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 .
DETAIL ACTION
Notice to Applicant(s)
This continuation application has been examined. Claims 1-20 are pending.
The prior art submitted on May 10, 2021 has been considered.
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 1-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. NOTE: the following detailed rejection is made with respect to independent claim 1, directed toward a method (i.e. process). However, the analysis is applicable to independent claim 10 and 19, which present analogous limitations and are directed toward a device, i.e. machine, article of manufacture, respectively.
The determination of whether a claim recites patent ineligible subject matter is a 2 step inquiry.
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), see MPEP 2106.03, 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: see MPEP 2106.04
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon? see MPEP 2106.04(II)(A)(1)
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? see MPEP 2106.04(II)(A)(2)
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? see MPEP 2106.05
101 Analysis – Step 1
Claims 1, 10 and 19 are respectively directed toward a process, a machine and article of manufacture. Therefore, claims 1, 10 and 19 are each within at least one of the four statutory categories.
101 Analysis – Step 2A, Prong I
Regarding Prong I of the Step 2A analysis, the claims are to be analyzed to determine whether they recite subject matter that falls within one of the follow groups of abstract ideas: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes. see MPEP 2106(A)(II)(1) and MPEP 2106.04(a)-(c)
Independent claim 1 includes limitations that recite an abstract idea (emphasized in bold) and additional elements (emphasized in underline) and will be used as a representative claim for the remainder of the 101 rejection. Claim 1 recites:
A method comprising:
receiving, at a computing system, a vehicle identifier corresponding to a first vehicle that has exhibited a vehicle symptom, and a symptom criterion indicative of the vehicle symptom;
selecting, from within a non-transitory computer-readable memory at the computing system via a processor of the computing system based on the vehicle identifier and the symptom criterion, first data describing a first procedure performed on a second vehicle that exhibited the vehicle symptom, wherein the first procedure performed on the second vehicle yielded a result insufficient to determine that a component of the second vehicle associated with the vehicle symptom is defective;
selecting, from within the non-transitory computer-readable memory at the computing system via the processor of the computing system based on the vehicle identifier and the symptom criterion, second data describing a second procedure performed on an additional vehicle, wherein the additional vehicle is either (i) the second vehicle or (ii) a third vehicle that also exhibited the vehicle symptom, wherein the second procedure performed on the additional vehicle yielded a result sufficient to determine that a component of the additional vehicle associated with the vehicle symptom is defective, and wherein the component of the additional vehicle is equivalent to the component of the second vehicle;
generating, at the computing system, a repair tip by inserting the first data into a first data field of a phrase template and inserting the second data into a second data field of the phrase template; and
displaying the repair tip on a display at the computing system.
The examiner submits that the foregoing bolded limitation(s) constitute a “mental process” because, under its broadest reasonable interpretation, the claim covers performance of the limitation in the human mind.
The process begins with the receiving of the vehicle identifier that has exhibited a vehicle symptom, then a human can select data describing a first procedure performed on a second vehicle from a database, a human can select a second date describing a second procedure performed on another vehicle from the database, and a human also generating a repair tips from the first and second data.
As can be seen in the above steps, to perform the process mentally, a person. Accordingly, the claims recite an abstract idea with respect to step 2A, prong 1.
101 Analysis – Step 2A, Prong II
Regarding Prong II of the Step 2A analysis, the claims are to be analyzed to determine whether the claim, as a whole, integrates the abstract into a practical application. see MPEP 2106.04(II)(A)(2) and MPEP 2106.04(d)(2). It must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.”
The claim recites the following additional elements:
receiving, at a computing system, a vehicle identifier corresponding to a first vehicle that has exhibited a vehicle symptom, and a symptom criterion indicative of the vehicle symptom;
displaying the repair tip on a display at the computing system
Regarding the additional limitation of receiving, at a computing system, a vehicle identifier corresponding to a first vehicle that has exhibited a vehicle symptom, and a symptom criterion indicative of the vehicle symptom, the examiner submits that these limitations are insignificant extra-solution activities that amount to mere data gathering, which is a form of insignificant extra-solution activity. See MPEP 2106.05(g). The addition limitation of “displaying the repair tip on a display at the computing system” amounts to mere post solution outputting of the result of the mental process which is a form of insignificant extra-solution activity. See MPEP 2106.05(g).
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitation(s) as an ordered combination or as a whole, the limitation(s) add nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole, reflect an improvement in the functioning of a computer or an improvement to another technology or technical field, apply or use the above-noted judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use 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 not more than a drafting effort designed to monopolize the exception. see MPEP § 2106.05. Accordingly, the additional limitation(s) do/does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
101 Analysis – Step 2B
Regarding Step 2B of the Revised Guidance, representative independent claim 1 does not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application. As discussed above, regarding the additional limitations of “receiving … indicative of the vehicle symptom”, the examiner submits that this limitation is insignificant extra-solution activities and these additional limitations (and the combination, thereof) amount to no more than what is well-understood, routine and conventional activity. See MPEP 2106.05(g). Hence, the claim is not patent eligible.
Dependent claim(s) 2-9, 11-18 do not recite any further limitations that cause the claims to be patent eligible. Rather, the limitations of dependent claims are directed toward additional aspects of the judicial exception and/or well-understood, routine and conventional additional elements that do not integrate the judicial exception into a practical application. Therefore, dependent claims 2-9, 11-18 are not patent eligible under the same rationale as provided for in the rejection of claim 1, 10 and 19.
Therefore, claim(s) 1-20 are ineligible under 35 USC §101.
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 §§ 706.02(l)(1) -706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-l.jsp.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-29 of U.S. Patent No. 10,008,050. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of pending claims 1-19 are disclosed in the claims 1-29 of patent 10,008,050.
Conclusion
All claims are rejected.
The following references are cited as being of general interest: Brunda et al. (11,625,962), Coard (2015/0012169), Catonne (2016/0189440).
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January 24, 2026
/TAN Q NGUYEN/Primary Examiner, Art Unit 3661