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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims recite a non-transitory computer readable medium, a method, and system; therefore, the claims pass step 1 of the eligibility analysis.
For step 2A, the claim(s) recite(s) an abstract idea of certifying pre-owned vehicles (and other equipment/devices) for resale.
For claim 1, the abstract idea is defined by the elements of:
receiving a vehicle identification number (VIN) or vehicle identifier;
checking the VIN or vehicle identifier for eligibility of the vehicle to participate in a certified pre-owned program;
wherein if the VIN or vehicle identifier is eligible to participate in the certified pre-owned program:
receiving a vehicle history report (VHR) from one or more vehicle history reporting agencies related to the VIN or vehicle identifier;
analyzing the VHR for eligibility of the vehicle to participate in a certified pre-owned program;
wherein if the VHR renders the vehicle eligible to participate in the certified pre-owned program:
generating inspection forms, certification checklists inclusive of inspection and reconditioning required on the vehicle, or a combination thereof that are populated with items specific to the VIN or vehicle identifier and certification program requirements;
generating a certification based on user generated responses to the inspection forms, certification checklists inclusive of inspection and reconditioning required on the vehicle, or a combination thereof;
providing real time information as to at least one of: open inspections, completed inspections, or a combination thereof, the information provided in one of at least two visual forms
For claims 8, and that is applicable to claim 15 that has a similar claim scope, the abstract idea is defined by the elements of:
receiving a stakeholder’s credentials for login;
receiving a vehicle identification number (VIN) ,
checking the VIN for eligibility of the vehicle to participate in a certified pre-owned program;
wherein if the VIN is eligible to participate in the certified pre-owned program:
receiving a vehicle history report (VHR) from one or more vehicle history reporting agencies related to the VIN;
analyzing the VHR for eligibility of the vehicle to participate in a certified pre-owned program; wherein if the VHR renders the vehicle eligible to participate in the certified pre-owned program:
generating inspection forms and certification checklists inclusive of inspection and reconditioning required on the vehicle that are automatically populated with only items specific to the VIN and certification program requirements;
receiving, in response to prompts, user generated responses input to the inspection forms;
sending the VIN to a database of certified pre-owned vehicles and listing the vehicle in an inventory of certified pre-owned vehicles;
generating a certification based on the user generated responses to the inspection forms;
providing real time information as to at least one of: open inspections and completed inspections, the real time information provided in one of at least two visual forms
The above limitations are reciting a method of certifying pre-owned vehicles (and other equipment/devices) for resale. The vehicle industry and the retail sales industry (car dealerships) is known to conduct a certification of a vehicle to determine if the vehicle is able to be sold or if the vehicle has to go to a commercial auction. As is recognized in the specification, certified pre-owned (CPO) vehicles and their inspection is a type of used car that is commonly sold by car dealers. This has been done for decades in the car industry and by car dealerships specifically. The act of inspecting a vehicle to determine if it can be certified as a CPO vehicle is a human activity because prior to computers that is how a CPO was processed. It was done by a service technician or other person inspecting the vehicle and generating a decision on whether or not to certify the vehicle as a CPO or if they should consider sending the car to the auction house (because it is not in good enough condition to put on the lot to be sold as a CPO vehicle). The claimed invention is reciting a commercial practice that is also considered to be a fundamental economic practice, which is the certification of a pre-owned vehicles for resale purposes. This represents a certain method of organizing human activities type of abstract idea.
The additional elements of claim 1 are considered to be the elements of:
a non-transitory computer readable medium, generating a first graphical user interface (GUI) on a device, the use of the GUI for some of the claimed steps, generating a second GUI, reciting that the forms are “on screen” (implies computer implementation using a screen), and calling the certification a digital certification.
Claim 8 recites additional elements of:
providing a technician graphical user interface (GUI) on a first portable computing device; use of the GUI for some of the claimed steps, generating a login page on a display of the first portable computing device; calling the forms on screen inspection forms. Also claimed is the administrator GUI that provides the information that is part of the abstract idea.
Claim 15 recites additional elements of:
a server with a database connected to a network to one or more computing devices, memory storing instructions to execute the steps that define the abstract idea, in addition to the GUI, digital certification, calling the forms “on screen forms”, as was addressed for claim 8. Claim 15 also recites a sales employee GUI and the administrator GUI, where the sales employee GUI is the same as the technical GUI in claim 8, they are just called different names in different claims.
This judicial exception is not integrated into a practical application (2nd prong of eligibility test for step 2A) because the additional elements of the claim when considered individually and in combination with the claim as a whole, amount to the use of a computing device(s) with a processor and memory that is being merely used as a tool to execute the abstract idea, see MPEP 2106.05(f). The claim is simply instructing one to practice the abstract idea by using a generically recited computing devices and using generically recited user interfaces to perform steps that define the abstract idea. This does not amount to more than a mere instruction to implement the abstract idea on a computer connected via a network such as the Internet (the web) and that has an interface of some kind, all generically recited. This is indicative of the fact that the claim has not integrated the abstract idea into a practical application and therefore the claim is found to be directed to the abstract idea identified by the examiner.
For step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception when considered individually and in combination with the claim as a whole because they do not amount to more than simply instructing one to practice the abstract idea by use of a computing device(s) with a processor and memory that is being merely used as a tool to execute the abstract idea, see MPEP 2106.05(f). The claim is simply instructing one to practice the abstract idea by using a generically recited computing devices and using generically recited user interfaces to perform steps that define the abstract idea. This does not render the claims as being eligible. See MPEP 2106.05(f). The rationale set forth for the 2nd prong of the eligibility test above is also applicable to step 2B in this regard so no further comments are necessary. This is consistent with the PEG found in the MPEP 2106.
The claims 1, 8, 15, do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claims 2-4, 9-11, 16-18, the applicant is reciting more about the same abstract idea of claim 1. Claiming that the user responses are stored in a database, the generation of reports based on statistical analysis, and providing password protected reports that are only available to authorized personnel, are elements that serve to define the abstract idea of the claims. No further additional elements have been claimed beyond that which is recited in claim 1. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claim 5, reciting that the first or second GUI generate on screen prompts that are touch screen activated is considered to be an additional element that is claiming the use of a touchscreen. A touchscreen is a conventional part of a computer such as a laptop and is not providing for anything more than a general link to computer implementation for providing prompts to a user using a touchscreen display. This is a general instruction for one to use a computer with a touchscreen display and does not provide for integration or significantly more, see MPEP 2106.05(f). The claim is not eligible.
For claim 6, the receiving of the responses into an inspection form or checklist and providing access to the VHR and the responses is a further embellishment of the abstract idea of the claims. This is just the receipt of data from a technician inspecting a vehicle and the providing of the VHR and responses to another user. This is part of the abstract idea. The claimed use of screen prompts and the use of the technical GUI have been treated in the same manner that was set forth for claim 1 and do not provide for integration or significantly more. The claim is not eligible. See MPEP 2106.05(f).
For claims 7, 14, 20, the claimed sign-off to approve the vehicle inspection or certification is considered to be part of the abstract idea. This is what a manager does when they approve the inspection or certification by signing a paper form. The claimed use of the screens has been treated in the same manner that was set forth for claim 1, to which the applicant is referred. This does not define more than an instruction for one to use a computer with a screen for a display to practice the abstract idea and does not provide for integration or significantly more. This claim is not eligible. See MPEP 2106.05(f).
For claim 12, reciting that the GUIs are on two different devices is claiming connected devices as being used for the abstract idea. This was addressed above for claims 1, 8, 15 as far as the use of two computers connected via a network, that each have a GUI does not amount to more than a mere instruction to implement the abstract idea on a computer connected via a network such as the Internet (the web) and that has an interface of some kind, all generically recited. This does not amount to integration or significantly more. The claim is not eligible.
For claim 13, the types of inspection or items to be inspected that are claimed are further defining the abstract idea of the claims. Inspecting a vehicle includes inspecting the rear interior and exterior and the front, etc.. No further additional element has been recited for consideration. The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claim is not considered to be eligible.
For claim 19, the display of at least a portion of the generated data is considered to be reciting more about the abstract idea. This is just providing information to another. This is part of the abstract idea. The recitation to the sales consultation GUI is taken as a further instruction for one to practice the abstract idea using generic computers. The sales consultation GUI has been treated in the same manner as the technician GUI, both of which are taken as mere instructions for one to practice the abstract idea using a computer with a GUI as a tool to execute the abstract idea. The claims does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claim is not considered to be eligible.
Therefore, for the above reasons, claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9-17, 19-22, of U.S. Patent No. 12118571. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are simply broader versions of the patented claims and are anticipated by the patented claims.
For pending claims 1, 8, 15, see patented claims 1, 9, 17 that recite all of the claimed limitations. The pending claims are simply broader because they are not reciting the full extent of what has been patented in the patented claims.
For pending claims 2, 9, 16, see patented claims 2, 10, and 16.
For pending claims 3, 10, 17, see patented claims 3, 11, 19.
For pending claims 4, 11, 18, see patented claims 4, 12, 20.
For pending claim 5, see patented claim 5.
For pending claim 6, see patented claim 7.
For pending claims 7, see patented claim 6.
For pending claim 12, see patented claim 15.
For pending claim 13, see patented claim 13.
For pending claims 14, see patented claim 14.
For pending claim 19, see patented claim 22.
For pending claims 20, see patented claim 21.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Shames (20080288346) teaches a system and method for certifying pre-owned vehicles for resale. This is relevant to the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS WILLIAM RUHL whose telephone number is (571)272-6808. The examiner can normally be reached M-F 7am-3:30pm.
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, Jessica Lemieux can be reached at 5712703445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DENNIS W RUHL/Primary Examiner, Art Unit 3626