and/or well-understood, routine and conventional additional elements that do not integrate the judicial exception into a practical application, specifically only reciting/elaborating on the additional activities in the generating or identifying steps that may also be reasonably performed in the human mind (i.e., claim 4: “generating…”, claim 7: “identifying…”, claim 13” “generating…”, claim 16: “identifying…”, claim 21: “identifying…”, claim 22: “identify…”), and reciting/elaborating on additional insignificant extra-solution activities (mere data gathering and data transmitting, i.e., claim 6: “receiving…”, claim 9: “requesting…”, claim 15: “receiving…”, claim 17: “receive…”, claim 18: “request…”), or generally link the use of a judicial exception to a vehicular environment (i.e., claim 5: “shared communication networks…”, claim 14: “associated communication networks…”). All the additional limitations are well-understood, routine, and conventional activity as exemplified by the cited art Ritter.
Allowable Subject Matter
Claims 1, 4-7, 9-10, 13-19, and 21-22 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office Action.
The following is a statement of reasons for the indication of allowable subject matter:
The prior arts on record do not teach, describe, and/or suggest all the limitations as presented in the claim as a whole, specifically, comparing the primary probable cause ECU to the secondary probable cause; and assigning a probability that the primary probable cause ECU is correct based on the comparison of the primary probable cause ECU to the secondary probable cause.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US-20190213605-A1: Patel teaches: receiving historical DTCs from the vehicle ([0009] The method may further comprise receiving one or more previous DTCs from the vehicle, where the determining is further based on the one or more previous DTCs; [0040] Method 200 may receive further data in addition to the current DTC and snapshot from the vehicle. This may include receiving past DTC and snapshot data for the vehicle, vehicle type, vehicle make and model, dealership or shop information, warranty claim information, vehicle repair and warranty claim history, or other information. […] This additional information may be received from the vehicle by the connection established above in step 210).
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/DAVIN SEOL/Examiner, Art Unit 3662