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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/24/2026 has been entered.
Status of the Claims
The claims 1-6 are currently pending and have been examined. Applicant amended claims 1, 4, 6.
Response to Arguments/Amendments
The amendment filed June 24, 2026 has been entered. Claims 1-6 are currently pending in the Application. Applicant’s amendments to the Claims have overcome the 35 U.S.C. 103 rejections previously set forth in the Final Office Action mailed April 1st, 2026.
Applicant's arguments regarding the 35 U.S.C. 101 mental process rejection have been fully considered but they are not persuasive.
The Examiner has carefully considered applicant’s arguments and respectfully disagrees. Applicant argues that the amended claims recite specific technical steps that cannot be practically performed in the human mind or with pen and paper, and thus should not be characterized as a mental process. Applicant further argues the limitations require automatic and continuous reception of vehicle position data transmitted periodically from a TCU installed on a vehicle, and real-time comparison of such position data against the stored location of a repair factory to automatically exclude irrelevant diagnostic data. Applicant further argues such processing, involving multiple vehicles, real-time position data, and automated spatial comparison, is fundamentally beyond what a human could perform mentally or manually, and represents a concrete technical improvement in the reliability of vehicle diagnostic data prior to association with repair content and that the amended claims integrate the judicial exception into a practical application and recite significantly more than the judicial exception itself (See page 6 of Applicant’s remarks).
The Examiner has considered such arguments; however, when given their broadest reasonable interpretation in light of the specification, the claims remain directed to a judicial exception—specifically, to mental processes involving evaluation, comparison, and selection of information. The claimed steps of acquiring and storing first information, acquiring second information, excluding a subordinate diagnostic trouble code, excluding first information, extracting first information, excluding first information, associating the diagnostic trouble code, storing a correspondence, determining whether first information has been newly acquired, and transmitting repair information reflect data collection, evaluation, and presentation of results—activities that can be performed mentally or with pen and paper with respect to the evaluating, comparing, and decision-making. The recitation that the first information is transmitted from a telematics control unit at a predetermined transmission cycle merely specifies the source and manner in which the information used in the claimed evaluation is obtained, and does not change the claimed evaluation into a technological process. Performing these steps on a repair information provision apparatus comprising a processor and a memory coupled to the processor merely automates what a person could do mentally or manually with respect to the claimed evaluation and decision-making and does not transform the nature of the claim into a technological process. Any alleged technical improvement is not shown in the steps of the claims, which merely describe generic data collection, analysis, and presentation operations performed by a conventional apparatus comprising a processor and a memory coupled to the processor. While Applicant argues the method improves reliability of vehicle diagnosis data prior to association with actual repair content due to processing involving multiple vehicles, real-time position data, and automated spatial comparison, any such benefit recited in the claims is directed to the relevance or reliability of the selected repair-related information rather than to an improvement in the functioning of the computer or navigation technology itself. Likewise, the use of the TCU provides vehicle diagnostic and position information for use in the claimed evaluation, rather than improving the operation of the TCU itself. Exclusion of diagnostic trouble codes to allow relevant repair information corresponding to a relevant diagnostic trouble code does not represent a technical improvement to the operation of the underlying computer, TCU, or vehicle technology. Accordingly, the Examiner finds that the amended claims do not include additional elements that meaningfully integrate the judicial exception into a practical application or that amount to significantly more than the exception itself. The rejection under 35 U.S.C. 101 is therefore maintained for claims 1-6.
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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In January, 2019 (updated October 2019), the USPTO released new examination guidelines setting forth a two-step inquiry for determining whether a claim is directed to non-statutory subject matter. According to the guidelines, a claim is directed to non-statutory subject matter if:
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), or
STEP 2: the claim recites a judicial exception, e.g. an abstract idea, without reciting additional elements that amount to significantly more than the judicial exception, as determined using the following analysis:
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon?
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application?
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
Using the two-step inquiry, it is clear that claims 1 and 6 are directed toward non-statutory subject matter, as shown below:
STEP 1: Do claims 1 and 6 fall within one of the statutory categories? Yes. The claims are directed toward an apparatus and a method including at least one step.
STEP 2A (PRONG 1): Is the claim directed to a law of nature, a natural phenomenon or an abstract idea? Yes, the claims are directed to an abstract idea.
With regard to STEP 2A (PRONG 1), the guidelines provide three groupings of subject matter that are considered abstract ideas:
Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;
Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
Mental processes – concepts that are practicably performed in the human mind (including an observation, evaluation, judgment, opinion).
Claim 1. A repair information provision apparatus, comprising:
a processor and a memory coupled to the processor, wherein the apparatus is configured to perform:
acquiring and storing first information received at a predetermined transmission cycle through a telematics control unit provided on a vehicle, the vehicle being provided with an on-board diagnostics function, the first information including a diagnostic trouble code, a generation position of the diagnostic trouble code, and a vehicle ID;
acquiring second information including a repair timing, a repair content of a repair performed on the vehicle, and a repair factory ID of a repair factory that performed the repair, the second information being inputted by a worker;
excluding, from the stored first information, a subordinate diagnostic trouble code that is generated along with a main diagnostic trouble code that indicates specific trouble when the first information includes a plurality of the diagnostic trouble codes including the main diagnostic trouble code;
excluding, from the stored first information, the first information transmitted before a delivery date of the vehicle;
excluding, from the stored first information, the first information that was transmitted on the same day and at least a predetermined time period before the newly acquired first information;
extracting, from the stored first information, the first information that was transmitted immediately before the repair timing;
excluding, from the extracted first information, the first information transmitted from the telematics control unit whose generation position of the diagnostic trouble code is within a predetermined range from a location of the repair factory corresponding to the repair factory ID included in the second information;
associating the diagnostic trouble code included in the extracted first information with the repair content included in the second information based on a transmission timing of the extracted first information and the repair timing included in the second information, on condition that the extracted first information does not include a temporarily generated provisional diagnostic trouble code;
storing a correspondence between the diagnostic trouble code and the repair content associated;
then determining whether the first information has been newly acquired after the correspondence is stored;
and when it is determined that the first information has been newly acquired, transmitting repair information on the repair content corresponding to the diagnostic trouble code included in the newly acquired first information to a terminal of a repair factory corresponding to the vehicle ID included in the newly acquired first information based on the correspondence.
The method in claim 1, specifically the limitations “excluding, from the stored first information, a subordinate diagnostic trouble code…”, “excluding, from the stored first information, the first information…”, “extracting, from the stored first information, the first information…”, “excluding, from the extracted first information, the first information…”, “associating the diagnostic trouble code…”, “storing a correspondence…”, “then determining whether the first information has been newly acquired…” emphasized above, are a mental process that can be practicably performed in the human mind (or with pen and paper) and, therefore, an abstract idea. These limitations merely consists of excluding a subordinate diagnostic trouble code, excluding the first information, extracting the first information, excluding the first information, assigning the diagnostic trouble code, logging the correspondence, and determining if first information is newly acquired. This is equivalent to a person mentally observing the vehicle, separating out a subordinate diagnostic trouble code, separating out the first information, taking out the first information, separating out the first information, recognizing the diagnostic trouble code, remembering or recording the code and corresponding repair content, and figuring out if first information is newly acquired.
Claim 6. A repair information provision method, comprising the steps of:
acquiring and storing first information received at a predetermined transmission cycle through a telematics control unit provided on a vehicle, the vehicle being provided with an on- board diagnostics function, the first information including a diagnostic trouble code, a generation position of the diagnostic trouble code, and a vehicle ID;
acquiring second information including a repair timing, a repair content of a repair performed on the vehicle, and a repair factory ID of a repair factory that performed the repair, the second information being inputted by a worker;
excluding, from the stored first information, a subordinate diagnostic trouble code that is generated along with a main diagnostic trouble code that indicates specific trouble when the first information includes a plurality of the diagnostic trouble codes including the main diagnostic trouble code;
excluding, from the stored first information, the first information transmitted before a delivery date of the vehicle;
excluding, from the stored first information, the first information that was transmitted on the same day and at least a predetermined time period before the newly acquired first information;
extracting, from the stored first information, the first information that was transmitted immediately before the repair timing;
excluding, from the extracted first information, the first information transmitted from the telematics control unit whose generation position of the diagnostic trouble code is within a predetermined range from a location of the repair factory corresponding to the repair factory ID included in the second information;
associating the diagnostic trouble code included in the extracted first information with the repair content included in the second information based on a transmission timing of the extracted first information and the repair timing included in the second information, on condition that the extracted first information does not include a temporarily generated provisional diagnostic trouble code;
storing a correspondence between the diagnostic trouble code and the repair content associated;
then determining whether the first information has been newly acquired after the correspondence is stored;
and when it is determined that the first information has been newly acquired, transmitting repair information on the repair content corresponding to the diagnostic trouble code included in the newly acquired first information to a terminal of a repair factory corresponding to the vehicle ID included in the newly acquired first information based on the correspondence.
The method in claim 6, specifically the limitations “excluding, from the stored first information, a subordinate diagnostic trouble code…”, “excluding, from the stored first information, the first information…”, “extracting, from the stored first information, the first information…”, “excluding, from the extracted first information, the first information…”, “associating the diagnostic trouble code…”, “storing a correspondence…”, “then determining whether the first information has been newly acquired…” emphasized above, are a mental process that can be practicably performed in the human mind (or with pen and paper) and, therefore, an abstract idea. These limitations merely consists of excluding a subordinate diagnostic trouble code, excluding the first information, extracting the first information, excluding the first information, assigning the diagnostic trouble code, logging the correspondence, and determining if first information is newly acquired. This is equivalent to a person mentally observing the vehicle, separating out a subordinate diagnostic trouble code, separating out the first information, taking out the first information, separating out the first information, recognizing the diagnostic trouble code, remembering or recording the code and corresponding repair content, and figuring out if first information is newly acquired.
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? No, the claims do not recite additional elements that integrate the judicial exception into a practical application.
With regard to STEP 2A (prong 2), whether the claim recites additional elements that integrate the judicial exception into a practical application, the guidelines provide the following exemplary considerations that are indicative that an additional element (or combination of elements) may have integrated the judicial exception into a practical application:
an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
While the guidelines further state that the exemplary considerations are not an exhaustive list and that there may be other examples of integrating the exception into a practical application, the guidelines also list examples in which a judicial exception has not been integrated into a practical application:
an additional element merely recites the words “apply it” (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea;
an additional element adds insignificant extra-solution activity to the judicial exception; and
an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use.
In the present case, the additional limitations beyond the above-noted abstract ideas are as follows (where the underlined portions are the “additional limitations” while the bolded portions continue to represent the abstract “idea”).
Claim 1. A repair information provision apparatus, comprising:
a processor and a memory coupled to the processor, wherein the apparatus is configured to perform:
acquiring and storing first information received at a predetermined transmission cycle through a telematics control unit provided on a vehicle, the vehicle being provided with an on-board diagnostics function, the first information including a diagnostic trouble code, a generation position of the diagnostic trouble code, and a vehicle ID;
acquiring second information including a repair timing, a repair content of a repair performed on the vehicle, and a repair factory ID of a repair factory that performed the repair, the second information being inputted by a worker;
excluding, from the stored first information, a subordinate diagnostic trouble code that is generated along with a main diagnostic trouble code that indicates specific trouble when the first information includes a plurality of the diagnostic trouble codes including the main diagnostic trouble code;
excluding, from the stored first information, the first information transmitted before a delivery date of the vehicle;
excluding, from the stored first information, the first information that was transmitted on the same day and at least a predetermined time period before the newly acquired first information;
extracting, from the stored first information, the first information that was transmitted immediately before the repair timing;
excluding, from the extracted first information, the first information transmitted from the telematics control unit whose generation position of the diagnostic trouble code is within a predetermined range from a location of the repair factory corresponding to the repair factory ID included in the second information;
associating the diagnostic trouble code included in the extracted first information with the repair content included in the second information based on a transmission timing of the extracted first information and the repair timing included in the second information, on condition that the extracted first information does not include a temporarily generated provisional diagnostic trouble code;
storing a correspondence between the diagnostic trouble code and the repair content associated;
then determining whether the first information has been newly acquired after the correspondence is stored;
and when it is determined that the first information has been newly acquired, transmitting repair information on the repair content corresponding to the diagnostic trouble code included in the newly acquired first information to a terminal of a repair factory corresponding to the vehicle ID included in the newly acquired first information based on the correspondence.
Claim 1 does not recite any of the exemplary considerations that are indicative of an abstract idea having been integrated into a practical application. The steps of “acquiring and storing first information…” and “acquiring second information…” are recited at a high level of generality and amounts to mere data gathering, which is a form of extra solution activity. The step of “…transmitting repair information…” is recited at a high level of generality and amounts to mere post solution actions, which is a form of extra solution activity. The limitation “A repair information provision apparatus, comprising: a processor and a memory coupled to the processor, wherein the apparatus is configured to perform” is claimed generically and is operating in its ordinary capacity such that it does not use the judicial exception in a manner that imposes a meaningful limit on the judicial exception. The repair information provision apparatus comprising a processor and memory merely describes how to generally “apply” the otherwise mental judgments in a generic or general purpose computing environment. The repair information provision apparatus comprising a processor and memory is recited at a high level of generality and merely automates the acquiring, associating, excluding, extracting, associating, storing, determining, and outputting steps. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I). Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 6. A repair information provision method, comprising the steps of:
acquiring and storing first information received at a predetermined transmission cycle through a telematics control unit provided on a vehicle, the vehicle being provided with an on- board diagnostics function, the first information including a diagnostic trouble code, a generation position of the diagnostic trouble code, and a vehicle ID;
acquiring second information including a repair timing, a repair content of a repair performed on the vehicle, and a repair factory ID of a repair factory that performed the repair, the second information being inputted by a worker;
excluding, from the stored first information, a subordinate diagnostic trouble code that is generated along with a main diagnostic trouble code that indicates specific trouble when the first information includes a plurality of the diagnostic trouble codes including the main diagnostic trouble code;
excluding, from the stored first information, the first information transmitted before a delivery date of the vehicle;
excluding, from the stored first information, the first information that was transmitted on the same day and at least a predetermined time period before the newly acquired first information;
extracting, from the stored first information, the first information that was transmitted immediately before the repair timing;
excluding, from the extracted first information, the first information transmitted from the telematics control unit whose generation position of the diagnostic trouble code is within a predetermined range from a location of the repair factory corresponding to the repair factory ID included in the second information;
associating the diagnostic trouble code included in the extracted first information with the repair content included in the second information based on a transmission timing of the extracted first information and the repair timing included in the second information, on condition that the extracted first information does not include a temporarily generated provisional diagnostic trouble code;
storing a correspondence between the diagnostic trouble code and the repair content associated;
then determining whether the first information has been newly acquired after the correspondence is stored;
and when it is determined that the first information has been newly acquired, transmitting repair information on the repair content corresponding to the diagnostic trouble code included in the newly acquired first information to a terminal of a repair factory corresponding to the vehicle ID included in the newly acquired first information based on the correspondence.
Claim 6 does not recite any of the exemplary considerations that are indicative of an abstract idea having been integrated into a practical application. The steps of “acquiring and storing first information…”and “acquiring second information…” are recited at a high level of generality and amounts to mere data gathering, which is a form of extra solution activity. The step of “…transmitting repair information…” is recited at a high level of generality and amounts to mere post solution actions, which is a form of extra solution activity.
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No, the claims do not recite additional elements that amount to significantly more
than the judicial exception.
With regard to STEP 2B, whether the claims recite additional elements that provide significantly more than the recited judicial exception, the guidelines specify that the pre-guideline procedure is still in effect. Specifically, that examiners should continue to consider whether an additional element or combination of elements:
adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
As discussed above with respect to integration of the abstract idea into a practical application, the additional limitation(s) of “A repair information provision apparatus, comprising: a processor and a memory coupled to the processor, wherein the apparatus is configured to perform” is/are merely means to apply the exception and do not amount to “significantly more”, as adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984, are not sufficient to amount to significantly more than the judicial exception.
Further, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field. The additional limitations of “acquiring and storing first information…”, “acquiring second information…”, and “…transmitting repair information…” are well-understood, routine, and conventional activities because the specification does not provide any indication that the acquiring, associating, excluding, extracting, associating, storing, determining, and outputting steps are performed using anything other than a conventional computer. See also MPEP 2106.05(d)(II), and the cases cited therein, including Intellectual Ventures |, LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016), TL! Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610 (Fed. Cir. 2016), and O/P Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), indicate that mere performance of an action is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Hence, the claim is not patent eligible.
CONCLUSION
Thus, since claims 1 and 6 are: (a) directed toward an abstract idea, (b) do not recite additional elements that integrate the judicial exception into a practical application, and (c) do not recite additional elements that amount to significantly more than the judicial exception, it is clear that claims 1 and 6 are directed towards non-statutory subject matter.
Dependent claims 2-5 further limit the abstract idea without integrating the abstract idea into practical application or adding significantly more, such as the limitations in claim 4 that amount to insignificant extra solution activity using a similar analysis applied to claim 1 above.
As such, claims 1-6 are rejected under 35 USC 101 as being drawn to an abstract idea without significantly more, and thus are ineligible.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEWEL ASHLEY KUNTZ whose telephone number is (571)270-5542. The examiner can normally be reached M-F 8:30am-5:30pm.
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/JEWEL A KUNTZ/Examiner, Art Unit 3666
/ANNE MARIE ANTONUCCI/Supervisory Patent Examiner, Art Unit 3666
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