DETAILED ACTION
The following FINAL Office Action is in response to Applicant’s Response filed on 08/08/2025.
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 . 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 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.
Status of Claims
Claims 20-21 were previously pending and subject to a non-final Office Action mailed 02/18/2025. Claims 20-21 were amended. Claims 20-21 are currently pending and are subject to the final Office Action below.
Response to Arguments
Claim Interpretation
Applicant has amended Claim 20 by removing recitation of the word “means” to avoid the interpretation under 35 U.S.C. 112(f). Accordingly, the claim is no longer interpreted under 35 U.S.C. 112(f).
35 USC § 112
Applicant has amended Claim 20 by clarifying the limitations Examiner noted. Accordingly, the 35 U.S.C. 112(b) rejections of Claims 20-21 have been rendered moot and thus, have been withdrawn.
35 USC § 101
Applicant’s arguments, see pages 8-21 of Applicant’s Remarks, filed 08/08/2025, with respect to the 35 U.S.C. 101 rejections of Claims 20-21 have been fully considered and are not persuasive.
Regarding Applicant’s argument on page 10 that the 101 rejection is improper, Examiner respectfully disagrees. Examiner established the BRI of the entire claim and considered every limitation (even in light of the specification) in order to determine (1) the boundaries of the coverage sought by the claim, (2) whether the claim seeks to cover subject matter that is beyond the four statutory categories or (3) whether the claim encompasses subject matter that falls within the exceptions. As noted within the Office Action, Examiner noted the limitations of Claim 20 which recite the judicial exception and determined the claim was directed to organizing human activity (specifically commercial interactions).
Regarding Applicant’s arguments on page 11-12 “specifically configured electronic components”, Examiner respectfully disagrees. MPEP2106.05(b) states “If applicant … asserts that the claim recites significantly more because the generic computer is 'specially programmed' (as in Alappat, now considered superseded) or is a 'particular machine' (as in Bilski), the examiner should look at whether the added elements integrate the exception into a practical application or provide significantly more than the judicial exception. Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 223-24, 110 USPQ2d 1976, 1983-84 (2014). See In re Alappat, 33 F.3d 1526, 1545, 31 USPQ2d 1545, 1558 (Fed. Cir. 1994); In re Bilski, 545 F.3d 943, 88 USPQ2d 1385 (Fed. Cir. 2008)”.
Following the MPEP guidance, Examiner considered the additional elements and determined they do not integrate the exception into a practical application or provide significantly more than the judicial exception. Applicant’s additional elements (electric vehicle user interface node, receiver node, processor, electric vehicle database, smart grid communication network, authorized third party, etc.) are recited at a high-level of generality (generic computer/functions), 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. See MPEP 2106.05(f).
Regarding Applicant’s arguments on page 13 that the technology improves the function of a standard computing system and improves the technical field of electric vehicle systems, user privacy, and fee assessment by configuring specialized computing systems with software such that they operate on a network in a manner that improves a user’s ability to manage electric vehicle interactions, Examiner respectfully disagrees.
It is unclear how exactly Applicant’s claimed invention improves the function of a standard computing system. Examiner further notes that improving a user’s ability to manage electric vehicle interactions is not an improvement to technology, but an improvement in the abstract idea itself. See MPEP 2106.05(a)(II), “However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’ v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology.”
Regarding Applicant’s arguments on page 13-14 that the Office Action should clearly articulate reasons why the claimed invention is not eligible by providing a reasoned rationale, Examiner respectfully disagrees that the rationale was not provided. Examiner clearly identified the limitations which are directed to the abstract idea and explained why the limitations are directed to a commercial interaction.
Regarding Applicant’s arguments on pages 14-16 that the Office merely recites certain limitations and makes conclusory statements, Examiner respectfully disagrees. Examiner identified the specific limitations considered in light of the specification and provided support and rationale as to why the limitations do not qualify as significantly more. By stating the limitations and identifying whether they were mere instructions to apply an exception using a generic computer, Examiner has provided a reasoned analysis as to why the limitations do not qualify as significantly more.
Additionally, Examiner notes that the Office Action clearly identifies that the claims are directed to commercial interactions. Second, the Office Action does not mention that the claims are directed to mental processes.
Applicant further argues that neither mere mental processes nor generic computer can determine, record, and calculate the geographic position of the EV and distinguish travel and charging session information.
Examiner noting that the additional elements amount to mere instructions to apply the judicial exception using generic computer components as the judicial exception “distinguish travel and charging session information” is performed by generic computer components. Further, it is unclear which limitation involves determining, recording, and calculating the geographic position of the EV.
Regarding Applicant’s argument on pages 17, Examiner respectfully disagrees. Examiner established the BRI of the entire claim and considered every limitation (even in light of the specification) before explicitly stating the limitations which are directed to the abstract idea. Further, the additional elements were considered and Examiner provided rationale by stating that the additional elements are recited at a high level of generality such that they amount to mere instructions to implement an abstract idea on a computer.
Examiner further noting it is unclear what Applicant is referring to on page 17 regarding “insignificant extra solution activity” as Examiner did not mention that at all in the Office Action.
Regarding Applicant’s argument on pages 18, Examiner respectfully disagrees. The Office is not alleging that the instantly claimed invention and the physical programming embedded therein can be purchased or used on an off the shelf personal computer. Examiner noted that specific additional elements are recited at a high-level of generality such that it amounts to no more than mere instructions to apply the judicial exception using generic computer components. Further, Examiner notes that there were no mentions of mental processes or “processes performed in someone’s head including geo-positioning satellite information” in the Office Action.
Regarding Applicant’s argument on pages 19-20, Examiner respectfully disagrees. Regarding (1), (3), (5), and (6), Examiner has already addressed this previously and noted that Applicant’s claimed invention provides an improvement to the abstract idea itself.
Regarding (4) specifically, transformation of an article means that the article has changed to a different state or thing. It is unclear what Applicant’s claimed “transformation” is.
Regarding (7), Examiner notes that MPEP2106.05(I)(A) does not list point (7) as a relevant consideration for evaluating whether additional elements amount to an inventive concept. Examiner further noting Applicant’s claims do not provide an additional element which qualifies as significantly more when recited in a claim with a judicial exception.
Further Applicant does not provide explanations as to how the claimed invention recites (1), (3), (4), (5), (6), and/or (7).
Accordingly, the 35 U.S.C. 101 rejection of Claims 20-21 Is maintained.
35 USC § 103
Applicant’s arguments, see pages 22-26 of Applicant’s Remarks, filed 08/08/2025, with respect to the 35 U.S.C. 103 rejection of Claims 20-21 have been fully considered and are persuasive. The 35 U.S.C. 103 rejection of Claims 20-21 has been withdrawn.
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 20-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 20-21 are directed to a system (i.e., a machine).
Step 2A Prong 1
Claim 20 recites the limitations of:
… securely receives and stores electronic data … representative of electric vehicle user charger session information from an electric utility service provider;
… securely receives and stores electronic data representative of thoroughfare usage attributable to discrete jurisdictions traveled by the electric vehicle user interface node based on mileage driven on the basis of roadway class and waypoints traversed;
…determines the amount of usage fees to be billed to an individual electric vehicle user based on the electric vehicle user charger session information and the discrete jurisdictions traveled;
…determines the collective usage fees attributable to one or more other electric vehicle users to be collected that will be remitted to a jurisdictional authority for a defined billing period;
…allowing the authorized third party to transmit the remittance calculations to the electric utility service provider for inclusion in an electric vehicle user periodic billing;
…calculates a remittance amount owed between two or more jurisdictional authorities and prepares a usage fee remittance advice to the two or more jurisdictional authorities; and
…processes payment received from said electric utility service provider and electronically transmits monetary sums to said jurisdictional authority.
The limitations of Claim 20 stated above are processes that under broadest reasonable interpretation covers “certain methods of organizing human activity”. Specifically, commercial interactions regarding settling electric vehicle usage fees between electric utility service providers, jurisdictional authorities, individual electric vehicle user, one or more electric vehicle users, and an authorized third party in light of paragraph 20 of Applicant’s specification which states “the technology as disclosed herein includes methods and apparatuses for the assessment of roadway fees for electric and hybrid-electric vehicles, and, more particularly, to systems and methods that utilize an electric utility's smart grid communication network to assist in the automated assessment of fees attributable to the usage of roadways and waypoints (e.g., bridges, dams, tunnels, etc.) traveled by electric or hybrid-electric vehicles over publicly or privately funded thoroughfares.”
Step 2A Prong 2
The judicial exception is not integrated into a practical application. Claim 20 recites the additional elements of a smart grid communication network including an electric vehicle user interface node and a receiver node, said receiver node is remotely located with respect to the electric vehicle user interface node and said receiver node having a processor and an electric vehicle database [where said processor processes software] and an authorized third party and that the data is digitally received.
The additional elements noted above are recited at a high-level of generality (generic computer/functions), 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. See MPEP 2106.05(f) “Mere Instructions to Apply an Exception”.
Thus, the claim as a whole, looking at the additional elements individually and in combination, does not integrate the judicial exception into a practical application as the additional elements are mere instructions to apply the judicial exception using generic computer components which does not impose meaningful limits on practicing the abstract idea. The 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 above with respect to integration of the abstract idea into a practical application, the additional elements used to perform the steps/functions recited above amounts to no more than mere instructions to apply the exception using a generic computer. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
None of the steps/functions of Claim 20 when evaluated individually or as an ordered combination amount to significantly more than the abstract idea. The additional elements are merely used to perform the limitations directed to organizing human activity, thus, the analysis does not change when considered as an ordered combination. Even when considered in combination, these additional elements represent mere instructions to apply an exception using a generic computer which cannot provide an inventive concept. Thus, the additional elements do not meaningfully limit the claim. Accordingly, Claim 20 is ineligible.
Dependent Claim 21 when considered both separately and in ordered combination with claim 20 does not overcome the above analysis.
Claim 21 further specifies various activities the database performs. “Collecting”, “computes”, “communicates”, “provides”, “facilitates”, and “transmits” are all part of the abstract idea as the claim is managing commercial interactions (settling usage fees) between the electric utility service providers, jurisdictional authorities, individual electric vehicle user, one or more electric vehicle users, and an authorized third party with the addition of one or more private entity and one or more utility service providers.
Thus, Claims 21 further narrows the identified abstract idea noted but does not otherwise alter the analysis presented above. Nothing in dependent claim 21 adds additional elements that are sufficient to amount to significantly more than the judicial exception. Claims 20-21 are ineligible.
Closest Prior Art
The following is a statement of reasons for the indication of closest prior art: Examiner is unaware of any combination of available prior art which teaches or suggests all the limitations within Claim 20 in a manner in which it is obvious to combine the references. Examiner noting that claims 20-21 are still rejected under 35 U.S.C. 101.
The following are the closest prior art:
Tonnon et al. (2011/0218896) teaches in para. 25 “Payment computer system 105 may interact with jurisdiction computer system 107 to receive travel information on vehicles or may receive such travel information directly from vehicles.”; para. 23-26 where the vehicle (instead of providing actual location or how much distance) provides how much time spent, what roads used, and what time the roads were used in a jurisdiction to the payment system or jurisdiction system; para. 18 usage tax – where taxes are tied to where a vehicle has traveled and a payment system collects and pays taxes to various jurisdictions where travel has occurred and the payment system receives and processes information regarding a vehicle’s travels; para. 38-43 where in para. 38 the jurisdiction may compile an amount of the travel information for a period of time, para. 40 the jurisdictions may specify an amount due to the jurisdiction along with the travel information, para. 43 a vehicle operator is notified of the amounts debited, the billing period, amount due by jurisdiction, etc.; para. 44-46 and 53 the payment system transfers the amount collected from the vehicle operator to the jurisdictions; para. 47 where each jurisdiction receives a summary report stating the total amount due to the jurisdiction and the details of each fee due to the jurisdiction; para. 57-59 where the amount due transferred may indicate vehicle, operator, and amount of distance travelled.
Ambrosio et al. (US2010/0049610) teaches electric vehicle user charger session information from an electric utility service provider and figure 4 and para. 58-73 where in para. 59 and 72 charging process data is received from a charging station or energy transaction broker; para. 60-63 where the charging process data includes travel data (identification of roadways on which EV has travelled), vehicle data, and charge data; para. 42 payment is made during the charge phase and flexible business rules governing the flow of funds between parties are provided; para. 54-56 where payments or fees are provided during the charging phase and information generated during the charging process are collected, analyzed and distributed to third party principals; para. 67 where third party principals include utility companies, government agencies, public/private corporations, etc.; para. 69 where the third party principal may be a transit authority or government agency.
Prosser et al. (US2012/0116955) teaches in para. 28-29 where a consumer may go to a store or restaurant where a charging station exists and receive an electric charge for their vehicle and also buy other non-utility related goods and the customer elects to have purchase billed to his utility bill thus the fee would be shared between the local utility and other entities; para. 76-79 where in the case of payments going to the EV operator’s utility bill, the local utility makes appropriate payments to taxing authorities and an aggregator where the local utility pays an aggregator as the local utility would not make direct payments to small commercial entities or to distant utilities, the aggregator handles the small transactions and makes payments to smaller companies.
Tajima (US2011/0161143) teaches an EV providing route information while charging and a taxation server calculates all relevant taxes.
Milligan et al. (US2016/0140533) teaches a vehicle miles travelled system which collects taxes for electric vehicles.
Katta et al. (US2017/0161973) teaches a taxing entity system retrieving vehicle location data (which may have been obfuscated) and using the data to calculate a road usage tax.
Lowenthal et al. (US2009/0177580) teaches collecting a power consumption tax from electric vehicles.
Borras et al. (US2015/0134427) teaches determining a distance traveled by a vehicle for settling a road usage charge and fuel excise taxes can be subtracted from the road usage charge.
Conclusion
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.
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/L.M./Examiner, Art Unit 3628
/SHANNON S CAMPBELL/Supervisory Patent Examiner, Art Unit 3628