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 .
Status of the Claims
Claims 1-20 were previously pending. Claims 1, 8, 11, and 19 were amended, and claim 7 was canceled in the reply filed October 1, 2025. Claims 1-6 and 8-20 are currently pending.
Election/Restrictions
Newly submitted claims 1-6 and 8-10 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-6 and 8-10, drawn to a system, classified in G07B 15/06.
II. Claims 11-20, drawn to a method, classified in G06Q 2240/00.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the process can be practiced by another and materially different apparatus such as one that does not have a plurality of scanning endpoints comprising a plurality of toll roads, a plurality of parking facilities, and a plurality of car washes.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: the inventions have acquired a separate status in the art in view of their different classification and the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries). The differences between the inventive groups would require time-consuming differences in search procedure. Applicable prior art is likely to be found in different areas and would need to be separately discovered, analyzed, and tailored to construct rejections for the different inventions, or to determine their allowability. Search strings for one invention are not likely to uncover relevant prior art usable for the other two inventions without multiple independent and distinct searches. The applicable CPC subgroups are relatively large areas that can only be reviewed using directed text searching and by utilizing crossover searches into other areas specified for each invention. The inventions also present separate, non-overlapping issues that would need to be individually analyzed and possibly addressed via rejections under §§ 101 & 112.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 1-6 and 8-10 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Arguments
Applicant's amendments overcome the ejection made under § 112(b) and it is withdrawn.
Applicant's arguments filed with respect to the rejection made under § 101 have been fully considered but they are not persuasive. Applicant restates the claim and argues that the claim is directed to a practical application of the abstract idea because they are "meaningful limitations beyond merely organizing human activity." Remarks, 9. However, no specific reasons are provided and this does not rebut the findings made in the rejection. Although Applicant also argues that the limitations would be "impossible to be duplicated by a human" (Remarks, 10) again no specific reasons are provided and moreover, mental steps is not the basis of the rejection. Applicant also argues that the claims are similar to those in Classen Immunotherapies but again does not offer any explanation beyond restating the claim. Remarks, 10. Accordingly, the rejection is maintained.
Applicant's arguments filed with respect to the rejections made under § 103 have been fully considered but are moot in view of the new grounds of rejection.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/430685, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The Specification does not support, inter alia, a server connected to a mobile device and the license plate payment application having an encrypted registration database. The priority date for all claims is December 5, 2023, the filing data of the instant application.
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 11-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (abstract idea without significantly more). Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). Claims 11-20, each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., an abstract idea) without significantly more.
MPEP 2106 Step 2A – Prong 1
The claims recite an abstract idea reflected in the representative functions of the independent claims—including from most comprehensive independent claim 19: to make payment in real time at a remote vehicle location; storing a payor account; uploading an image of said license plate; registering said license plate and said payor account; associating said payor account with said license plate of the vehicle; notifying to debit said payor account a payment and to credit the venue said payment upon said scanning of said license plate; storing said license plate and said payor account; and linking said license plate number and said payor account to debit said payor account with said payment upon scanning of said license plate by said scanner; display a plurality of vendor vehicle parking locations and a parking history of the user.
These limitations taken together qualify as a certain method of organizing human activities because they recite collecting, analyzing, and outputting information for processing payments for a person based on their vehicle's license plate (i.e., in the terminology of the 2019 Revised Guidance, commercial interactions (including marketing or sales activities or behaviors; business relations).
It shares similarities with other abstract ideas held to be non-statutory by the courts (see Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014)—using an advertisement as currency/medium of exchange for a good, similar because at another level of abstraction the claims could be characterized as using license plate to process a transaction; Smart Sys. Innovations v. Chicago Transit Authority, 873 F.3d 1364 (Fed. Cir. 2017)—formation of financial transactions in a particular field (i.e., mass transit) and data collection related to such transactions, similar because at another level of abstraction the claims could be characterized as formation of financial transactions using a license plate and data collection related to such transactions; Content Extraction and Transmission. v. Wells Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014)—collection, recognition, and storage of check document data, similar because at another level of abstraction the claims could be characterized as collection, recognition, and storage of license plate payment data).
These cases describe significantly similar aspects of the claimed invention, albeit at another level of abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.").
MPEP 2106 Step 2A – Prong 2:
This judicial exception is not integrated into a practical application because there are no meaningful limitations that transform the exception into a patent eligible application. The elements merely serve to provide a general link to a technological environment (e.g., computers and the Internet) in which to carry out the judicial exception (license plate payment application that can be downloaded and provided to an electronic mobile device, connecting a server to a mobile device, scanning a license plate of a vehicle with a scanner, encrypted registration database, payment module, user interface—all recited at a high level of generality).
Although they have and execute instructions to perform the abstract idea itself (e.g., modules, program code, applications, etc. to automate the abstract idea), this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it." Aside from such instructions to implement the abstract idea, they are solely used for generic computer operations (e.g., receiving, storing, retrieving, transmitting data), employing the computer as a tool. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter.") (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,1256 (Fed. Cir. 2014)) (emphasis added). In addition to being recited generally, the scanning device is only used for an extra-solution data gathering activity (collecting license plate information in order to process the abstract payment methodology). See MPEP 2106.05(g).
The claims only manipulate abstract data elements into another form. They do not set forth improvements to another technological field or the functioning of the computer itself and instead use computer elements as tools to improve the functioning of the abstract idea identified above. Looking at the additional limitations and abstract idea as an ordered combination and as a whole 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 improves any other technology. Rather than any meaningful limits, their collective functions merely provide generic computer implementation of the abstract idea identified in Prong One. None of the additional elements recited "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
At the levels of abstraction described above, the claims do not readily lend themselves to a finding that they are directed to a nonabstract idea. Therefore, the analysis proceeds to step 2B. See BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) ("The Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities. Here, in contrast, the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea. We therefore defer our consideration of the specific claim limitations’ narrowing effect for step two.") (citations omitted).
MPEP 2106 Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for the same reasons as presented in Step 2A Prong 2 (i.e., they amount to nothing more than a general link to a particular technological environment and instructions to apply it there). Moreover, the additional elements recited are known and conventional computing elements (license plate payment application that can be downloaded and provided to an electronic mobile device, connecting a server to a mobile device, scanning a license plate of a vehicle with a scanner, encrypted registration database, payment module, user interface—see published Specification ¶¶ 0030, 32, 35-36, 38, 45 describing these at a high level of generality, without appreciable technical specifics, and in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy the statutory disclosure requirements).
The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, retrieving, transmitting data—see Specification above as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these basic computer functions).
"The use and arrangement of conventional and generic computer components recited in the claims—such as a database, user terminal, and server— do not transform the claim, as a whole, into 'significantly more' than a claim to the abstract idea itself. We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea." Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1056 (Fed. Cir. 2017) (citations and quotation marks omitted). 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 improves any other technology. Their collective functions merely provide conventional computer implementation.
Dependent Claims Step 2A:
The limitations of the dependent claims but for those addressed below merely set forth further refinements of the abstract idea without changing the analysis already presented (i.e., they merely narrow the abstract idea without adding any new additional elements beyond it). Additionally, for the same reasons as above, the limitations fail to integrate the abstract idea into a practical application because they use the same general technological environment and instructions to implement the abstract idea as the independent claims. Claim 15 adds a third-party payment module and claims 17 and 20 add an OCR module. These merely serve to further limit the general link to a technological environment with instructions to "apply it" there.
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment and instructions to implement the abstract idea. Although they add the elements identified in 2A above (third-party payment module, OCR module), these do not amount to significantly more for the same reasons they fail to integrate the abstract idea into a practical application. Moreover, the Specification also indicates this is the routine use of known components for the same reasons presented with respect to the elements in the independent claims above (see published Specification ¶¶ 0030-33). Accordingly, they are not directed to significantly more than the exception itself, and are not eligible subject matter under § 101.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 11-15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Park, U.S. Pat. Pub. No. 2025/0078579 (Reference A of the PTO-892 part of paper no. 20250321) in view of Caballero, U.S. Pat. Pub. No. 2017/0243410 (Reference B of the PTO-892 part of paper no. 20250321) and Ariemma, et al., U.S. Pat. Pub. No. 2014/0100894 (Reference A of the attached PTO-892).
As per claim 11, Park teaches a method comprising the steps of:
connecting a server to a mobile device for using said mobile device to make payment in real time at a remote vehicle location (¶¶ 0003, 37-39); and
scanning a license plate of the vehicle with a scanner at a venue of the vendor (¶ 0054);
providing said mobile device with a license plate payment application (¶ 0075);
storing a payor account in said license plate payment application (¶¶ 0038, 87);
registering said license plate and said payor account with said license plate payment application (¶¶ 0029, 49-52, 78, 87);
associating said payor account with said license plate of the vehicle in said license plate payment application (¶¶ 0029, 49-52, 87);
notifying said mobile device to debit said payor account a payment and to credit the venue said payment upon said scanning of said license plate (¶¶ 0039, 59-61);
storing said license plate number and said payor account in a registration database of said license plate payment application (¶¶ 0029, 49-52, 87); and
linking said license plate number and said payor account for a payment module to debit said payor account with said payment upon scanning of said license plate by said scanning end point (¶¶ 0029, 49-52, 59-61).
Park does not explicitly teach that the database is encrypted, which is taught by Caballero (¶ 0128). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Caballero—namely, to enhance data security. Moreover, this is merely a combination of old elements in the art of vehicle-based payment systems. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
Park does not explicitly teach providing a user interface configured to display a plurality of vendor vehicle parking locations and a parking history of the user; which is taught by Ariemma (¶¶ 0047-48, 52). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Ariemma—namely, to facilitate specific parking reservations and account information retrieval. Moreover, this is merely a combination of old elements in the art of parking. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
As per claim 12, Park in view of Caballero and Ariemma teaches claim 11 as above. Park further teaches said payment amount credited to a vendor registered with the system (¶¶ 0039, 60-61).
As per claim 13, Park in view of Caballero and Ariemma teaches claim 11 as above. Park further teaches said scanning of said license plate with said scanner is at time of entry of the venue (¶ 0088).
As per claim 14, Park in view of Caballero and Ariemma teaches claim 11 as above. Park further teaches said scanning of said license plate with said scanner is at time of exit from the venue (¶ 0093).
As per claim 15, Park in view of Caballero and Ariemma teaches claim 11 as above. Park further teaches said server connected to a third-party payment module (¶ 0011, 39).
As per claim 19, Park teaches a method comprising the steps of:
downloading a license plate payment application in an electronic mobile device by a user (¶ 0075);
connecting a server to a mobile device for using said mobile device to make payment in real time at a remote vehicle location (¶¶ 0003, 37-39); and
scanning a license plate of the vehicle with a scanner at a venue of the vendor (¶ 0054);
providing said mobile device with a license plate payment application (¶ 0075);
storing a payor account in said license plate payment application (¶¶ 0038, 87);
registering said license plate and said payor account with said license plate payment application (¶¶ 0029, 49-52, 78, 87);
associating said payor account with said license plate of the vehicle in said license plate payment application (¶¶ 0029, 49-52, 87);
notifying said mobile device to debit said payor account a payment and to credit the venue said payment upon said scanning of said license plate (¶¶ 0039, 59-61);
storing said license plate number and said payor account in a registration database of said license plate payment application (¶¶ 0029, 49-52, 87); and
linking said license plate number and said payor account for a payment module to debit said payor account with said payment upon scanning of said license plate by said scanning end point (¶¶ 0029, 49-52, 59-61).
Park does not explicitly teach that the database is encrypted, which is taught by Caballero (¶ 0128) and would have been obvious to incorporate for the same reasons as in claim 11 above.
While Park teaches the application is a license plate payment application (see above), it does not explicitly teach the application is configured to display a plurality of vendor vehicle parking locations and a parking history of the user; which is taught by Ariemma (¶¶ 0038, 47-48, 52) and would have been obvious to incorporate for the same reasons as in claim 11 above.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Caballero and Ariemma, et al. as applied to claim 15 above, further in view of Wang, U.S. Pat. Pub. No. 2016/0012726 (Reference C of the PTO-892 part of paper no. 20250321).
As per claim 16, Park in view of Caballero and Ariemma teaches claim 15 as above. The references do not explicitly teach said license plate payment application having an uploaded image of said license plate; which is taught by Wang (¶ 0129). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Wang—namely, to provide further records of parking payment conveniently in a mobile application. Moreover, this is merely a combination of old elements in the art of vehicle-based payment systems. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
Claims 17-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Caballero and Ariemma, et al. as applied to claims 16 and 19 above, further in view of Anagnostopoulos, et al., A license plate-recognition algorithm for intelligent transportation system applications, IEEE Transactions on Intelligent transportation systems, Vol. 7, No. 3, 2006, pgs. 377-392 (Reference U of the PTO-892 part of paper no. 20250321).
As per claims 17, and 20, Park in view of Caballero and Ariemma teaches claims 16 and 19 as above. The references do not explicitly teach said server having an optical character recognition (OCR) module for retrieving a license plate number from said uploaded image of said license plate for authentication; which is taught by Anagnostopoulos (pg. 377, col. 2; pg. 386, col. 1). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Anagnostopoulos—namely, in order to automatically recognize the characters on a license plate. Moreover, this is merely a combination of old elements in the art of vehicle-based payment systems. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
As per claim 18, Park in view of Caballero, Ariemma, and Anagnostopoulos teaches claim 17 as above. Park further teaches said payor account is a credit card payment account (¶ 0097).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Chelnik, U.S. Pat. Pub. No. 2019/0108700 (Reference B of the attached PTO-892) relates to a license plate payment system.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL VETTER whose telephone number is (571)270-1366. The examiner can normally be reached M-F 9:00-6:00.
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/DANIEL VETTER/Primary Examiner, Art Unit 3628