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 1-20 are currently pending and are addressed below.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 16 April 2026 has been entered.
Response to Arguments
Applicant's amendments and arguments with respect to the rejection of claim 1-20 under 35 USC 103 as set forth in the office action of 23 February 2026 have been considered and are persuasive. Therefore, the rejection of claim 1-20 under 35 USC 103 as set forth in the office action of 23 February 2026 has been withdrawn.
Applicant’s amendments and/or arguments with respect to the rejection of Claims 1-20 under 35 USC 101 as set forth in the office action of 23 February 2026 have been considered and are NOT persuasive. Specifically, Applicant argues:
Claims 1-20 stand rejected under 35 U.S.C. § 101 as allegedly being directed to an
abstract idea. The Applicant respectfully disagrees and traverses the rejection. However, and without conceding the propriety of the rejection, amendments have been made herein that are thought to fully address the reasons for the rejection or otherwise render the rejection moot. For at least these reasons, the Applicant requests withdrawal of the rejection.
The Examiners Response:
Examiner has carefully considered Applicant’s amendments and arguments and respectfully disagrees. Regarding the claimed invention, the claims have a system that obtains DTC information and makes determinations to see if DTC are related to a collision even and removing a DTC from a repair estimate based on the determination. The claims can be performed in the human mind as they merely involve taking collected DTC information to make determinations on the connection of DTC to collision events, furthermore, the inclusion of a computer/processor does not integrate the abstract idea into a patent eligible invention, See Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 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.
The currently amended claims merely add that the received diagnostic trouble codes come from a scan tool, however, this is not enough to integrate the judicial exception into a practical application as this limitation would still be considered extra-solution activity as a data gathering step. The DTC codes are merely being obtained from the additional element of the “scan tool” and can be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of vehicle diagnostic tool(computers). See, MPEP 2106.05(b), “Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the claim. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more. See Bilski, 561 U.S. at 610, 95 USPQ2d at 1009 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 197 (1978)), and CyberSource v. Retail Decisions, 654 F.3d 1366, 1370, 99 USPQ2d 1690 (Fed. Cir. 2011) (citations omitted) ("[N]othing in claim 3 requires an infringer to use the Internet to obtain that data. The Internet is merely described as the source of the data. We have held that mere ‘[data-gathering] step[s] cannot make an otherwise nonstatutory claim statutory.’" 654 F.3d at 1375, 99 USPQ2d at 1694 (citation omitted)). See MPEP § 2106.05(g) & (h) for more information on insignificant extra-solution activity and field of use, respectively.”
In addition, the inclusion of the “machine learning model” as an additional element is not sufficient to claim a practical application or amount to significantly more than a judicial exception as the limitation represents no more than mere instructions to apply the judicial exception on a computer and it can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of computers. 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.
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 1-20 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 system, claim 8 is directed to one or more non-transitory computer-readable media and, claim 15 is directed to a method. Therefore, claims 1, 8 and 15 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 8 and 15 are rejected for the same reasons as the representative claim 1 as discussed here. Claim 1 recites:
A system, comprising:
one or more hardware processors;
and one or more non-transitory machine-readable storage media encoded with instructions that, when executed by the one or more hardware processors, cause the system to perform operations comprising:
receiving a diagnostic trouble code (DTC) from a scan tool, the DTC specifying diagnostic information related to a component in a vehicle damaged in a collision event, the diagnostic information comprising one or more data inputs generated by the component and read by the scan tool;
determining, using a machine learning model trained on similar historical repair data that includes categorized DTCs pertaining to collision events, whether the DTC is definitely unrelated to the collision event based on the one or more data inputs;
in response to the DTC being determined not to be definitely unrelated to the collision event, determining, using the machine learning model, whether the DTC is related to the collision event by comparing a location of the component to a location of a point of impact associated with the collision event;
and removing the DTC from a repair estimate for the vehicle in response to the DTC being determined to be definitely unrelated to the collision event or not related to the collision event.
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 “removing …” 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 system, comprising:
one or more hardware processors;
and one or more non-transitory machine-readable storage media encoded with instructions that, when executed by the one or more hardware processors, cause the system to perform operations comprising:
receiving a diagnostic trouble code (DTC) from a scan tool, the DTC specifying diagnostic information related to a component in a vehicle damaged in a collision event, the diagnostic information comprising one or more data inputs generated by the component and read by the scan tool;
determining, using a machine learning model trained on similar historical repair data that includes categorized DTCs pertaining to collision events, whether the DTC is definitely unrelated to the collision event based on the one or more data inputs;
in response to the DTC being determined not to be definitely unrelated to the collision event, determining, using the machine learning model, whether the DTC is related to the collision event by comparing a location of the component to a location of a point of impact associated with the collision event;
and removing the DTC from a repair estimate for the vehicle in response to the DTC being determined to be definitely unrelated to the collision event or not related to the collision event.
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 for use in the determining and other steps), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. In addition, receiving the diagnostic trouble codes from a scan tool is not enough to integrate the judicial exception into a practical application as this limitation would still be considered extra-solution activity as a data gathering step. The DTC codes are merely being obtained from the additional element of the “scan tool” and can be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of vehicle diagnostic tool(computers). See, MPEP 2106.05(b), “Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the claim. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more. See Bilski, 561 U.S. at 610, 95 USPQ2d at 1009 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 197 (1978)), and CyberSource v. Retail Decisions, 654 F.3d 1366, 1370, 99 USPQ2d 1690 (Fed. Cir. 2011) (citations omitted) ("[N]othing in claim 3 requires an infringer to use the Internet to obtain that data. The Internet is merely described as the source of the data. We have held that mere ‘[data-gathering] step[s] cannot make an otherwise nonstatutory claim statutory.’" 654 F.3d at 1375, 99 USPQ2d at 1694 (citation omitted)). See MPEP § 2106.05(g) & (h) for more information on insignificant extra-solution activity and field of use, respectively.”
Furthermore, the addition of the “machine learning model” as an additional element is not sufficient to claim a practical application or amount to significantly more than a judicial exception as the limitation represents no more than mere instructions to apply the judicial exception on a computer and it can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of computers. Lastly, claims 1 and 16 further recite “A system, comprising: one or more hardware processors; and one or more non-transitory machine-readable storage media encoded with instructions that, when executed by the one or more hardware processors, cause the system to perform operations comprising” and “One or more non-transitory machine-readable storage media encoded with instructions that, when executed by one or more hardware processors of a computing system, cause the computing system to perform operations comprising” merely describes how to generally “apply” the otherwise mental judgements in a generic or general purpose vehicle control 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 and a machine learning model 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 is a well-understood, routine and conventional activities and 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. Hence, the claim is not patent eligible.
Dependent claims 2-7, 9-14 and 16-20 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 are merely defining terms/concepts or have additional steps such as “comparing” and “determining”. Therefore, dependent claims 2-7, 9-14 and 16-20 are not patent eligible.
Therefore, claims 1-20 are ineligible under 35 USC §101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Vehicle Diagnostic Scan And Collision Data Recorder Reader Device And Method (US 12620269 B1)
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
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/MOISES GASCA ALVA/Examiner, Art Unit 3667
/FARIS S ALMATRAHI/Supervisory Patent Examiner, Art Unit 3667
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