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 . Claims 1-14 are pending.
Drawings
Applicant’s replacement figures filed 1/9/26 are acceptable and have been entered.
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 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more.
Step 1 (The Statutory Categories): Is the claim to a process, machine, manufacture or composition of matter? MPEP 2106.03.
Per Step 1, claim 1 is to a system (i.e., a machine), claim 8 to a method (i.e., a process). Thus, the claims are directed to statutory categories of invention. However, the claims are rejected under 35 U.S.C. 101 because they are directed to an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application.
The analysis proceeds to Step 2A Prong One.
Step 2A Prong One: Does the claim recite an abstract idea, law of nature, or natural phenomenon? MPEP 2106.04.
The abstract idea of claims 1 and 8 is (claim 1 representative):
analyze the received communications for data related to the remote asset;
determine if the data indicates an issue in relation to the remote asset by comparing the data to one or more thresholds;
if so:
determine a prescribed action based on the issue and the data;
automatically determine a resource for the prescribed action, warranty status for the issue, chronic repair status, and standard work instructions;
if not, continue to receive and analyze the received communications.
The abstract idea steps italicized above are those which could be performed mentally, including with pen and paper. The steps describe, at a high level: 1) analyzing data; 2) determining if the data indicates an issue relating to a remote asset; 3) if so, determining an action and resources for the action; 4) if not, continuing to receive and analyze data. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, including observations, evaluations, judgements, and/or opinions, then it falls within the Mental Processes – Concepts Performed in the Human Mind grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Additionally and alternatively, the abstract idea steps italicized above describe the rules or instructions relating to managing a remote asset, which constitutes a process that, under its broadest reasonable interpretation, covers managing personal behavior relationships, interactions between people. This is further supported by [0004] of applicant’s specification as filed. If a claim limitation, under its broadest reasonable interpretation, covers managing personal behavior relationships, interactions between people, including social activities, teaching, and/or following rules or instructions, then it falls within the Certain Methods of Organizing Human Activity – Managing Personal Behavior Relationships, Interactions Between People grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong Two: Does the claim recite additional elements that integrate the judicial exception into a practical application? MPEP 2106.04.
Claim 1 recites the following additional elements: a server running software to manage data and communications; a database accessible by the server; a client application provided to one or more clients, in communication with the server; receive communications from the remote asset and receive communications from the client application; send communications to at least one of the remote asset and the client application with the prescribed action and determined resource; send communications to the determined resource with the required action, warranty status, chronic repair status, and standard work instructions.
Claim 8 recites the following additional elements: computer-executable instructions that when performed on a processor; receive communications from the remote asset and receive communications from the client application; send communications to at least one of the remote asset and the client application with the prescribed action and determined resource; send communications to the determined resource with the required action, warranty status, chronic repair status, and standard work instructions.
These elements are merely instructions to apply the abstract idea to a computer, per MPEP 2106.05(f). Applicant has only described generic computing elements and results-oriented processes, as seen in Figs. 5A-5E of applicant’s specification as filed, for example.
Additionally and alternatively, the additional elements describing the transmission and receipt of information (i.e., receive communications from the remote asset and receive communications from the client application; send communications to at least one of the remote asset and the client application with the prescribed action and determined resource; send communications to the determined resource with the required action, warranty status, chronic repair status, and standard work instructions) could be considered insignificant extra-solution activity, given that they merely describe the sending and receiving of data and do not meaningfully limit. See MPEP 2106.05(g).
Further, the combination of these elements is nothing more than a generic computing system that facilitates the transmission and receipt of information. When the claim elements above are considered, alone and in combination, they do not integrate the abstract idea into practical application.
Therefore, per Step 2A Prong Two, the additional elements, alone and in combination, do not integrate the judicial exception into a practical application. The claim is directed to an abstract idea.
Step 2B (The Inventive Concept): Does the claim recite additional elements that amount to significantly more than the judicial exception? MPEP 2106.05.
Step 2B involves evaluating the additional elements to determine whether they amount to significantly more than the judicial exception itself.
The examination process involves carrying over identification of the additional element(s) in the claim from Step 2A Prong Two and carrying over conclusions from Step 2A Prong Two pertaining to MPEP 2106.05(f).
The additional elements and their analysis are therefore carried over: applicant has merely recited elements that facilitate the tasks of the abstract idea, as described in MPEP 2106.05(f).
The additional elements that could be considered insignificant extra-solution activity (i.e., receive communications from the remote asset and receive communications from the client application; send communications to at least one of the remote asset and the client application with the prescribed action and determined resource; send communications to the determined resource with the required action, warranty status, chronic repair status, and standard work instructions) are reevaluated at Step 2B; however, they’re still not significantly more.
The courts have recognized receiving or transmitting data over a network as a well‐understood, routine, and conventional function when claimed in a merely generic manner. See MPEP 2106.05(d), especially citations to 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).
Further, the combination of these elements is nothing more than a generic computing system that facilitates the transmission and receipt of information. When the claim elements above are considered, alone and in combination, they do not amount to significantly more.
Therefore, per Step 2B, the additional elements, alone and in combination, are not significantly more. The claims are not patent eligible.
The analysis takes into consideration all dependent claims as well:
Dependent claims 2-7 and 9-14 further narrow the abstract idea. There are no further additional elements to consider, beyond those highlighted above. This narrowing of the abstract idea is also not patent eligible.
Accordingly, claims 1-14 are rejected under 35 USC § 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant’s remarks filed 12/19/25 have been fully considered. Examiner’s response follows.
Drawings; Claim Objections
Applicant is thanked for their amendments overcoming the previous objections to the drawings and claims. These are withdrawn.
35 U.S.C. §101
Regarding the rejections under 35 U.S.C. §101, applicant offers (brackets indicate portions of response omitted for brevity):
Similar to the Examiner, Applicant refers to the 2019 Revised Patent Subject Matter Eligibility Guidance and the Supreme Court's two-part framework set forth in Alice Corp (also called the Mayo test) as Steps 2A and 2B of the eligibility analysis.
Applicant also refers to page 2 of the Memorandum issued by the USPTO on August 4, 2025, entitled "Reminders on evaluating subject matter eligibility of claims under 35. US.C. 101." In particular, the Memorandum notes "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. The USPTO subject matter eligibility analysis follows this precedent and instructs examiners to determine that a claim recites a mental process when it contains limitation(s) that can practically be performed in the human mind, including, for example, observations, evaluations, judgments, and opinions. On the other hand, a claim does not recite a mental process when it contains limitation(s) that cannot practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitation(s)." (emphasis added) While the August 4, 2025 memorandum does specifically mention mental processes, Applicant submits that similar reasoning can apply to methods of organizing human activity to the extent that the claim addresses an issue that can't "practically" be performed in a conventional method of organizing human activity.
The Office Action asserts that the claims are directed at the abstract idea of mental processes or of certain methods of organizing human activity. Applicant submits that the Office Action improperly characterizes the claims, and in particular, the amended claims, too broadly, and not consistently with the above guidance and the August 4, 2025 Memorandum. The presently claimed combination of features is not simply directed at mental processes or methods of organizing human activity. Rather, the presently claimed combination of features relate to the implementation of an integrated system and method for managing remote assets in an automatic and efficient fashion. In particular, claim 1 recites elements such as: […]
In other words, the presently claimed combination of features works with thresholds and performs automatic functions in order to solve technical problems in a remote asset management system that go beyond merely mental processes or organizing human activity. For example, the ability to automatically determine warranty status and chronic repair status and communicate this information to the resource provides for faster and more efficient repairs to the remote asset. Further, the use of thresholds automates the process more efficiently by only acting on issues that are severe enough for action to be needed. Applicant submits that implementing these elements in a conventional system/method at the filing date would generally not be possible in any practical way without the teachings of the present application.
Thus, it is believed that the claims are not directed to an abstract idea, as the claim does not only recite matter that falls within the enumerated groupings of abstract ideas noted in the 2019 Revised Patent Subject Matter Eligibility Guidance. (Step 2A: NO).
While well taken, examiner disagrees. It appears that applicant has conflated the abstract idea, considered at Step 2A Prong One, with the additional elements, considered at Step 2A Prong Two and Step 2B. Examiner maintains that the claims recite an abstract idea (claim 1 being representative):
The abstract idea of claims 1 and 8 is (claim 1 representative):
analyze the received communications for data related to the remote asset;
determine if the data indicates an issue in relation to the remote asset by comparing the data to one or more thresholds;
if so:
determine a prescribed action based on the issue and the data;
automatically determine a resource for the prescribed action, warranty status for the issue, chronic repair status, and standard work instructions;
if not, continue to receive and analyze the received communications.
There’s nothing particular technical about these steps, which an administrator could accomplish with pen and paper. Analyzing asset data to determine a prescribed action is routinely performed manually. Thus, examiner maintains that the abstract idea groupings identified at Step 2A Prong One apply, contrary to applicant’s assertions.
Applicant’s remark that the claimed invention improves efficiency and/or promotes automation does not persuade the examiner regarding a technical improvement. MPEP 2106.05(f) is clear that ‘”claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept.’
Applicant continues:
Under the two-part framework, no further analysis is necessary. If, however, the Examiner were to maintain that the claims are directed to an abstract idea, Applicant further submits that that the claims include additional elements that are significantly more than the judicial exception.
As noted above, the presently claimed combination includes elements that are a technology rooted solution to problems in remote asset management systems and methods that are addressed by novel metrics to be used in the repair of remote assets. Thus, Applicant submits that this amounts to significantly more than merely mental processes or methods of organizing human activity. The solutions in the claims, as noted above, allow the system/method to quickly and efficiently determine an issue and determine if the issue is under warranty or a chronic issue that needs to be addressed in a different way. Applicant submits that this makes use of technology to provide something more than a mere abstract concept.
Further, the presently claimed combination of features is integrated into a practical application. The embodiments of the remote asset management system in the present application are a practical implementation of the concepts noted above that operate in a way different from conventional remote asset management systems and would not be possible without the specific processes and techniques as claimed in the amended claims. Such features offer an ability of a remote asset management system to provide additional benefits, such as a better warranty control and chronic repair recognition, that are other than what was well- understood, routine, and conventional in the field at the filing date.
The additional elements considered at Step 2A Prong Two and Step 2B include generic computing elements and/or insignificant extra-solution activity that pertains to mere data gathering. MPEP 2106.05(f) and (g), with reference to MPEP 2106.05(d), are clear that this does not integrate the abstract idea into practical application or add significantly more.
Lastly, examiner notes that novelty does not automatically confer eligibility. As made clear by the courts, the “‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” See MPEP 2106.05, subsection I.
Accordingly, the examiner maintains the rejections under 35 U.S.C. §101.
35 U.S.C. §102; 35 U.S.C. §103
Regarding the rejections under 35 U.S.C. §102 and 35 U.S.C. §103, Applicant’s remarks and amendments have been persuasive. In particular, examiner has not been able to find the combination of claimed features.
While Zeira does have similarities with the present application, examiner notes that Zeira is directed to a rental/shared fleet, in which it would be less likely for the renter/sharer to have a client application (typically running on the driver's mobile phone or the like) that is integrated with a maintenance and repair server in the way contemplated in the present application. The present application is directed at trucking fleets in which the driver (and thus "client application" in the claims) is integrated into the overall maintenance/repair system. The client application allows the driver to input data related to the vehicle performance and safety, such as, for example, tread depth or the like, so that this data can be collected more often and more efficiently. In a rental/shared fleet, the driver is typically not involved in maintenance, which would generally be left to the rental/shared car company.
Zeira does not describe all of the technical elements of the present application such as the determination of and communication of whether or not a warranty applies to an issue, whether or not the issue is set as a chronic repair status, and the standard work instructions relating to the issue. The determination of warranty status, chronic repair status, and the provision of standard work instructions can assist with keeping costs in-line as well as making the prescribed action proceed more smoothly to correct the issue. For example, paragraphs [0112] and [0113] describes the benefit of not missing warranty capture and of determining chronic repair status.
McClintic does not add the missing elements of determination of and communication of warranty status or chronic repair status to Zeira. As such, the combination of Zeira and McClintoc does not teach or suggest all of the elements of claims 1 and 8.
In an updated search, examiner identified the following references, which, while generally relevant to the field of endeavor, stop short of the specificity required by the claim:
US 6480810, which teaches: A method for processing monitored data from a remote asset to optimize maintenance and operation schedules, the method comprising the steps of collecting data from the remote asset, building a data set based on the data collected, applying statistical scripts to the data set to create a statistical model, comparing the statistical model to the data set, creating a standardization model from the compared statistical model and the data set, applying a trending algorithm to the data, deriving statistical based control limits, and applying the control limits to a new set of collected data.
US 20160093216, which teaches: Programmable telematics systems, methods and apparatus for two-way transmission of data and information between fleet vehicles and a fleet management system. The systems and methods employ a programmable telematics communications unit (TCU) configured to connect to the OBD II port of a vehicle, enabling two-way transmission of data and information between a fleet management system and vehicles in the fleet. The TCU device includes cellular data connectivity enabling communication with the management system through existing cellular telephone networks. The programmable TCU may be toggled between multiple operating modes, wherein the TCU provides different functionality, such that a single vehicle may participate in multiple vehicle programs at different points in time, including separate vehicle rental and vehicle sharing programs.
US 20190027043, which teaches: A system and related methods for management of communications and interfacing between a user and a connected fleet of vehicles, including a system for providing mobile security devices and/or mobile wireless access point devices at a fleet facility. The system provides easy and rapid movement of wire access point devices/antennae, security cameras, or both, within a rental or fleet facility. One or more support wires extend between connection points within the facility. The connection points may be fixed or moving (i.e., the connection point itself may be on a track or similar device, and thus be movable from point to point along the track). Trolleys supporting one or more security cameras, wireless access point devices, or similar devices, move along the support to desired locations.
Accordingly, the previous rejections under 35 U.S.C. §102 and 35 U.S.C. §103 are withdrawn.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 6480810, which teaches: A method for processing monitored data from a remote asset to optimize maintenance and operation schedules, the method comprising the steps of collecting data from the remote asset, building a data set based on the data collected, applying statistical scripts to the data set to create a statistical model, comparing the statistical model to the data set, creating a standardization model from the compared statistical model and the data set, applying a trending algorithm to the data, deriving statistical based control limits, and applying the control limits to a new set of collected data.
US 20160093216, which teaches: Programmable telematics systems, methods and apparatus for two-way transmission of data and information between fleet vehicles and a fleet management system. The systems and methods employ a programmable telematics communications unit (TCU) configured to connect to the OBD II port of a vehicle, enabling two-way transmission of data and information between a fleet management system and vehicles in the fleet. The TCU device includes cellular data connectivity enabling communication with the management system through existing cellular telephone networks. The programmable TCU may be toggled between multiple operating modes, wherein the TCU provides different functionality, such that a single vehicle may participate in multiple vehicle programs at different points in time, including separate vehicle rental and vehicle sharing programs.
US 20190027043, which teaches: A system and related methods for management of communications and interfacing between a user and a connected fleet of vehicles, including a system for providing mobile security devices and/or mobile wireless access point devices at a fleet facility. The system provides easy and rapid movement of wire access point devices/antennae, security cameras, or both, within a rental or fleet facility. One or more support wires extend between connection points within the facility. The connection points may be fixed or moving (i.e., the connection point itself may be on a track or similar device, and thus be movable from point to point along the track). Trolleys supporting one or more security cameras, wireless access point devices, or similar devices, move along the support to desired locations.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN SAMUEL WASAFF whose telephone number is (571)270-5091. The examiner can normally be reached Monday through Friday 8:00 am to 6:00 pm.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SARAH MONFELDT can be reached at (571) 270-1833. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JOHN SAMUEL WASAFF
Primary Examiner
Art Unit 3629
/JOHN S. WASAFF/ Primary Examiner, Art Unit 3629
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