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 .
Examiner note: The TC Director has signed the Office Action below authorizing the reopening prosecution of this application, following the Patent Trial and Appeal Board decision rendered on January 30, 2026.
Status of the Claims
Claims 16-21, 23-33 are currently pending.
Claims 16-21, 23-33 were rejected under 35 USC § 101 as being directed to the abstract idea of certain methods of organizing human activities ( OA mailed on 8/19/2025). The Board reversed the rejection on 1/30/2026. Therefore, this grounds of rejection have been withdrawn by the examiner.
However, based on further evaluation as recommended by the Board ( see Patent Board Decision page 6), the claims now are being rejected under 35 USC § 101 as being directed to mental processes without significantly more as explained below.
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 16-21, and 23-33 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 16- 21 and 23- 27 are directed to a device (i.e., a machine); Claims 28-32 are directed to a system (i.e., a machine); and claim 33 is directed to a method (i.e., a process). Therefore, claims 16-21, and 23-33 all fall within the one of the four statutory categories of invention.
Step 2A, Prong One
Independent claim 16 substantially recites to ascertain a feature codeword dependent on a vehicle feature of the first vehicle; to compare the feature codeword with a plurality of different reference codewords for a corresponding plurality of different vehicles, wherein the plurality of reference codewords comprises multiple subgroups of reference codewords, the reference codewords of different subgroups have each been encrypted with a different character string, and the reference codewords of the same subgroup have been encrypted with the same character string; to determine, based on the comparisons, whether or not the first vehicle is authenticated for the function; to ascertain, based on the comparisons, that a first reference codeword from the plurality of reference codewords corresponds to a first feature codeword; and to ascertain, based on the character string that was used for encrypting the first reference codeword, a provider unit of a provider of the function and/or a billing unit for billing a fee for the function performed. Additionally, claim 28 recites a system for authenticating a first vehicle for a function, the system comprising: captur[ing] a vehicle feature of the first vehicle; and ascertain[ing] a feature codeword based on the vehicle feature; and authenticat[ing] the first vehicle based on the feature codeword.
The limitations stated above are processes/ functions that under broadest reasonable interpretation (i.e., authenticating a vehicle) covers mental processes concepts that can be performed in human mind ( including observation, evolution, judgment, and opinion) . Claim 33 recites similar limitations to claim 16, therefore, the claims recite an abstract idea.
Step 2A, Prong Two
The judicial exception is not integrated into a practical application. Claim 33 has no additional elements. Claims 16 and 28 as a whole amount to: (i) merely invoking generic components as a tool to perform the abstract idea or “apply it” (or an equivalent), and (ii) adds insignificant extra-solution activity to the judicial exception.
Claim 16 recites the additional elements of: (i) “device” which is recited at a high-level of generality (see paragraph [0026] According to a further aspect, a software (SW) program is described. The SW program can be designed to be executed on a processor and to thereby carry out the method described in this document), such that, when viewed as whole/ordered combination, it amounts to no more than mere instruction to apply the judicial exception using generic computer components or “apply it” (See MPEP 2106.05(f)).
Furthermore, claim 28 recites the additional elements of (ii) “a sensor unit that is configured”, which is recited at a high-level of generality (see para [0034] The provider unit110 can be designed to capture, by way of a sensor or by way of a sensor unit112, in particular by way of a camera, sensor data, in particular image data, relating to a vehicle feature122, in particular relating to the registration number, of the vehicle120), such that, when viewed as whole/ordered combination, amounts to insignificant extra-solution activity (e.g., pre-solution activity), such as mere data gathering (See MPEP 2106.05(g)).
Accordingly, when viewed as a whole and in ordered combination, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limitations on practicing the abstract idea and instead amount to no more than generic computer components used to implement the abstract idea. Thus, the claims are directed to an abstract idea.
Step 2B
As discussed above with respect to Step 2A Prong Two, the additional elements amount to no more than: (i) “apply it” (or an equivalent) and is not a practical application of the abstract idea and (ii) adds insignificant extra-solution activity to the judicial exception.
The same analysis applies here in Step 2B, i.e., (i) merely invoking the generic components as a tool to perform the abstract idea or “apply it” (See MPEP 2106.05(f)) and (ii) adds insignificant extra-solution activity to the judicial exception; do not integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B.
Therefore, the additional elements of: (i) a device (claim 16 and claim 28) and (ii) “a sensor unit that is configured” (claim 28) do not integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B. Thus, even when viewed as a whole/ordered combination, nothing in the claims adds significantly more (i.e., an inventive concept) to the abstract idea. Thus, the claims are ineligible.
Dependent Claims Step 2A:
Claim 17 recites upon determining that the first vehicle is authenticated for the function: send a response to a provider unit of a provider of the function in order to prompt provision of the function; and/or to send a response to a signaling unit to signal to a user of the first vehicle that it has determined that the first vehicle is authenticated for the function and/or prompt a billing unit to transfer a fee for the provided unction form a user of the first vehicle to the provider of the function,, which further narrows the previously identified abstract idea of claim 16. The additional element of “transmit”[ing]” is recited at a high-level of generality (see specification: [0016] the device can be designed to transmit a response to a signaling unit (e.g., to a light element such as a lamp) and amounts to extra-solution activity . The additional element of “a signaling unit” amounts to no more than using the computer as a tool to implement the abstract idea. Merely invoking the generic components as a tool to perform the abstract idea or “apply it” do not integrate the abstract idea into a practical application and does not provide an inventive concept.
Therefore, the additional element of: “transmitting” do not integrate the abstract idea into a practical application as discussed above. The extra-solution activity of “transmitting” is well-understood, routine, and conventional as evidenced by MPEP 2106.05 (d)(II)(i). Thus, even when viewed as a whole/ordered combination, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea. Thus, the claim is ineligible.
Claims 18-21 and 24-27 recite limitations that further narrow the previously identified abstract idea of claim 16. There are no additional elements to consider to determine that the additional elements are indicative of integration into a practical application. Therefore, even when viewed as a whole/ordered combination, nothing in the claims adds significantly more (i.e., an inventive concept) to the abstract idea. Thus, the claims are ineligible.
Claim 23 recites receive and store the plurality of reference codewords from one or more different service providers in order to bill a fee for function performed, which further narrows the abstract idea of claim 16. The additional element of “a reference database” is recited at a high-level of generality (see specification [0044] The reference database 200 can be stored on an independent broker system) and amounts to no more than using the computer as a tool to implement the abstract idea. Merely invoking the generic components as a tool to perform the abstract idea or “apply it” do not integrate the abstract idea into a practical application and does not provide an inventive concept. Therefore, the additional element of: “a database” do not integrate the abstract idea into a practical application as discussed above. Thus, even when viewed as a whole/ordered combination, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea. Thus, the claim is ineligible.
Claims 29-30 and 32. Claim 29 recites the system comprises at least one billing unit of a billing service provider; and receive from the billing service provider a predefined character string for encrypting the vehicle feature of a vehicle for ascertaining the feature codeword of the vehicle, which further narrows the previously identified abstract idea of claim 28. Claim 30 recites the system comprises at least one billing unit of a billing service provider; and receive from the billing service provider a predefined salt for encrypting the vehicle feature of a vehicle for ascertaining the feature codeword of the vehicle, which further narrows the previously identified abstract idea of claim 28. Claim 32 recites the system further comprises a plurality of different authentications for a corresponding plurality of respectively different reference codewords; and to ascertain, based on a property of the ascertained feature codeword, to which of the plurality of different authentications the feature codeword is to be sent for authentication, which further narrows the previously identified abstract idea of claim 28. The additional element of a “sensor unit” (claims 29 and 30) which do not integrate the abstract idea into a practical application it is recited at a high-level of generality (see specification [0019] The system comprises a sensor unit (e.g. having a camera) which is designed to capture a vehicle feature (in particular a registration number) of the first vehicle), and because it amounts to insignificant extra-solution activity (e.g., pre-solution activity). Therefore, the additional element of: “sensor unit” do not integrate the abstract idea into a practical application as discussed above. The extra-solution activity of “sensor unit configured to capture” is well-understood, routine, and conventional activity such as mere data gathering (See MPEP 2106.05(g)). The additional element of “a device” (claim 32) amounts to no more than using the computer as a tool to implement the abstract idea. Merely invoking the generic components as a tool to perform the abstract idea or “apply it” do not integrate the abstract idea into a practical application and does not provide an inventive concept. Thus, even when viewed as a whole/ordered combination, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea. Thus, the claims are ineligible.
Claim 31 recite limitations that further narrow the previously identified abstract idea of claim 28. There are no additional elements to consider to determine that the additional elements are indicative of integration into a practical application. Therefore, even when viewed as a whole/ordered combination, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea. Thus, the claim is ineligible.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Althen (US20220374890A1) related to a system and method for toll payment
Templ (US 2013/0293349 A1) related to a system and method for authenticating a user/ vehicle-id and associating access rights and privileges.
Martin (US 20160362084 A1) related to a system and method for autonomous vehicle theft prevention.
Prakash (US 2016/0171479 A1) related to a system and method for provisioning platform for machine-to-machine devices.
Bartlett (US 20190221068A1) related to a system and method for fuel payment verification and processing.
Ricci (US 2018/0012427 A1) related to a system and method for payment communication to third party through a vehicle.
Chang ( US20200258074 A1) related to a system and method for vehicle-based payments.
Conclusion
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/M.A.A./Examiner, Art Unit 3628
/TARIQ R HAFIZ/Director, Art Unit 3600
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