DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the communications filed on February 25, 2026. The Applicant’s Amendment and Request for Reconsideration has been received and entered.
Claims 1, 5-9, 11-16 and 18-22 are currently pending and have been examined. Claims 1, 11, and 18 have been amended. Claims 2-4, 10, 17, and 23 have been cancelled.
Response to Arguments
Applicant’s amendments necessitated the new grounds of rejection.
Regarding the rejection of claims 1, 5-9, 11-16 and 18-22 under 35 USC 101, Applicant’s arguments have been fully considered but they are not persuasive for the reasons set forth infra.
Applicant’s remaining arguments have been fully considered but they are not persuasive. Particularly, Applicant’s arguments are directed to the instantly amended claims, and are thus moot in view of the new grounds of rejection. The Examiner notes that the amended claims have been rejected under 112(a) and 112(b) and interpreted accordingly, as found infra.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 5-9, 11-16 and 18-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre- AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre- AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1, and similarly claims 11 and 18, recites "present a visual indicator overlapping at least two usage classes that dynamically shifts to encompass more or less of a given of the at least two usage classes based on continued recordation of the updated vehicle usage data, wherein a degree of overlap over usage classes of the at least two usage classes corresponds to a quantitative comparison between aggregate recorded updated vehicle data and respective usage data parameters predefined as applicable for classification into each of the at least two usage classes.”
The recited subject matter of claim 1 does not conform to the disclosure in such a manner that one of ordinary skill in the art would recognize as being adequately described as the invention or as subject matter which the Applicant actually had possession of at the time of the invention. A review of the disclosure does not reveal the manner in which the visual indicator is presented overlapping at least two usage classes that dynamically shifts to encompass more or less of a given of the at least two usage classes based on continued recordation of the updated vehicle usage data, wherein a degree of overlap over usage classes of the at least two usage classes corresponds to a quantitative comparison between aggregate recorded updated vehicle data and respective usage data parameters predefined as applicable for classification into each of the at least two usage classes.
It is noted that this is not an enablement rejection. Applicant's failure to disclose any meaningful structures/algorithms regarding these limitations raises questions concerning whether Applicant truly had possession of these features at the time of filing.
Claims 5-9 depend from claim 1 and thus inherit the deficiencies of claim 1.
Claims 12-16 depend from claim 1 and thus inherit the deficiencies of claim 11.
Claims 19-22 depend from claim 1 and thus inherit the deficiencies of claim 18.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 5-9, 11-16 and 18-22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA , the applicant, regards as the invention.
Claim 1, and similarly claims 11 and 18, recites "present a visual indicator overlapping at least two usage classes that dynamically shifts to encompass more or less of a given of the at least two usage classes based on continued recordation of the updated vehicle usage data, wherein a degree of overlap over usage classes of the at least two usage classes corresponds to a quantitative comparison between aggregate recorded updated vehicle data and respective usage data parameters predefined as applicable for classification into each of the at least two usage classes.” The metes and bounds of this claim are unclear because a person having ordinary skill in the art cannot determine how to avoid infringement.
As discussed above, the disclosure does not disclose any meaningful structure/algorithm explaining how one would present a visual indicator overlapping at least two usage classes that dynamically shifts to encompass more or less of a given of the at least two usage classes based on continued recordation of the updated vehicle usage data, wherein a degree of overlap over usage classes of the at least two usage classes corresponds to a quantitative comparison between aggregate recorded updated vehicle data and respective usage data parameters predefined as applicable for classification into each of the at least two usage classes. For examination purposes, the Examiner has interpreted this claim as merely presenting a visual indicator.
Claims 5-9 depend from claim 1 and thus inherit the deficiencies of claim 1.
Claims 12-16 depend from claim 1 and thus inherit the deficiencies of claim 11.
Claims 19-22 depend from claim 1 and thus inherit the deficiencies of claim 18.
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, 5-9, 11-16 and 18-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1. When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
Step 2A – Prong One. If the claims fall within one of the statutory categories, it must then be determined whether the claims recite an abstract idea, law of nature, or natural phenomenon.
Step 2A – Prong Two. If the claims recite an abstract idea, law of nature, or natural phenomenon, it must then be determined whether the claims recite additional elements that integrate the judicial exception into a practical application. If the claims do not recite additional elements that integrate the judicial exception into a practical application, then the claims are directed to a judicial exception.
Step 2B. If the claims are directed to a judicial exception, it must be evaluated whether the claims recite additional elements that amount to an inventive concept (i.e. “significantly more”) than the recited judicial exception.
In the instant case, claims 1 and 5-9 are directed to a machine; claims 11-16 are directed to a manufacture; and claims 18-22 are directed to a process.
A claim “recites” an abstract idea if there are identifiable limitations that fall within at least one of the groupings of abstract ideas enumerated in MPEP 2106. In the instant case, claim 1, and similarly claims 11 and 18, recite the steps of: receive a set plurality of maintenance recommendations from a manufacturer, the received recommendations including mileage-until-service for the recommendations; record updated vehicle usage data while the vehicle is operationally utilized; determine a usage class for the vehicle based on correlation of the updated vehicle usage data to at least one of a plurality of usage classes predefined based on usage data parameters applying thereto; present a visual indicator overlapping at least two usage classes that dynamically shifts to encompass more or less of a given of the at least two usage classes based on continued recordation of the updated vehicle usage data, wherein a degree of overlap over usage classes of the at least two usage classes corresponds to a quantitative comparison between aggregate recorded updated vehicle data and respective usage data parameters predefined as applicable for classification into each of the at least two usage classes; present the received maintenance recommendations in a selectable manner, the display also including representation of vehicle usage classification as a graphic displaying mileage-until-service variance between multiple usage classes, wherein a current usage class is visually indicated on the graphic and wherein the received recommendations also include the current usage class and the mileage-until-service for a plurality of alternative usage classes of the multiple usage classes that are each different from the current usage class; receive selection of one or more maintenance recommendations; aggregate a projected cost of the selected maintenance recommendations and displaying an aggregated cost; and responsive to confirmation of the selected maintenance recommendations being received, send data indicating the selected maintenance recommendation to a preferred dealer. -- these claim limitations set forth certain methods of organizing human activity, particularly commercial interactions including advertising, marketing, and sales activities/behaviors.
Additionally, these steps set forth mental processes, particularly concepts performed in the human mind or by a human using a pen and paper, including, inter alia, the observation and evaluation of information.
The limitations of the claims are not indicative of integration into a practical application. Taking the independent claim elements separately, the additional elements of performing the steps wirelessly and via a server, a display, a processor, and a vehicle computer -- merely implement the abstract idea on a computer environment. Considered in combination, the steps of Applicant’s method add nothing that is not already present when the steps are considered separately.
The remaining claim limitations recited in dependent claims merely narrow the abstract idea and do not recite further additional elements. Thus, claims 1, 5-9, 11-16 and 18-22 are directed to an abstract idea.
Regarding the independent claims, the technical elements of performing the steps wirelessly and via a server, a display, a processor, and a vehicle computer-- merely implement the abstract idea on a computer environment. Additionally, the dependent claims do not recite further technical elements.
When considering the elements and combinations of elements, the claim(s) as a whole, do not amount to significantly more than the abstract idea itself. This is because the claims do not amount to an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer itself; the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment; the claims merely amounts to the application or instructions to apply the abstract idea on a computer; or the claims amounts to nothing more than requiring a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry.
The analysis above applies to all statutory categories of invention. Accordingly, claims 1, 5-9, 11-16 and 18-22 are rejected as ineligible for patenting under 35 USC 101 based upon the same rationale.
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 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 of this title, 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 1, 5-9, 11-16 and 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over Dwan (US PGP 2013/0282254) in view of Capriotti (US PGP 2013/0325541).
As per claim 1, Dwan teaches [a] system comprising: a processor configured to:
wirelessly receive a plurality of maintenance recommendations from a manufacturer server, the received recommendations . . . ; (Dwan: [0040] (Outputs to the system may include, but are not limited to, a visual display 202 and a speaker 224 or stereo system output. The speaker 224 may be connected to an amplifier 226 and may receive its signal from the processor 204 through a digital-to-analog converter 228. Output can also be made to a remote BLUETOOTH device such as PND 230 or a USB device such as vehicle navigation device 232 along the bi-directional data streams shown at 234 and 236, respectively.); [0045]-[0052] (The modem application software may access an embedded module or firmware on the BLUETOOTH transceiver 218 to complete wireless communication with a remote BLUETOOTH transceiver (such as that found in a nomadic device).); Figs. 4-5; [0081]-[0084] (If the request is for vehicle diagnostics, the VCS 200 may receive one or more diagnostic trouble codes (DTC) from the vehicle modules by communicating with the one or more vehicle modules over a vehicle network 308 (block 508). One or more data packets may be generated and packaged at the VCS 200 which may include the one or more DTCs as part of servicing status data in the data packet(s) transmitted to terminal 102 (block 510). Some or all of the status data may be packaged (block 512) in data packet(s) and transmitted (block 514) to the terminal 102 as servicing return data packet(s). As described above, the data from the return servicing data packet(s) may be extracted and processed at terminal 102 and the servicing status may be output from the terminal 102. The output may be used to address vehicle concerns and/or as confirmation of the vehicle servicing process.)
record updated vehicle usage data while the vehicle is operationally utilized; ((Dwan: [0061]-[0068] (If and when a connection to the database 104 is established (block 406), the software 300 may retrieve vehicle servicing operation information based on the vehicle servicing operation selected (block 408). For example, if the user selected module updates, update patches may be retrieved from the vehicle information database 104.)
present a visual indicator overlapping at least two usage classes that dynamically shifts to encompass more or less of a given of the at least two usage classes based on continued recordation of the updated vehicle usage data, wherein a degree of overlap over usage classes of the at least two usage classes corresponds to a quantitative comparison between aggregate recorded updated vehicle data and respective usage data parameters predefined as applicable for classification into each of the at least two usage classes; (Dwan: [0056] (The diagnostic software 300 may offer a number of different servicing operations. Non-limiting examples of such servicing operations may include vehicle diagnostics, updating vehicle modules (software/firmware), and programming (e.g., key reprogramming). Accordingly, the software 300 may receive an operation selection input from the user selecting one or more of servicing operations (block 404). The user input may or may not be in response to a request from the software 300 for the user to input a service operation selection.)
present a display of the received maintenance recommendations in a selectable manner, . . . (Dwan: [0056] (The diagnostic software 300 may offer a number of different servicing operations. Non-limiting examples of such servicing operations may include vehicle diagnostics, updating vehicle modules (software/firmware), and programming (e.g., key reprogramming). Accordingly, the software 300 may receive an operation selection input from the user selecting one or more of servicing operations (block 404). The user input may or may not be in response to a request from the software 300 for the user to input a service operation selection.)
receive selection of one or more maintenance recommendations from the display; (Dwan: [0056] (The diagnostic software 300 may offer a number of different servicing operations. Non-limiting examples of such servicing operations may include vehicle diagnostics, updating vehicle modules (software/firmware), and programming (e.g., key reprogramming). Accordingly, the software 300 may receive an operation selection input from the user selecting one or more of servicing operations (block 404). The user input may or may not be in response to a request from the software 300 for the user to input a service operation selection.)
Dwan does not explicitly disclose the following known techniques which are taught by Capriotti:
determine a usage class for the vehicle based on correlation of the updated vehicle usage data to at least one of a plurality of usage classes predefined based on usage data parameters applying thereto; (Capriotti: [0070] (in the customer information window may permit the sales associate, customer, or technician to include a different vehicle in the customer's information. Once this has been initiated, a vehicle information window appears. The selection process in the vehicle information window provides vehicle parameters such as, but not limited to, VIN number, make, model, year, color, tires, mileage, maintenance preferences, and part preferences may be selected, as shown in FIG. 10. Because most scheduled maintenance intervals are based upon the mileage of the vehicle, a mileage window is provided in the vehicle information window to remind the customer or sales associate of the vehicle's status.); [0059] (In an additional embodiment, the computer system may calculate an extrapolated maintenance date based on vehicle mileage and last maintenance visit, and automatically text or email the customer prior to the scheduled maintenance date. For example, but not limited to, three-quarters of the way between the last maintenance visit and the next scheduled maintenance visit, the customer may receive a text message requesting the mileage for the vehicle. Based on the mileage input, the next maintenance date can be extrapolated and confirmed by the computer system. However, other parameters may be factored in determining the extrapolated maintenance alert, such as, but not limited to, type of vehicle, warranty specs, and driving history of the customer.))
. . . including mileage-until-service for the recommendations; (Capriotti: [0059] (In an additional embodiment, the computer system may calculate an extrapolated maintenance date based on vehicle mileage and last maintenance visit, and automatically text or email the customer prior to the scheduled maintenance date. For example, but not limited to, three-quarters of the way between the last maintenance visit and the next scheduled maintenance visit, the customer may receive a text message requesting the mileage for the vehicle. Based on the mileage input, the next maintenance date can be extrapolated and confirmed by the computer system. However, other parameters may be factored in determining the extrapolated maintenance alert, such as, but not limited to, type of vehicle, warranty specs, and driving history of the customer.); [0107] (However, in alternative embodiments, the E-Garage has the capacity to factor in other variables such as, but not limited to, mileage driven, quality of parts, and vehicle history to recommend maintenance visits that differ from the manufacturer's recommended maintenance schedule.))
. . . the display also including representation of vehicle usage classification as a graphic displaying mileage-until-service variance between multiple usage classes, wherein a current usage class is visually indicated on the graphic and wherein the received recommendations also include the current usage class and the mileage-until-service for a plurality of alternative usage classes of the multiple usage classes that are each different from the current usage class; (Capriotti: [0070] (in the customer information window may permit the sales associate, customer, or technician to include a different vehicle in the customer's information. Once this has been initiated, a vehicle information window appears. The selection process in the vehicle information window provides vehicle parameters such as, but not limited to, VIN number, make, model, year, color, tires, mileage, maintenance preferences, and part preferences may be selected, as shown in FIG. 10. Because most scheduled maintenance intervals are based upon the mileage of the vehicle, a mileage window is provided in the vehicle information window to remind the customer or sales associate of the vehicle's status.); [0059] (In an additional embodiment, the computer system may calculate an extrapolated maintenance date based on vehicle mileage and last maintenance visit, and automatically text or email the customer prior to the scheduled maintenance date. For example, but not limited to, three-quarters of the way between the last maintenance visit and the next scheduled maintenance visit, the customer may receive a text message requesting the mileage for the vehicle. Based on the mileage input, the next maintenance date can be extrapolated and confirmed by the computer system. However, other parameters may be factored in determining the extrapolated maintenance alert, such as, but not limited to, type of vehicle, warranty specs, and driving history of the customer.))
aggregate a projected cost of the selected maintenance recommendations and displaying an aggregated cost; and (Capriotti: [0073] (The sales associate may circle around the vehicle with the customer, discussing maintenance options, photographing vehicle parts and damage, tabulating maintenance and parts costs, deriving price quotes, forwarding maintenance information for the technician, and generally building the maintenance history of the vehicle.))
responsive to confirmation of the selected maintenance recommendations being received by the processor, send data indicating the selected maintenance recommendation to a preferred dealer. (Capriotti: [0018] (4) a graphical, real-time maintenance interval schedule for alerting a customer, a sales associate, and a technician about recommended scheduled maintenance in the present or the future; 5) an appointment setting system that provides a unique time slot for each customer to ensure that maintenance work will not be overbooked at the maintenance facility; 6) communication methods for coordinating a vehicle's maintenance information between a customer and a maintenance facility;); [0094] (If the customer decided to obtain maintenance, a specific button, such as a “#” button on the telephone could be pushed. The customer would then be directed to a live operator or sales associate to schedule maintenance. However, a further embodiment would allow the customer to schedule maintenance through the computer system.)
This known technique is applicable to the method of Dwan as they both share characteristics and capabilities, namely, they are directed to vehicle maintenance.
One of ordinary skill in the art at the time of filing would have recognized that applying the known technique of Capriotti would have yielded predictable results and resulted in an improved method. It would have been recognized that applying the technique of Capriotti to the teachings of Dwan would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such mileage-until-service and aggregated cost features into similar methods. Further, applying determine a usage class for the vehicle based on correlation of the updated vehicle usage data to at least one of a plurality of usage classes predefined based on usage data parameters applying thereto; the mileage-until-service for the recommendations; the display also including representation of vehicle usage classification as a graphic displaying mileage-until-service variance between multiple usage classes, wherein a current usage class is visually indicated on the graphic and wherein the received recommendations also include the current usage class and the mileage-until-service for a plurality of alternative usage classes of the multiple usage classes that are each different from the current usage class; aggregate a projected cost of the selected maintenance recommendations and displaying an aggregated cost; and responsive to confirmation of the selected maintenance recommendations being received by the processor, send data indicating the selected maintenance recommendation to a preferred dealer to the teachings of Dwan would have been recognized by those of ordinary skill in the art as resulting in an improved method that would allow proper integration of communication-based technology with vehicle maintenance (Capriotti: Para [0002]-[0011]).
Examiner Note: While prior art has been applied, the Examiner notes that what is included in the display is merely nonfunctional descriptive material and is not functionally involved in the steps recited. The presentation of a display would be performed the same regardless of the type of information included in it. This descriptive material will not distinguish the claimed invention from the prior art in terms of patentability, see In re Gulack, 70 F.2d 1381, 1385, 217 USPQ 401 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994).
As per claim 5, Dwan/Capriotti teaches The system of claim 1, wherein the processor is further configured to shift a visual indicator indicating the current usage class so that the visual indicator overlaps at least a second usage class, wherein the current usage class included in the received recommendations further indicates a degree, based on observed vehicle usage, to which the visual indicator should overlap at least the second usage class. (Capriotti: [0070]; [0059])
The motivation for applying the known techniques of Capriotti to the teachings of Dwan is the same as that set forth above, in the rejection of Claim 1.
As per claim 6, Dwan/Capriotti teaches wherein the display includes a selectable option to expand a given of the received recommendations and wherein, responsive to selection of the selectable option, the processor is further configured to display at least a basis for the recommendation. (Capriotti: Figs. 9-22 (displaying selectable options, with expansions and difference basis for recommendations); [0070]-[0088])
The motivation for applying the known techniques of Capriotti to the teachings of Dwan is the same as that set forth above, in the rejection of Claim 1.
As per claim 8, Dwan/Capriotti teaches wherein the recommendations include a recommendation to change oil. (Capriotti: [0106]; Fig. 21; [0087]-[0088])
The motivation for applying the known techniques of Capriotti to the teachings of Dwan is the same as that set forth above, in the rejection of Claim 1.
As per claim 9, Dwan/Capriotti teaches wherein the recommendations include a recommendation to replace an air filter. (Capriotti: [0005]; Fig. 21; [0087]-[0088])
The motivation for applying the known techniques of Capriotti to the teachings of Dwan is the same as that set forth above, in the rejection of Claim 1.
As per claim 10, Dwan/Capriotti teaches wherein the recommendations include a recommendation to replace an air filter. (Capriotti: [0005]; Fig. 21; [0087]-[0088])
The motivation for applying the known techniques of Capriotti to the teachings of Dwan is the same as that set forth above, in the rejection of Claim 1.
As per claims 11-16, these claims are substantially similar to claims 1 and 5-9, respectively, and are therefore rejected in the same manner as these claims, as set forth above.
As per claims 18-22, these claims are substantially similar to claims 1 and 5-9, respectively, and are therefore rejected in the same manner as these claims, as set forth above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Palladino (US PGP 2008/0269977) -- the algorithm for vehicle scheduling including a first sub-algorithm for usage rate and a second sub-algorithm for service scheduling
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 JENNIFER V LEE whose telephone number is (571)272-4778. The examiner can normally be reached Monday - Friday 9AM - 5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY A. SMITH can be reached at (571)272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER V LEE/Examiner, Art Unit 3688
/Jeffrey A. Smith/Supervisory Patent Examiner, Art Unit 3688
Prosecution Insights