DETAILED ACTION
This FINAL action is responsive to the amendment filed 6/22/2026.
In the amendment Claims 5-9 are pending. Claims 1-4 were canceled. Claims 6-9 are new. Claim 5 is the independent claim.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Withdrawn Rejections
4. The 35 U.S.C. 112(a) rejection of claims 1-5 have been withdrawn in light of the amendment.
5. The 35 U.S.C. 112(b) rejection of claims 1-5 have been withdrawn in light of the amendment.
6. The 35 U.S.C. 101 abstract idea rejection of claims 1-5 have been withdrawn in light of the amendment.
7. The 35 U.S.C. 112(f) interpretation of claim 1 has been withdrawn in light of the amendment.
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.
8. Claim 9 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The claim recites “…developing and improving the first equipment…”, while the specification paragraph 54 states that collected answers are used to “develop and improve” vehicle equipment, the specification does not disclose how the claimed developing or improving is performed, by what apparatus or methodology. The specification therefore describes only a desired result and does not demonstrate possession of the claimed functionality or enable practice of its full scope without undue experimentation has the claim encompasses potentially any hardware, firmware or design modification based on subjective user feedback.
Claim Rejections - 35 USC § 112
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.
9. Claim 9 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claim recites “…developing and improving the first equipment…”, but does not identify what performs the step or what specific activity constitutes developing or improving the equipment. While the preceding limitations are expressly performed “by the information processing apparatus,” the claim does not assign this step to the apparatus and paragraph 54 instead refers generally to use by “other apparatuses as appropriate.” Accordingly, the claim does not reasonably identify the actor, conduct or scope regarding development and improvement of equipment recited in the claimed limitation.
Claim Rejections - 35 USC § 101
10. 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.
11. Claims 5-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e. abstract idea) without significantly more.
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) and 2106.05(a) thru (d) for explanations.
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
Claim 5 is directed to “A method …” (process). Therefore, the claims are 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 5 includes limitations that recite an abstract idea (emphasized below [with the category of abstract idea in brackets]).
Claim 5. A method comprising:
Acquiring, by an information processing apparatus, for each piece of equipment of a plurality of pieces of equipment of a vehicle used in a test drive, information on a number of times an operation has been performed by a user on the equipment [MPEP 2106.05(g) Insignificant Extra-Solution Activity, data gathering, pre-solution activity] & [MPEP 2106.05(h) Field of Use and Technological Environment];
Deriving, by the information processing apparatus, for each piece of equipment of the plurality of pieces of equipment, a difference between the number of times the operation has been performed on the equipment and a reference value preset for each piece of equipment [mathematical concept] & [mental process];
Selecting, by the information processing apparatus, from among the plurality of pieces of equipment of the vehicle, first equipment for which a first difference between the number of times the operation has been performed on the first equipment and a first reference value preset for the first equipment exceeds a difference reference value [mathematical concept] & [mental process];
Outputting, by the information processing apparatus, first question information corresponding to the first equipment [MPEP 2106.05(g) Insignificant Extra-Solution Activity, post-solution activity];
Acquiring, by the information processing apparatus, information on an answer to the first question information [MPEP 2106.05(g) Insignificant Extra-Solution Activity, data gathering];
Storing, by the information processing apparatus, the information on the answer in association with the first question information and the first equipment [MPEP 2106.05(g) Insignificant Extra-Solution Activity, post-solution activity] & [MPEP 2106.05(f) Mere Instructions to Apply an Exception]; and
Adjusting, by the information processing apparatus, the first reference value for the first equipment based on an average of the number of times the operation has been performed on the first equipment in a plurality of vehicles [mathematical concept] & [mental process].
The Examiner submits that the foregoing bolded limitation(s) above: constitute “mathematical concepts” & a “mental process” because under its broadest reasonable interpretation, the claim covers performance of the limitation in the human mind.
The claim recites a subtraction operation that can be performed mentally via pen and paper given two numbers. Also reciting threshold comparison and selection based on the comparison which can be made via human judgement from the derived numbers. In addition to computing an average and using it to update a stored number which is a mathematical operation a human can perform via records of multiple vehicles counts.
Accordingly, the claim recites at least one abstract idea.
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.”
In the present case, the additional limitations beyond the above-noted abstract idea are as follows (where the underlined portions are the “additional limitations”, while the bolded portions continue to represent the “abstract idea”.):
For the following reason(s), the examiner submits that the above identified additional limitations do not integrate the above-noted abstract idea into a practical application. Regarding the additional limitation of “acquire information… on a number of times an operation has been performed” & “pieces of equipment of a vehicle used in a test drive” & “output first question information” & “Acquiring … information on an answer”. The Examiner submits that these limitations are insignificant extra-solution activities that amount to collecting or observing usage count data which involves data gathering and falls under pre-solution activity. In addition selecting a pre-stored question associated with an identified item and transmitting it is output/data presentation activity without any technical means of outputting along with generic receipt of input data followed by routine data storage is insignificant extra-solution activity that includes post-solution activity and data gathering steps. Furthermore, the abstract data analysis is tied to a particular technological environment that involves vehicle test drives without imposing any technical constraint on how the analysis is performed.
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 (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 claims 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 with respect to integration of the abstract idea into a practical application, the additional element of “the information processing apparatus”, amounts to nothing more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. And as discussed above the examiner submits that these limitations are insignificant extra-solution activities. See MPEP 2106.05(d)(II), and the cases cited therein, including Intellectual Ventures I, LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016), TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610 (Fed. Cir. 2016), and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) in addition to -Collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group), Collecting data, recognizing certain data within the collected data set and storing the recognized data in memory (Content Extraction).
Dependent claim 6, -do not recite any further limitations that cause the claim(s) to be patent eligible. Rather, the limitations of dependent claim are directed toward additional aspects of the judicial exception and do not integrate the judicial exception into a practical application. The claim describes selecting from among the pieces of equipment to which a second difference is determined which falls under both a mathematical concept and a mental process a user can perform via pen/paper. Therefore, the claims are not patent eligible under the same rationale as provided for in the rejection of the Independent claims. Therefore, the claims are ineligible under 35 USC §101.
Dependent claim 7, -do not recite any further limitations that cause the claim(s) to be patent eligible. Rather, the limitations of dependent claim are directed toward additional aspects of the judicial exception and do not integrate the judicial exception into a practical application. The claim describes increasing questions based on meeting a criteria which falls under post-solution activity [MPEP 2106.05(g) Insignificant Extra-Solution Activity, post-solution activity]. Therefore, the claims are not patent eligible under the same rationale as provided for in the rejection of the Independent claims. Therefore, the claims are ineligible under 35 USC §101.
Dependent claim 8, -do not recite any further limitations that cause the claim(s) to be patent eligible. Rather, the limitations of dependent claim are directed toward additional aspects of the judicial exception and do not integrate the judicial exception into a practical application. The claim describes changing the first reference value which falls under a mental process a user can perform via pen/paper. Therefore, the claims are not patent eligible under the same rationale as provided for in the rejection of the Independent claims. Therefore, the claims are ineligible under 35 USC §101.
Dependent claim 9, -do not recite any further limitations that cause the claim(s) to be patent eligible. Rather, the limitations of dependent claim are directed toward additional aspects of the judicial exception and do not integrate the judicial exception into a practical application. The claim describes developing and improving the first equipment based on feedback involves human judgment process and falls under a mental process. Therefore, the claims are not patent eligible under the same rationale as provided for in the rejection of the Independent claims. Therefore, the claims are ineligible under 35 USC §101.
Response to Arguments
11. Applicant’s arguments filed 6/22/2026 have been considered but are moot in view of the new grounds of rejection. However, the arguments to the 35 U.S.C. 101 abstract idea rejection have been addressed below.
Applicant Argues: “This claimed sequence improves feedback collection process by using detected operation behavior during test drives to determine which equipment should receive target inquiry and by adapting the reference value used for future equipment selection based on aggregated vehicle usage data.” (see pgs. 18-20)
The Examiner respectfully disagrees: The identification of a deficiency in conventional systems and using a correlation between equipment specific operation counts and expected usability does not alone integrate an abstract idea into a practical application. The claimed correlation falls under an abstract relationship between a calculated quantity and subjective usability that is implemented using generic data collection, mathematical calculations, input/output, storage and generic information processing apparatus. Furthermore, the claim does not recite a specific technical mechanism that improves the operation of a computer, network or vehicle system. The asserted improvement to the “feedback collection process” is an improvement in survey or market research rather than a technological improvement. Therefore, the specification’s identification of a problem and proposed correlation does not provide significantly more than an abstract idea. Essentially the claim describes a data analytics/survey-targeting invention that does not improve computer, network or sensing systems nor does it modify the operation of a vehicle in a manner that is a technological improvement.
Conclusion
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 MANGLESH M PATEL whose telephone number is (571)272-5937. The examiner can normally be reached on M-F from 10:30 am to 7:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erin D. Bishop, can be reached at telephone number 571-270-3713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Manglesh M Patel/
Primary Examiner, Art Unit 3665
9/1/2026
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