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 .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group 1, claim(s) 1, 5-7, 18-27 drawn to configuring a service device or service procedure.
Group 2, claim(s) 28-31, drawn to resolving a spatial location of an RFID tag from a return signal strength received at one or more RFID readers.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: they each are directed toward different inventions and have a different special technical feature.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
During a telephone interaction with Mark Brooks on 2/16/2026, a provisional election was made without traverse to prosecute the invention of group 1, claims 1, 5-7, and 18-27. Affirmation of this election must be made by applicant in replying to this Office action. Claims 28-31 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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, 5-7, and 18-27 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
In accordance with the 2019 Revised Patent Subject Matter Eligibility Guidance, the examiner is to perform an analysis (Step 1, Step 2A (Prong One and Prong Two), and Step 2B) to evaluate whether the claims are drawn to patent-eligible subject matter.
Step 1 – Evaluate whether the claimed subject matter fails within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter.
In the instant case, claims 1, 5-7, and 18-27 are directed to a process. Thus, each of the pending claims is directed to one of the statutory categories. Consequently, the analysis proceeds to the two-step framework previously set forth in Alice/Mayo.
Revised Step 2A: Prong One – Evaluate Whether the Claim Recites a Judicial Exception
To determine whether a claim recite an abstract idea, examiners are to (a) identify the specific limitations the claims under examination that the examiner believes recites an abstract idea and (b) determine whether the identified limitations falls within one of the following subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance:
(a) Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations;
(b) Certain method of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal integration (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities of behaviors; business relationships); maintaining personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
Regarding claim 1:
1. A method for transferring vehicle identification data between
The claims recite an abstract idea of acquiring tire information and conveying that information to automotive tire service locations. The claim limitations recite an abstract idea and are concepts that fall into “Certain Methods of Human Activity”. Accordingly, the claim requires further analysis under Prong Two.
Revised Step 2A: Prong Two – If the Claim Recites a Judicial Exception, Evaluate Whether the Claim Recites Additional Elements that Integrate the Exception into a Practical Application of that Exception.
A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. With respect to claim 1, the claim includes additional elements of a networked data management system, a RFID tag, antenna, data storage, and service device(s) (see strike-through elements in the claim above). The additional elements are recited at a high level of generality and amount to acquiring data, sending data, and storing data applying the judicial exception by general-purpose computing elements. Consequently, these claims fail to integrate the judicial exception into a practical application and are directed toward the judicial exception.
Step 2B: If the Claim is directed to a Judicial Exception, Evaluate Whether the Claim Provides an Inventive Concept.
If a claim has been determined to be directed to a judicial exception under Step 2A, examiners should then evaluate the additional elements individually and in combination under Step 2B to determine whether the provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). Here, in regards to claim 1, the additional elements of a networked data management system, a RFID tag, antenna, data storage, and service device(s) (see underlined elements in the claim above) fail to provide an inventive concept and when considered separately and in combination, the elements do not add significantly more. Rather, the additional elements receive and process data, which are well-understood, routine, conventional computer functions as recognized by the court decisions listed in MPEP § 2106.05(d) (e.g., use of a computer for electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log).
Moreover, “considered as an ordered combination, the computer components of [applicant’s] claims add nothing that is not already present when the steps are considered separately.” Alice v. CLS Bank, 134 S. Ct. 2347, 110 USPQ2d 1976, 1985 (2014). Consequently, the Examiner concludes that the claims do not recite significantly more than the abstract idea, and consequently remain ineligible.
Regarding dependent claims 21-27, the described elements in these claims only further describe what the automotive service device is and therefore do not actually add additional elements to what was already discussed with respect to claim 1 above. The various actions described in the dependent claims further limit the abstract idea and do not constitute additional elements for the purposes of determining eligibility.
Regarding claim 5-7, 18-20:
5. A method for configuring a
The claims recite an abstract idea of acquiring tire information and conveying that information to a tire service device. The claim limitations recite an abstract idea and are concepts that fall into “Certain Methods of Human Activity”. Accordingly, the claim requires further analysis under Prong Two.
Revised Step 2A: Prong Two – If the Claim Recites a Judicial Exception, Evaluate Whether the Claim Recites Additional Elements that Integrate the Exception into a Practical Application of that Exception.
A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. With respect to claims 5-7 and 18-20, these claims include additional elements of a networked data management system, a RFID tag, data storage, antenna, a device/tire changer/wheel balancing machine (see at least strike-through elements in claim 5 above). The additional elements are recited at a high level of generality and amount to acquiring data, sending data, and storing data applying the judicial exception by general-purpose computing elements. Consequently, these claims fail to integrate the judicial exception into a practical application and are directed toward the judicial exception.
Step 2B: If the Claim is directed to a Judicial Exception, Evaluate Whether the Claim Provides an Inventive Concept.
If a claim has been determined to be directed to a judicial exception under Step 2A, examiners should then evaluate the additional elements individually and in combination under Step 2B to determine whether the provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). Here, in regards to claims 5-7, 18-20, the additional elements of a networked data management system, a RFID tag, data storage, antenna, a device/tire changer/wheel balancing machine (see at least strike-through elements in claim 5 above) fail to provide an inventive concept and when considered separately and in combination, the elements do not add significantly more. Rather, the additional elements receive and process data, which are well-understood, routine, conventional computer functions as recognized by the court decisions listed in MPEP § 2106.05(d) (e.g., use of a computer for electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log).
Moreover, “considered as an ordered combination, the computer components of [applicant’s] claims add nothing that is not already present when the steps are considered separately.” Alice v. CLS Bank, 134 S. Ct. 2347, 110 USPQ2d 1976, 1985 (2014). Consequently, the Examiner concludes that the claims do not recite significantly more than the abstract idea, and consequently remain ineligible.
Response to Arguments
Applicant’s arguments with respect to 101 are not convincing. The use RFID readers with directional antennas are known in the art of RFID tag readers and the use of these types of readers for gathering information does not contribute to a meaningful limitation under Step 2A, prong 2 or an inventive concept under step 2B. Further, altering settings on a device can be done by human activity by pushing a button on the device.
The examiner suggests amending the claims to eliminate the possibility of a human manually configuring/altering the device(s). Attention is directed to, for example, paragraph [0043] of applicant’s specification for possible amendments.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Florian Zeender whose telephone number is (571)272-6790. The examiner can normally be reached Monday-Friday, 9:30-5:30pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Florian M Zeender can be reached at 571-272-6790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Florian Zeender
Supervisory Patent Examiner
Art Unit 3627
/FLORIAN M ZEENDER/Supervisory Patent Examiner, Art Unit 3627