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 21-41 have been examined.
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 21-41 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more. The judicial exception is not integrated into a practical application. The claims do not recite additional elements that are sufficient to amount to significantly more than the judicial exception.
The following 35 U.S.C. 101 analysis is performed in accordance with section 2106 of the Manual of Patent Examination Procedure (concerning Patent Subject Matter Eligibility Guidance). First, it is determined that the claims are directed to a statutory category of invention. See MPEP 2106.03 (II). In the instant case, claims 21-32 are directed to a method, in the statutory category of process. Therefore, claims 21-32 are directed to statutory subject matter under Step 1 of the Alice/Mayo test. Claims 33-41 are directed to a non-transitory program storage means, in the statutory category of article of manufacture. Therefore, claims 33-41 are also directed to statutory subject matter under Step 1 of the Alice/Mayo test. (Step 1: YES for all claims 21-41)
The claims are then analyzed to determine whether the claims are directed to a judicial exception. See MPEP 2106.04. The claims are analyzed to evaluate whether they recite a judicial exception (Step 2A, Prong One) as well as analyzed to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of the judicial exception (Step 2A, Prong Two). See MPEP 2106.04. First applying Step 2A, Prong One: Claim 21 recites the following abstract idea (bolded):
A method of scheduling a third-party diagnostic scan for a vehicle in connection with the sale of the vehicle, the method comprising the steps of:
receiving, at a server, a registration signal identifying tool characteristics of a third party tool;
receiving, at the server, from a vehicle owner device, a scan request signal to schedule a scan of a vehicle associated with a defined parameter, the scan request signal including a defined level of diagnostic specificity, a location of the vehicle, and a requested scan window;
identifying a plurality of third party tools from a database of third party tools based on a match of tools characteristics with the defined parameter of the vehicle and based on the plurality of third party tools being within a predefined geographic area relative to the location of the vehicle;
generating, at the server, in response to receipt of the scan request signal, a tool solicitation signal for receipt at electronic addresses associated with the plurality of third party tools, the tool solicitation signal including a general location of the requested scan and omitting a precise general location of the requested scan;
receiving, at the server, an accept signal from a tool owner device associated with a selected one of the plurality of third party tools;
transmitting, from the server in response to receipt of the accept signal, scheduling particulars including a time and precise location of the requested scan to the tool owner device associated with the selected third party tool and to the vehicle owner device;
receiving, at the server, a vehicle data set from the selected third party tool, the vehicle data set being retrieved from the vehicle; and
analyzing the vehicle data set at the server to generate a diagnostic report including content consistent with the defined level of diagnostic specificity.
Claim 21 is directed to an abstract idea, specifically in the field of certain methods of organizing human activity, with generic computer implementation. The operations are described at a high level of abstraction, and scanning as such is not recited. (Step 2A, Prong One: Yes for claims 21-32)
Proceeding to Step 2A, Prong Two: Claim 21 does not recite any of the specific limitations that are indicative of integration into a practical application, and does not otherwise apply or use the judicial exception in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Claim 21 recites the use of a [computer] server, but the server is described at a high level of abstraction, without details of structure, and an abstract idea does not become non-abstract merely because a computer is involved in applying it, as the Supreme Court ruled in Alice Corporation v. CLS Bank. (Step 2A, Prong Two: No for claims 21-32)
Next, under Step 2B of the Alice/Mayo test, the claims are analyzed to determine whether there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract idea. See MPEP 2106.05. The instant claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea for at least the following reasons.
Analyzing independent claim 21 under Step 2B, Vasquez et al. (U.S. Patent 10,430,822) discloses (column 4, lines 34-38, emphasis added), “Referring now in particular to the drawings submitted herewith the advertising and customer system 100 includes providing a server 10 that is a conventional computer server having the necessary electronics to receive, store, transmit and manipulate data.” Hence, using a server requires only the use of well-understood, routine, and conventional technology. 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: 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). Hence, the multiple “receiving” steps of claim 21, and the new “transmitting” step, require only the use of well-understood, routine, and conventional functions and technology.
The “identifying a plurality of third party tools” step could be performed by a human being as a matter of human judgment and evaluation, or by an appropriately programmed and essentially generic computer. The step of “generating, at the server, in response to receipt of the scan request signal, a tool solicitation signal for receipt at electronic addresses” could likewise be performed by a human being as a matter of human judgment and evaluation, or by an appropriately programmed and essentially generic computer. Given the well-understood, routine, and conventional nature of receiving or transmitting data over a network, generating an item of data to be transmitted and received likewise qualifies as well-understood, routine, and conventional, in the absence of any specific technology recited as being used.
Lastly, “analyzing the vehicle data at the server to generate a diagnostic report” is also recited at a high level of generality, and could be performed by a human being as a matter of human judgment and evaluation, or by an appropriately programmed and essentially generic computer. The limitations of claim 21, whether considered separately or in combination, do not raise the claimed method to significantly more than an abstract idea.
Claim 22, which depends from claim 21, recites that the identifying step includes identifying a data acquisition and transfer device (DAT) as the third party tool. Identifying a particular kind of device as the third party tool is not in itself technological. The limitation of claim 22, whether considered separately or in combination with the limitations of claim 21, does not raise the claimed method to significantly more than an abstract idea.
Claim 23, which depends from claim 21, recites that the defined parameter of the vehicle is a location of the vehicle; this is not in itself technological. Claim 24, which depends from claim 23, recites that the identifying step includes Identifying the third party tool from the database of third party tools based on the third party tool being located within a prescribed radius of the location of the vehicle; this is not in itself technological. The limitations of claims 23 and 24, whether considered separately or in combination with each other and with the limitations of claim 21, do not raise the claimed method to significantly more than an abstract idea.
Claim 25, which depends from claim 21, recites that the defined parameter of the vehicle is a vehicle communication protocol. For the defined parameter of the vehicle to be a vehicle communication protocol is not in itself technological, even if the communication protocol itself may qualify as technological. The limitation of claim 25, whether considered separately or in combination with the limitations of claim 21, does not raise the claimed method to significantly more than an abstract idea.
Claim 26, which depends from claim 21, recites that the diagnostic report generated in the analyzing step includes information regarding received diagnostic trouble codes. For a report to include particular information is not in itself technological. The limitation of claim 26, whether considered separately or in combination with the limitations of claim 21, does not raise the claimed method to significantly more than an abstract idea.
Claim 27, which depends from claim 21, recites that the diagnostic report generated in the analyzing step includes at least one predictive diagnostic assessment. For a report to include particular information, including information in the form of an assessment, is not in itself technological. The limitation of claim 27, whether considered separately or in combination with the limitations of claim 21, does not raise the claimed method to significantly more than an abstract idea.
Claim 28, which depends from claim 21, recites that the method further comprises: creating an electronic listing for sale of the vehicle on an online forum, the electronic listing being created from a template; and creating a link to the diagnostic report on the electronic listing. Dempski et al. (U.S. Patent Application Publication 2013/0282834) discloses (paragraph 3, emphasis added), “Many conventional electronically mediated forums allow users to post messages on specific pages dedicated to those users (e.g., a user’s individual Facebook, Myspace, or Twitter page). Other users of the forum may then view the posted message and interact with it.” Dempski further discloses (paragraph 25, emphasis added), “Techniques for posting a message to an electronically mediated forum are well known to those having ordinary skill in the art.” Hence, creating an electronic listing on an online forum must likewise be technologically well-understood, routine, and conventional. The use of a template in creating a listing need not in itself be significantly technological.
Zhang (U.S. Patent Application Publication 2019/0325021) discloses (paragraph 4, emphasis added), “In the conventional art, the user searches for a keyword for which a hyperlink is to be created in an electronic document, and creates a hyperlink based on the keyword and contents relevant to the keyword.” Zhang further discloses (paragraph 28, emphasis added), “In the conventional art, a hyperlink is created in the following manner. A user searches for a keyword for which a hyperlink is to be created in an electronic document, and creates a hyperlink based on the keyword and contents relevant to the keyword. For example, the user selects a keyword manually, clicks the option ‘insert’ and clicks the option ‘hyperlink’ to create a hyperlink as required.” Hence, creating a link to the diagnostic report on the electronic listing requires only the use of well-understood, routine, and conventional technology. The limitations of claim 28, whether considered separately or in combination with each other and with the limitations of claim 21, do not raise the claimed method to significantly more than an abstract idea.
Claim 29, which depends from claim 28, recites the step of creating a link on the electronic listing to purchase a repair part associated with the diagnostic report. Based on Zhang, as quoted above with regard to claim 28, creating such a link requires only the use of well-understood, routine, and conventional technology. The limitation of claim 29, whether considered separately or in combination with the limitations of claims 21 and 28, does not raise the claimed method to significantly more than an abstract idea.
Claim 30, which depends from claim 28, recites the step of creating a link on the electronic listing to schedule a repair service associated with the diagnostic report. Based on Zhang, as quoted above with regard to claim 28, creating such a link requires only the use of well-understood, routine, and conventional technology. The limitation of claim 30, whether considered separately or in combination with the limitations of claims 21 and 28, does not raise the claimed method to significantly more than an abstract idea.
Claim 31, which depends from claim 28, recites the step of creating a link on at least one electronic listing to purchase an extended warranty for the corresponding vehicle for sale. Based on Zhang, as quoted above with regard to claim 28, creating such a link requires only the use of well-understood, routine, and conventional technology. Claim 32, which depends from claim 31, recites that the terms of the extended warranty are based on the diagnostic report associated with the corresponding vehicle for sale. The terms of the extended warranty are not thereby technological in themselves. Hence, the limitations of claim 31 and 32, whether considered separately or in combination with each other and with the limitations of claims 21 and 28, do not raise the claimed method to significantly more than an abstract idea. (Step 2B: No for claims 21-32)
Analysis under Step 2A and Step 2B will now be applied to independent claim 33 and its dependent claims 34-41. First applying Step 2A, Prong One: Claim 33 recites the following abstract idea (bolded):
A non-transitory program storage medium on which are stored instructions executable by a processor or programmable circuit of a mobile communication device to perform operations for mobile application-based vehicle diagnostics associated with scheduling a scan of a vehicle by a third party tool for use in connection with the sale of the vehicle, the operations comprising:
receiving a tool solicitation signal from a server, the tool solicitation signal including information regarding a defined parameter of a third-party vehicle for which retrieval of diagnostic information has been requested, including a general location of a requested scan and a requested time-window for the scan to take place;
displaying information related to the received tool solicitation signal on the mobile communication device, including a general location of a requested scan and a requested time-window for the scan to take place;
displaying information related to the received tool solicitation signal on the mobile communication device, including the general location of the requested scan and the requested time-window for the scan to take place;
receiving user input representative of the user agreeing to retrieve the diagnostic information from the third-party vehicle;
sending an accept signal to the server in response to receipt of the user input; and
receiving, at the mobile communication device, in response to the accept signal, confirmation signal from the server, the confirmation signal including scheduling particulars including a time and precise location of the requested scan.
Claim 33 is directed to an abstract idea, specifically in the field of certain methods of organizing human activity, with generic computer implementation. The operations are described at a high level of abstraction, and scanning as such is not recited. (Step 2A, Prong One: Yes for claims 33-41)
Proceeding to Step 2A, Prong Two: Claim 33 does not recite any of the specific limitations that are indicative of integration into a practical application, and does not otherwise apply or use the judicial exception in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Claim 33 recites the use of mobile communication device and a [computer] server, but the mobile communication device and the server are described at a high level of abstraction, without details of structure; and an abstract idea does not become non-abstract merely because a computer is involved in applying it, as the Supreme Court ruled in Alice Corporation v. CLS Bank. Likewise, storing instructions executable by a processor or programmable circuit of a computer (including mobile communication device) does not make an abstract idea become non-abstract. (Step 2A, Prong Two: No for claims 21-32)
Analyzing independent claim 33 under Step 2B, Avidan et al. (U.S. Patent Application Publication 2017/0193592) discloses (paragraph 25, emphasis added), “Although not illustrated, it should be appreciated that the ecommerce server 110, the merchant computer 120, and the customer computer 130 each include conventional components such as a processor and a memory medium storing computer-readable instructions that are executable by the processor to perform various operations including those described herein. The computer-readable instructions can be stored on non-transitory computer-readable storage media of a conventional type, whether devices and/or materials.” Hence, the recited non-transitory program storage medium on which are stored instructions executable by a processor or programmable circuit of a mobile communication device requires only the use of well-understood, routine, and conventional technology. Su (U.S. Patent Application Publication 2020/0393535) discloses (paragraph 94, emphasis added), “Within the system 100, such as that shown in FIG. 1, the cellular communications system is shown comprising conventional mobile communication devices or user equipment (UE) 102, 104, 105 which may be provided wireless access via at least one base station or similar wireless transmitting and/or receiving nod or point. Hence, the recited mobile communication device requires only the use of well-understood, routine, and conventional technology.
Vasquez et al. (U.S. Patent 10,430,822) discloses (column 4, lines 34-38, emphasis added), “Referring now in particular to the drawings submitted herewith the advertising and customer system 100 includes providing a server 10 that is a conventional computer server having the necessary electronics to receive, store, transmit and manipulate data.” Hence, using a server requires only the use of well-understood, routine, and conventional technology.
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: 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). Hence, the steps of receiving a tool solicitation signal from a server, receiving user input information, sending an accept signal to the server, and receiving a confirmation signal from the server, require only the use of well-understood, routine, and conventional functions and technology.
Liu (U.S. Patent Application Publication 2019/0005922) discloses (paragraph 4, emphasis added), “A mobile device is equipped with a display screen to display information or contents. Usually, a fair amount of power is consumed by the display screen. Sometimes, for example, the display screen may consume about 70%-80% of the total power of the mobile device. Therefore, a battery life of the mobile device is often affected by the display screen. In the conventional technology, when the mobile device needs to display a piece of information or certain contents, the entire display screen needs to be powered on.” Hence, the step of displaying information related to the received tool solicitation signal on the mobile communication device requires only the use of well-understood, routine, and conventional technology. The limitations of claim 33, whether considered separately or in combination, do not raise the claimed storage medium to significantly more than an abstract idea.
Claim 34, which depends from claim 33, recites that the step of displaying information related to the received tool solicitation signal includes displaying location information associated with the third-party vehicle as the general location of the requested scan. For a display of information to include particular information is not in itself technological. The limitation of claim 34, whether considered separately or in combination with the limitations of claim 33, does not raise the claimed storage medium to significantly more than an abstract idea.
Claim 35, which depends from claim 33, recites that the operations include displaying a button on a display of the mobile communications device, with the button being configured to receive the user input representative of the user agreeing to retrieve the diagnostic information. Baerlocher (U.S. Patent Application Publication 2020/0311759) discloses (paragraph 127, emphasis added), “In certain embodiments, the at least one input device 1030 includes a touch-screen coupled to a touch-screen controller or other touch-sensitive display overlay to enable interaction with any images displayed on a display device (as described below). One such input device is a conventional touch-screen button panel.” Hence, displaying a button on a display of the mobile communications device, with the button being configured to receive user input, requires only the use of well-understood, routine, and conventional technology. The limitations of claim 35, whether considered separately or in combination with each other and with the limitations of claim 33, do not raise the claimed storage medium to significantly more than an abstract idea.
Claim 36, which depends from claim 33, recites that the operations additionally include facilitating communication between the mobile communication device and a data acquisition and transfer (DAT) device. As set forth above with regard to claim 33, the courts have recognized receiving or transmitting data over a network 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. The limitation of claim 36 is recited at a high level of generality. The limitation of claim 36, considered separately or in combination with the limitations of claim 33, does not raise the claimed storage medium to significantly more than an abstract idea.
Claim 37, which depends from claim 36, recites that the operations further comprise relaying information between the DAT device and a remote server. As set forth above with regard to claim 33, the courts have recognized receiving or transmitting data over a network 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. The limitation of claim 37 is recited at a high level of generality. The limitation of claim 37, considered separately or in combination with the limitations of claim 33 and 36, does not raise the claimed storage medium to significantly more than an abstract idea.
Claim 38, which depends from claim 36, recites that that the operations further comprise displaying status information of the DAT device on a display of the mobile communication device as displayed status information. As cited above with regard to claim 33, Liu (U.S. Patent Application Publication 2019/0005922) discloses that it is well-understood, routine, and conventional for mobile devices to display information or content (paragraph 4). Hence, displaying status information of the DAT device on a display of the mobile communication device requires only the use of well-understood, routine, and conventional technology. Claim 39, which depends from claim 38, recites that the displayed status information includes enhanced diagnostic status information of a vehicle scan performed by the DAT device, including a predictive diagnostic assessment based on the scan results. Including particular status information does not make the display of status information significantly more than an abstract idea. The limitations of claim 38 and 39, whether considered separately or in combination with each other and with the limitations of claims 33 and 36, do not raise the claimed storage medium to significantly more than an abstract idea.
Claim 40, which depends from claim 33, recites that the solicitation signal includes geographic information associated with the third-party vehicle. For a signal to include particular information is not in itself technological. The limitation of claim 40, whether considered separately or in combination with the limitations of claim 33, does not raise the claimed storage medium to significantly more than an abstract idea.
Claim 41, which depends from claim 33, recites that the solicitation signal includes year, make, and model information of the third-party vehicle. For a signal to include particular information is not in itself technological. The limitation of claim 41, whether considered separately or in combination with the limitations of claim 33, does not raise the claimed storage medium to significantly more than an abstract idea.
Non-Obvious Subject Matter
Claims 21-32 are rejected under 35 U.S.C. 101, but recite non-obvious subject matter.
The following is a statement of reasons for the indication of non-obvious subject matter: The closest prior at of record, Merg et al. (U.S. Patent Application Publication 2020/0184745), discloses a database of third party tools with tool characteristics (paragraph 69, emphasis added), “A technician identifier for the technician may be used to locate a technician profile describing registered vehicle scan tools and corresponding scan tool capacities.” Merg further discloses (paragraph 147, emphasis added), “A server may store or otherwise have access to one or more user profiles (e.g., technician profiles or shop profiles) describing previously registered vehicle scan tools in order to identify scan tools capable of performing contextually relevant scan tool functionality.” This is relevant to tool characteristics of a database of third party tools. Merg does not expressly disclose receiving, at a server, a registration signal identifying tool characteristics of a third party tool, but Merg discloses a server receiving data, the server being shown in Figure 8, and Merg disclosing in paragraph 16, emphasis added, “FIG. 8 is a block diagram of an example server.” Merg discloses (paragraph 249, emphasis added), “EEE 24 is a system, comprising: a computing device; at least one vehicle scan tool; and a server configured to: receive, from the computing device, (i) a user identifier, (ii) a vehicle identifier for a vehicle, and (iii) contextual information related to vehicle service content currently displayed on the computing device”. Further, Wittliff (U.S. Patent Application Publication 2012/0313771) teaches (paragraph 38, emphasis added), “The shop owner or user can register the diagnostic tool 100 with the location server 310 so that the diagnostic tool can be located when desired. Each diagnostic tool 100 is assigned identification information, such as a device identification number that is used to register the diagnostic tool 100 with the location server 310.”
Merg discloses vehicles being associated with defined parameters (paragraph 58, emphasis added), “As an example, a particular vehicle identifier can comprise indicators of characteristics of the vehicle such as when the vehicle was built (e.g., a vehicle model year), who built the vehicle (i.e., vehicle manufacturer)), marketing names associated with vehicle (e.g., a vehicle model name, or more simply ‘model’), and features of the vehicle (e.g., an engine type). Merg does not disclose receiving, at the server, a scan request signal to schedule a scan of a vehicle associated with a defined parameter, the scan request signal including a defined level of diagnostic specificity, although Merg discloses a server receiving data (see above). However, Sterling et al. (U.S. Patent Application Publication 2012/0041855) teaches scheduling appointments for scanning a vehicle (paragraph 8, emphasis added), “The traditional way to do preventative maintenance for internal combustion engines is to schedule an appointment and leave their vehicle at a service garage for an extended time for a the [sic] diagnostic and maintenance check via a standardized On Board Diagnostics or OBDII data cable.”
Furthermore, Chen et al. (U.S. Patent Application Publication 2014/0188329) teaches vehicle location information, although not a requested scan window (paragraph 13, emphasis added), “The usage factor may be derived from or based on various information items, such as monitored driving habits, vehicle condition information, vehicle use information or vehicle location information, and/or other information obtained from the vehicle or the intended driver of the vehicle.”
Also, Sanchez et al. (U.S. Patent 11,138,814) teaches transmitting a location of a vehicle (column 6, lines 55-60, emphasis added), “During the reverse communication session, the electronic mobile device 106 may transmit a damage rating indicative of the assessed damage determined from the sensor data, a current or individual-specified location of the vehicle 115, or both, to the collision management server 105.” Sanchez further teaches requesting an appointment window (column 9, lines 43-48, emphasis added), “The request may indicate one or more preferred or available times or dates for appointments. Further, the request may indicate a location of the vehicle device 206, which may be used to identify the service provider (i.e., those service providers within a vicinity of the location).” See also column 10, line 65, through column 11, line 3 of Sanchez.
Moreover, Merg discloses providing diagnostic information (paragraph 60, emphasis added), “An ECU [presumably electronic control unit] can control various aspects of vehicle operation or components within a vehicle. For example, the ECU can include a powertrain (PT) system ECU, an engine control module (ECM) ECU, a supplemental inflatable restraint (SIR) system (i.e., an air bag system) ECU, an entertainment system ECU, or some other ECU. The ECU can receive inputs (e.g., a sensor input), control output devices (e.g., a solenoid), generate a vehicle data message (VDM) (such as a VDM based on a received input or a controlled output), and set a diagnostic trouble code (DTC) as being active or history for a detected fault or failure condition within a vehicle.” Further in paragraph 178, emphasis added (note that VCT is “vehicle communications transceiver” and VDM is “vehicle data message”): “In some implementations, a transmitter of the VCT 203 can transmit a VDM to a vehicle. The VDM transmitted to the vehicle can include a request for diagnostic information (such as a DTC) from an ECU in the vehicle. In those implementations, the receiver of the VCT 203 can receive a VDM transmitted by the vehicle. The VDM received by the receiver of the VCT 203 can include diagnostic information transmitted by an ECU in the vehicle. A VDM can include a component identifier, such as an identifier of the ECU that transmits the VDM. The VDM can include data indicative of a DCT set by the ECU. The processor can select data from within the VDM and cause the selected data to be displayed on the display 208.”
Merg does not disclose identifying the third party tool from a database of third party tools based on a match of tools characteristics with the defined parameter of the vehicle. However, Xiao et al. (U.S. Patent Application Publication 2021/0014318) teaches identifying a tool (in the form of a diagnostic server) based on a match of tools characteristics with a defined parameter of a vehicle (paragraph 89, emphasis added), “The identifier information may include, but is not limited to: a diagnostic server identifier, a vehicle identifier, and a diagnostic software identifier. . . . The ‘vehicle identifier’ may be any piece of information that may represent an attribute of the to-be-diagnosed vehicle. For example, the vehicle identifier may be any one or more of a VIN code, a manufacturer, a series, and a model. The management server may match a corresponding diagnostic server for the vehicle based on received the vehicle identifier [sic], for example, a diagnostic server corresponding to a brand ‘Benz’ may be matched based on a vehicle identifier of ‘Benz Automobile’, and one or more kinds of diagnostic servers for diagnosing the Benz Automobile are installed in the diagnostic server. . . . Therefore, the management server may look for a diagnostic server including the diagnostic software identifier according to the received diagnostic software identifier, thereby determining a diagnostic server to be requested by the terminal.”
Xiao further teaches (paragraphs 94 and 95, emphasis added), “[0094] In this embodiment, each diagnostic server is configured with a unique piece of address information, and a communication connection may be established between the terminal and the corresponding diagnostic server through a certain piece of address information. In particular, the address information may be an IP address of a diagnostic server. [0095] In this embodiment, address information of all diagnostic servers may be pre-recorded in the management server. Therefore, when the management server determines a diagnostic server to be requested by a terminal, address information of the diagnostic server may be directly sent to the terminal, improving efficiency of establishing a communication connection between the terminal and the diagnostic server requested by the terminal.”
Merg discloses vehicle data, including data sets, being received from a vehicle by a scan tool (paragraph 89, emphasis added), “In some cases, one or more messages indicating the results of tests may subsequently be received by the scan tool from the vehicle. In further examples, vehicle service functions performed using a vehicle scan tool may include retrieving data from the vehicle. Such data may include parameter identifier (PID) values.” Merg likewise discloses receiving, at a server, vehicle data from a tool (paragraph 249, emphasis added), “EEE 24 is a system, comprising: a computing device; at least one vehicle scan tool; and a server configured to: receive, from the computing device, (i) a user identifier, (ii) a vehicle identifier for a vehicle, and (iii) contextual information related to vehicle service content currently displayed on the computing device”. Merg discloses that the server includes “memory 52” (Figure 8; paragraphs 89 and 90); Merg then discloses (paragraph 94, emphasis added), “The memory 52 stores computer-readable data, such as the CRPI 60, an index 61, mapping data 62, repair order (RO) data 63, diagnostic session data (DSD) 64, a component hierarchy 65, original OEM content 66, supplemented OEM content 67, technician profile 68, and/or shop profile 69. Further, Merg discloses (paragraph 96, emphasis added), “The DSD 64 can comprise data the server 2 can use to determine an operating state of the vehicle scan tool 4. The data the server 2 uses to determine an operating state of the vehicle scan tool 4 can include a vehicle identifier, data indicating an elapsed time since the server last received a communication from the vehicle scan tool 4, data indicating the most recent type of scan tool function transmitted to the vehicle scan tool 4, and/or data indicating a scan tool function has been completed on a particular vehicle.”
Merg does not disclose analyzing the vehicle data set at the server to generate a diagnostic report, but Sterling teaches analyzing data to generate a diagnostic report including relevant content appropriate to the situation (paragraph 21, emphasis added), “The vehicle diagnostics facility 31 is connected to a diagnostic report unit 33 that can print a report detailing the state of the vehicle (motor, battery, subsystems, fault messages saved in the vehicle microprocessor memory, etc.). The unit 33 is connected to the charging station billing system 36, so that the report may be sold to the vehicle operator or given to the operator as a value-added service to encourage return business.” Sterling further teaches (paragraph 23, emphasis added), “Thereafter, in step 44, the charging system performs an initial vehicle diagnostic analysis to determine, among other parameters, the state of charge of the battery 22, and to predict the amount of time required to recharge the battery fully. This step is important in apprising the vehicle owner of the expected service time, and to enable the operator of the charging station to plan for space utilization and power consumption within the station.”
However, Merg does not disclose generating a tool selection signal including a general location of the requested scan and omitting a precise location of the requested scan; and later transmitting, from the server, scheduling particulars including a time and the precise location of the requested scan to the tool owner device associated with the selected third party tool and to the vehicle owner device. No other prior art of record supplies the deficiency of Merg.
Claims 33-41 are rejected under 35 U.S.C. 101, but recite non-obvious subject matter.
The following is a statement of reasons for the indication of non-obvious subject matter: The closest prior at of record, Merg et al. (U.S. Patent Application Publication 2020/0184745), discloses a non-transitory storage medium on which are stored instructions executable by a processor or programmable circuit of a computer device to perform operations (paragraph 5, emphasis added), “Viewed from a further aspect, an example embodiment takes the form of a non-transitory computer readable medium having stored therein instructions executable by one or more processors to cause a computing system to perform functions.” Merg further teaches that computer devices can be mobile communication devices (paragraph 64, emphasis added), “In some examples, the computing device is a fixed computer workstation at a repair shop, a mobile computing device such as a touchpad device or smartphone, a laptop computer, or a different type of computing device at a vehicle repair shop.” Merg likewise teaches (paragraph 211, emphasis added), “a small-form factor portable (i.e., mobile) electronic device such as a smartphone (e.g., an IPHONE® smartphone from Apple Inc. of Cupertino, Calif., or a Galaxy S® smartphone from Samsung Electronics Co., Ltd. Of Maetan-Dong, Yeong-tong-Gu Suwon-Si, Gyeonggi-Do, Republic of Korea) . . . or a wearable computing device (e.g., a wireless web-watch device or a personal headset device).”
Merg et al. (U.S. Patent Application Publication 2020/0184745) further discloses receiving a tool solicitation signal from a server (paragraph 154, emphasis added), “Block 181 includes receiving, at a vehicle scan tool, a request for automated vehicle scan tool initialization. The request includes a function identifier for a vehicle scan tool function and a vehicle identifier for a vehicle. The request may also include additional information, such as a vehicle system and/or component identifier. The vehicle scan tool is configured to display at least one navigable menu that allows for selection from a plurality of vehicle scan tool functions, including at least the vehicle scan tool function.” Merg also discloses in paragraph 155, emphasis added: “In some examples, the request may be received by the vehicle scan tool from a server, such as server 2 of FIG. 1.” Merg does not disclose that the tool solicitation signal includes information regarding a defined parameter of a third-party vehicle for which retrieval of diagnostic information has been requested, but Merg does disclose such parameters (paragraph 58, emphasis added), “As an example, a particular vehicle identifier can comprise indicators of characteristics of the vehicle such as when the vehicle was built (e.g., a vehicle model year), who built the vehicle (i.e., vehicle manufacturer)), marketing names associated with vehicle (e.g., a vehicle model name, or more simply ‘model’), and features of the vehicle (e.g., an engine type). Further, Chen et al. (U.S. Patent Application Publication 2014/0188329) teaches defined parameters of a vehicle in more detail (paragraph 13, emphasis added), “The data acquisition and transfer device may also be used to retrieve diagnostic information bearing on the identity or condition of a vehicle, e.g. identifying the vehicle make/model/year/engine, the current mileage of the vehicle, the presence of digital trouble codes (DTCs), and other diagnostic data, which may then also be communicated to the processor. As noted above, a mobile device, that does not connect to the vehicle diagnostic port, may also be used to derive usage information, e.g. based on location, driving habits, etc.”
Merg does not disclose that the vehicle is a third-party vehicle, but Zinchenko et al. (U.S. Patent Application Publication 2016/0093123) teaches a third-party vehicle (paragraph 10, emphasis added), “A different vehicle of the same type may, for example, be a vehicle from a vehicle fleet of the manufacturer or a different corresponding test vehicle.”
Merg does not disclose that the operations are performed in connection with a sale of the vehicle, but Chen teaches interest in purchasing a vehicle (paragraph 20, emphasis added), “Accordingly, the present invention allows a person interested in potentially purchasing a used vehicle to access information indicating the total future repair cost for maintaining a vehicle over a defined period of time or mileage, by simply providing two pieces of information, i.e. vehicle identifying information and current mileage.”
Merg discloses displaying information related to a received tool solicitation on a computer (paragraph 126, emphasis added), “The contextual information 125 may be OEM content or a different type of textual and/or non-textual vehicle service information displayed on the primary device 120.” Anent this, Merg further discloses (paragraph 226, emphasis added), “EEE 1 is a method comprising: receiving, from a computing device, (i) a user identifier, (ii) a vehicle identifier, and (iii) contextual information related to vehicle service content currently displayed on the computing device; based on the contextual information, determining a vehicle scan tool function to perform on the vehicle; identifying a vehicle scan tool associated with the user identifier, wherein the vehicle scan tool is configured to display at least one navigable menu to select from a plurality of vehicle scan tool functions that include the vehicle scan tool function and to select from a plurality of vehicle identifiers that includes the vehicle identifier; causing a selectable vehicle scan tool initialization option to be displayed on the computing device; receiving, from the computing device, a selection of the selectable vehicle scan tool initialization option; and in response to receiving the selection, providing instructions to select the vehicle scan tool function and the vehicle identifier from the at least one navigable menu on the vehicle scan tool to initialize the vehicle scan tool to perform the vehicle scan tool function on the vehicle.”
Merg does not disclose receiving user input representative of the user agreeing to retrieve the diagnostic information from the third-party vehicle, and sending an accept signal to the server. However, Zinchenko teaches consent of a user for a remote retrieval of vehicle diagnostic information (paragraph 10, emphasis added), “In at least one disclosed embodiment of the diagnostic method, vehicle diagnostic information is additionally retrieved from a vehicle diagnostic system of one of the vehicles from the group of vehicles depending on the generated diagnostic information. The vehicle from which the vehicle diagnostic information is retrieved may, for example, be the vehicle which the user who input the data into the social medium is currently using, or a vehicle of the same type. In the former case, a consent of the user for a remote retrieval of his vehicle diagnostic information is understandably required.”
Merg does not disclose receiving a tool solicitation signal including a general location of a requested scan and a requested time-window for the scan to take place. Kent et al. (U.S. Patent Application Publication 2014/0052531) teaches making an appointment with a service/repair shop (paragraph 82, emphasis added), “Also, the main page 260 can allow the owner to make a service, maintenance, and/or repair appointment. For example, the main page 260 can provide a link 360 for making an appointment. Hence, the backend system can receive requests for and setup owner’s appointment with a service/repair shop, for a particular date and time of the appointment and reason.” See also paragraph 86.
Also, Sanchez et al. (U.S. Patent 11,138,814) teaches requesting an appointment window (column 9, lines 43-48, emphasis added), “The request may indicate one or more preferred or available times or dates for appointments. Further, the request may indicate a location of the vehicle device 206, which may be used to identify the service provider (i.e., those service providers within a vicinity of the location).” Sanchez further teaches (column 10, line 65, through column 11, line 3, emphasis added), “The request device 206 may automatically schedule (278) an appointment with the selected service provider upon receiving, via the user interface, a selection for an appointment. In particular, a user may select to schedule an appointment with the service provider at an indicated time and date.”
However, Merg does not disclose receiving a tool selection signal from a server, including a general location of a requested scan and a requested time-window for the scan to take place; and later receiving a confirmation signal from the server, the confirmation signal including scheduling particulars including a time and a precise location of the requested scan to. No other prior art of record supplies the deficiency of Merg.
Response to Arguments
Applicant's arguments filed April 13, 2026 have been fully considered, but they are not persuasive. The claims as amended are now found non-obvious, but remain rejected under 35 U.S.C. 101. Applicant argues (page 7 of the Amendment and Remarks) that the claims are directed to a specific technological workflow for coordinating an actual third-party diagnostic scan using registered diagnostic tools, mobile devices, and server-based dispatch functionality. Examiner replies that this amounts to making an appointment for a user with a vehicle to go to the location of a diagnostic tool, a form of organizing human activity, and therefore an abstract idea under Step 2A, Prong One, of the Alice/Mayo test. Examiner notes that technology, such as a server and a vehicle owner device (claim 21) or mobile communication device (claim 33) is used in carrying out the recited procedures, but replies that the technology used is merely well-understood, routine, and conventional, and that using technical means to arrange an appointment does not therefore make the claimed invention significantly more than the abstract idea (Step 2A, Prong Two, and Step 2B).
Applicant argues (page 8 of the Amendment and Remarks) that the ordered combination of limitations requires a particular dispatch architecture, a particular geographic and capability-based filtering process, a particular staged disclosure of location information, and a particular acceptance-triggered transmission of precise scheduling parameters. Examiner replies that to the extent that this is an accurate description, the features are not advances in technology, but merely a matter of using well-understood, routine, and conventional technology, such as a server and a communication device, to receive and transmit particular information regarding commercial interactions.
The present claims are not, to the best of Examiner’s knowledge, an exact match to the claims in any precedential decision, but they are analogous to the claims in several court precedents. Specifically, they are analogous to the representative claim in the Ultramercial, Inc. v. Hulu, LLC decision, in which a method claim included, inter alia, “a third step of providing the media product for sale at an Internet website”, and therefore could not be carried out without the use of computer and telecommunication technology. The Court of Appeal for the Federal Circuit found the claims patent-ineligible, and wrote “The claims’ invocation of the Internet also adds no inventive concept. As we have held, the use of the Internet is not sufficient to save otherwise abstract claims from ineligibility under § 101.” Examiner maintains that the use of particular technology for communications in the instant claims likewise does not save otherwise abstract claims from ineligibility under § 101.
There is also the decision in FairWarning IP, LLC, v. Iatric Systems, Inc., where claims directed to a method of detecting improper access of a patient’s protected health information (PHI) in a computer environment, and to a corresponding system, were found patent-ineligible, despite the recitation of computer technology, and of a computer environment such the method could not be performed, and the system could not operate, without the use of computers. If this was the proper decision, it is likewise proper in the instant case to maintain 35 U.S.C. 101 rejections despite the use of some technology.
Examiner therefore maintains that the present rejections under 35 U.S. 101 are in accordance with the patent law and relevant precedents, as well as guidance from the Patent Office.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sanchez et al. (U.S. Patent 11,138,814) disclose technology for implementing a reverse communication system for automotive devices.
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/NICHOLAS D ROSEN/ Primary Examiner, Art Unit 3689 June 15, 2026
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