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 is a non-final Office Action on the merits. Claims 1-27 are currently pending and are addressed below. Claims 24-27 have been entered.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 13 April 2026 has been entered.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 04/13/2026 & 05/19/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Applicant's amendments and arguments with respect to the rejection of claims 21-22 under 35 USC 112(a) & 35 USC 112(b) as set forth in the office action of 28 October 2025 have been considered and are persuasive. Therefore, the rejection of claims 21-22 under 35 USC 112(a) & 35 USC 112(b) as set forth in the office action of 28 October 2025 has been withdrawn.
Applicant’s amendments and/or arguments with respect to the rejection of Claims 1-23 under 35 USC 101 as set forth in the office action of 28 October 2025 have been considered and are NOT persuasive. Specifically, Applicant argues:
As set forth in the office action, the Examiner rejected claims 1-23 under 35 U.S.C. § 101 as allegedly being directed to an abstract idea without significantly more.
Under Step 2A, Prong I, the Examiner characterizes certain limitations of claim 1 as a "mental process," including "determining, by a processor, a functional test to perform on a vehicle," "determining, by the processor, a component test to perform on the vehicle by a digital meter or an oscilloscope operatively coupled to the processor," and "determining, by the processor, one or more parameter identifiers (PIDs) corresponding to the functional test." Office action, page 9.
Under Step 2A, Prong II, the Examiner further asserts the additional limitations do not integrate the alleged abstract idea into a practical application because they do not reflect an improvement in the functioning of a computer or an improvement to another technology or technical field. Office action, page 12.
Applicant respectfully disagrees.
Claim 1, as amended, recites additional limitations that meaningfully integrate any alleged abstract idea into a practical application. For example, claim 1 now recites, inter alia:
. configuring, by the processor, a digital meter or oscilloscope using configuration
parameters stored in a non-transitory memory; and
. performing a component test at least during a time period in which a functional test
is performed and vehicle data messages are transmitted and received.
Additionally, claim 1 recites outputting a graphical user interface that simultaneously presents:
. a user-selectable control corresponding to performing a functional test,
. parameter values corresponding to one or more PIDs, and
. a textual or graphical measurement obtained using the digital meter or oscilloscope
during performance of the component test.
These limitations are not merely generic computer implementation. Rather, they reflect a specific technological improvement to vehicle diagnostic systems. As described in the specification at paragraphs 0003 and 00671, prior systems operated in "silos," requiring separate tools and separate interactions for scan tool functionality and meter functionality, and did not permit simultaneous operation.
In contrast, claim 1 provides a coordinated diagnostic technique in which:
. a processor configures a test device (e.g., oscilloscope),
. executes a functional test,
. transmits and receives vehicle data messages, and
. concurrently performs a component test and presents corresponding measurements
via a graphical user interface.
This integration enables simultaneous execution and visualization of multiple diagnostic functions, thereby improving the efficiency and capability of vehicle diagnostic tools. Such an arrangement is rooted in computer and test-device technology and goes well beyond merely performing a mental process or generically linking an abstract idea to a technological environment. Accordingly, when considered as a whole, claim 1 integrates any alleged abstract idea into a practical application and is therefore patent-eligible under Step 2A, Prong II.
Applicant respectfully requests withdrawal of the rejection of claim1 under 35 U.S.C. § 101.
For at least the same reasons, and in view of the substantial overlap in subject matter, Applicant respectfully requests withdrawal of the § 101 rejections of independent claims 19 and 20. Applicant further requests withdrawal of the § 101 rejections of dependent claims 2-18 and 21-23, which depend from allowable claim 1.
The Examiners Response:
Examiner has carefully considered Applicant’s amendments and arguments and respectfully disagrees. Regarding the claimed invention, the claims as of right now merely have steps which determine which test to perform on a vehicle, performs the tests to obtain results and displays the information to a user. See MPEP 2106.04(a)(2), 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).
Furthermore, the addition of an electronic device (processor) that performs the recited mental steps cannot transform a patent-ineligible abstract idea into a patent-eligible invention, see MPEP 2106.04(a)(2), Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer"). Mental processes recited in claims that require computers are explained further below with respect to point C.…In contrast, claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. 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).
Finally, the argued improvement of a specific technological improvement to vehicle diagnostic systems, this improvement is never claimed in the current claims. In addition, Improving the abstract idea is not enough to integrate the abstract idea into a practical application, see Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a *new* abstract idea is still an abstract idea") (emphasis in original)….even if the steps are groundbreaking, innovative, or brilliant, the improvement is to the abstract idea rather than to computers or technology. See Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); accord SAP Am., 898 F.3d at 1163 (“No matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm. An advance of that nature is ineligible for patenting.”). As such, even in combination, these additional elements, under broadest reasonable interpretation, do not integrate the abstract idea into practical application because they do not impose any meaningful limitations on practicing the abstract idea. /* Examiner suggest including language closer to showing that control of a component occurs due to the performance of the test to assist in overcoming the 101. */
Applicant's amendments and arguments with respect to the rejection of claims 1-23 under 35 USC 103 as set forth in the office action of 28 October 2025 have been considered and are persuasive. Therefore, the rejection of claims 1-23 under 35 USC 103 as set forth in the office action of 28 October 2025 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 1-27 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
Claim 1 is directed to a method, claim 19 is directed to a system and claim 20 is directed to one or more non-transitory computer-readable media. Therefore, claims 1, 19 and 20 are within at least one of the four statutory categories.
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 follow 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 rejection. The other analogous claims 19 and 20 are rejected for the same reasons as the representative claim 1 as discussed here. Claim 1 recites:
A method comprising:
determining, by a processor, a functional test to perform on a vehicle; determining, by the processor, a component test to perform on the vehicle by a digital meter or an oscilloscope operatively coupled to the processor, wherein the component test includes configuration parameters for configuring the digital meter or the oscilloscope;
determining, by the processor, one or more parameter identifiers (PIDs) corresponding to the functional test;
configuring, by the processor, the digital meter or the oscilloscope to perform the component test by storing the configuration parameters of the component test at addresses of a non-transitory memory where configuration parameters of the digital meter or the oscilloscope are stored;
initiating, by the processor, a performance of the component test on the vehicle by the digital meter or oscilloscope while the configuration parameters of the component test are stored as the configuration parameters of the digital meter or the oscilloscope;
transmitting, by the processor to the vehicle during the performance of the component test, a first set of vehicle data messages and a second set of vehicle data messages, wherein the first set of vehicle data messages includes a first vehicle data message to request performance of the functional test and the second set of vehicle data messages includes vehicle data messages including the one or more PIDs;
receiving, by the processor from the vehicle during the performance of the component test, a third set of vehicle data messages including parameter values corresponding to the one or more PIDs, wherein the performance of the component test occurs at least during a time period while the functional test is performed, the first and second sets of vehicle data messages are transmitted, and the third set of vehicle data messages are received;
and outputting, by the processor on a display, a first graphical user interface including a user- selectable control corresponding to performance of the functional test, a textual description corresponding to each of the one or more PIDs, parameter values corresponding to the one or more PIDs, and a textual or graphical measurement made using the digital meter or the oscilloscope during based on the performance of the component test.
The examiner submits that the foregoing bolded limitation(s) constitute a “mental process” because under its broadest reasonable interpretation, the claim covers performance of the limitation in the human mind. For example, “determining …” and “configuring …” all the various data in the context of this claim encompasses a person looking at data collected (received, detected, etc.) and forming a simple judgement (determination, analysis, comparison, etc.) either mentally or using a pen and paper. Accordingly, the claim recites at least one abstract idea. The Examiner notes that under MPEP 2106.04(a)(2)(III), the courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same).
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 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”):
A method comprising:
determining, by a processor, a functional test to perform on a vehicle; determining, by the processor, a component test to perform on the vehicle by a digital meter or an oscilloscope operatively coupled to the processor, wherein the component test includes configuration parameters for configuring the digital meter or the oscilloscope;
determining, by the processor, one or more parameter identifiers (PIDs) corresponding to the functional test;
configuring, by the processor, the digital meter or the oscilloscope to perform the component test by storing the configuration parameters of the component test at addresses of a non-transitory memory where configuration parameters of the digital meter or the oscilloscope are stored;
initiating, by the processor, a performance of the component test on the vehicle by the digital meter or oscilloscope while the configuration parameters of the component test are stored as the configuration parameters of the digital meter or the oscilloscope;
transmitting, by the processor to the vehicle during the performance of the component test, a first set of vehicle data messages and a second set of vehicle data messages, wherein the first set of vehicle data messages includes a first vehicle data message to request performance of the functional test and the second set of vehicle data messages includes vehicle data messages including the one or more PIDs;
receiving, by the processor from the vehicle during the performance of the component test, a third set of vehicle data messages including parameter values corresponding to the one or more PIDs, wherein the performance of the component test occurs at least during a time period while the functional test is performed, the first and second sets of vehicle data messages are transmitted, and the third set of vehicle data messages are received;
and outputting, by the processor on a display, a first graphical user interface including a user- selectable control corresponding to performance of the functional test, a textual description corresponding to each of the one or more PIDs, parameter values corresponding to the one or more PIDs, and a textual or graphical measurement made using the digital meter or the oscilloscope during based on the performance of the component test.
For the following reason(s), the examiner submits that the above identified additional limitations do not integrate the above-noted abstract idea into a practical application.
Regarding the additional limitations above, the examiner submits that these limitations are insignificant extra-solution activities that merely use a computer (processor) to perform the process. In particular, the receiving step is recited at a high level of generality (i.e. as a general means of receiving information), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. In addition, the added limitation of “initiating…” will be treated as an additional element that is an extra-solution activity as it merely starts a test using well know tools in the art (multimeter/oscilloscope) to test a system/component and wait for its response (data-gathering). The transmitting and outputting steps are also recited at a high level of generality and amounts to mere post solution action, which is a form of insignificant extra-solution activity. Lastly, claims 19 and 20 further recite “A computing system comprising: a display; a processor; and a non-transitory computer-readable memory having stored thereon instructions executable by the processor to perform functions, the functions comprising:” and “A non-transitory computer-readable memory having stored therein instructions executable by a processor to cause a computing system to perform functions, the functions comprising:” merely describes how to generally “apply” the otherwise mental judgements in a generic or general purpose vehicle diagnostic environment. See Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”). The device(s) and processor(s) are recited at a high level of generality and merely automates the steps.
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, 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, as discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform the steps amounts to nothing more than applying the exception using a generic computer component. Generally applying an exception using a generic computer component cannot provide an inventive concept. And as discussed above, the additional limitations discussed above are insignificant extra-solution activities.
The additional limitations of receiving information are well-understood, routine and conventional activities because the specification does not provide any indication that the processor is anything other than a conventional computer. MPEP 2106.05(d)(II), and the cases cited therein, including Intellectual Ventures I, LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016), TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610 (Fed. Cir. 2016), and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner.
Dependent claims 2-18 and 21-27 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 additional elements that do not integrate the judicial exception into a practical application. The dependent claims merely recite additional limitations such as “determining”, “outputting”, “displaying”, “transmitting” and “receiving”. Therefore, dependent claims 2-18 and 21-23 are not patent eligible.
Therefore, claims 1-27 are ineligible under 35 USC §101.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOISES GASCA ALVA JR whose telephone number is (571)272-3752. The examiner can normally be reached Monday-Friday 6:30 - 4:00. 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.
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/MOISES GASCA ALVA/Examiner, Art Unit 3667
/FARIS S ALMATRAHI/Supervisory Patent Examiner, Art Unit 3667
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