DETAILED ACTION
Response to Amendment
Responsive to the Request for Continued Examination (RCE) field August 05, 2025. Claim 1 was amended. Claim 3 was canceled. Claims 1-2 and 4-13 remain pending. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 1-2 and 4-13 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 claims 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 1 was amended to include that wherein the enabling energy transfer is responsive to the vehicle or the vehicle accessory detecting an energy transfer connection capable of transferring energy between the vehicle and the vehicle accessory has been formed between the vehicle and the vehicle accessory by sensing from input of a sensor that a distance between the vehicle and the vehicle accessory is within a maximum length of a physical connection. However, there appears to be no clear support for the limitation by sensing from input of a sensor that a distance between the vehicle and the vehicle accessory is within a maximum length of a physical connection in the cited section (paragraph [0057]) or any part of the original disclosure. Nothing in the original disclosure supports detecting an energy transfer connection by sensing from input of a sensor that a distance between the vehicle and the vehicle accessory is within a maximum length of a physical connection. Paragraph [0057] discusses detecting that energy transfer has been disabled (not enabled) by determining the energy transfer connection has been broken such as the vehicle sense the vehicle accessory or vice versa in not more, or further than, a predetermined distance that exceeds the length of the physical connection. There is no teaching of enabling by sensing from an input of a sensor that the distance is within a maximum length of the physical connection. Clarification of proper support is requested.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
In the response, the Applicant argues with substance:
Argument: Applicant respectfully submits that Claims 1-2 and 4-13 are directed to statutory subject matter. Accordingly, Applicant respectfully requests the rejections under 35 U.S.C. 101 be withdrawn and the claims allowed.
In response, the Examiner respectfully disagrees. As explained in the 101 rejection below, the claimed invention is directed to the concept of automatically billing an energy exchange. This judicial exception is not integrated into a practical application similar to that shown in MPEP 2106.05. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception and do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The Applicant’s specification does not provide any indication that the additional elements are anything other than a generic, off-the-shelf computer. In paragraph [0080] the Applicant explains that the computer can merely be a general purpose computer. The claims merely invoke the additional elements as tools that are being used in their ordinary capacity. The implementation of the abstract idea on generic computers and/or generic computer components does not add significantly more, similar to how the recitation of the computer in Alice amounted to mere instructions to apply the abstract idea on a generic computer.
Further, the courts have found that simply limiting the use of the abstract idea to a particular environment does not add significantly more. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Additionally, the October 2019 Update explains on pages 7-8 that claims do recite a mental process when the claim limitations can practically be performed in the human mind. Examples of claims that recite mental processes include Electric Power Group, LLC which was directed to collection information, analyzing it, and displaying certain results of the collection and analysis and Classen which was directed to collecting and comparing known information. The courts have also found that claims that require a generic computer may still recite a mental process even though the limitations are not performed entirely in the human mind (page 8 of the October 2019 Update).
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 1-2 and 4-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claimed invention is directed to the concept of automatically billing an energy exchange. This judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception and do not integrate the abstract idea into a practical application because they does not impose any meaningful limits on practicing the abstract idea.
The Examiner will further explain in view of the 2019 Revised Patent Subject Matter Eligibility Guidance using exemplary claim 1:
A computer-implemented method for automatically electronically billing an energy exchange between at least one vehicle and at least one vehicle accessory, where the method comprises, at one or more of the vehicle, the vehicle accessory, and a remote server:
detecting the type of vehicle or vehicle accessory;
enabling energy transfer between one or more energy stores of the vehicle and one or more energy stores of the vehicle accessory in one or both directions when the vehicle and vehicle accessory are moving or stationary; wherein the enabling energy transfer is responsive to the vehicle or the vehicle accessory detecting an energy transfer connection capable of transferring energy between the vehicle and the vehicle accessory has been formed between the vehicle and the vehicle accessory by sensing from input of a sensor that a distance between the vehicle and the vehicle accessory is within a maximum length of a physical connection;
measuring the amount of transferred energy; and
calculating the cost for the transferred energy.
The claim recites a series of steps and therefore is directed to a process, which satisfies step 1 of the Section 101 analysis. Under the new two-prong inquiry, the claim is eligible at revised step 2A unless it: Prong One: the claim recites a judicial exception; and Prong Two: the exception is not integrated into a practical application of the exception.
The above claim steps are directed to the concept of automatically billing an energy exchange, which is an abstract idea directed to commercial interactions such as sales activities and falls within the Certain Methods of Organizing Human Activity grouping. (Prong one: YES, recites an abstract idea) and is also a fundamental economic principle of mitigating risk and falls within the Certain Methods of Organizing Human Activity.
The claim limitations do not include additional elements that are sufficient to amount to significantly more than the judicial exception and do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. (Prong Two: NO, does not recite additional elements that integrate the abstract idea into a practical application similar to that shown in MPEP 2106.05).
Under step 2B, the claimed invention does not recite additional elements that are indicative of an inventive concept. The additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. Mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
The remaining claims are rejected under similar grounds and do not recite and additional elements that amount to significantly more than the abstract idea.
Furthermore, it is noted that the implementation of the abstract idea on generic computers and/or generic computer components does not add significantly more, similar to how the recitation of the computer in Alice amounted to mere instructions to apply the abstract idea on a generic computer. The claims merely invoke the additional elements as tools that are being used in their ordinary capacity. Further, the courts have found that simply limiting the use of the abstract idea to a particular environment does not add significantly more. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improve any other technology. Their collective functions merely provide generic computer implementation.
Regarding computer functions, MPEP 2106.05(d)(II) states: The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity:
i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); 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); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added));
ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.");
iii. Electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93;
v. Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition); and
vi. A web browser’s back and forward button functionality, Internet Patent Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015).
Below are examples of other types of activity that the courts have found to be well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity.
i. Recording a customer’s order, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244, 120 USPQ2d 1844, 1856 (Fed. Cir. 2016);
ii. Shuffling and dealing a standard deck of cards, In re Smith, 815 F.3d 816, 819, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016);
iii. Restricting public access to media by requiring a consumer to view an advertisement, Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014);
iv. Identifying undeliverable mail items, decoding data on those mail items, and creating output data, Return Mail, Inc. v. U.S. Postal Service, -- F.3d --, -- USPQ2d --, slip op. at 32 (Fed. Cir. August 28, 2017);
v. Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93;
vi. Determining an estimated outcome and setting a price, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; and
vii. Arranging a hierarchy of groups, sorting information, eliminating less restrictive pricing information and determining the price, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331, 115 USPQ2d 1681, 1699 (Fed. Cir. 2015).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ramsey Refai whose telephone number is (313)446-4867. The examiner can normally be reached M-F 9am-5pm EST.
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RAMSEY REFAI
Primary Examiner
Art Unit 3664
/RAMSEY REFAI/Primary Examiner, Art Unit 3664