DETAILED ACTION
1. This communication is responsive to the Amendment filed 5/18/2026.
Claims 1-4 have been amended. Claims 1-4 are pending in this application. This action is made Final.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
3. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
The foreign priority documents have been electronically retrieved by USPTO from a participating IP office on 4/24/2025.
Information Disclosure Statement
4. “Foreign Patent Documents” and “Non-Patent Literature Documents” listed on 4/10/2025 IDS have been filed in Parent Applications No. 18/488,737 (IDS dated 10/17/2023, 12/26/2023), 17/042,857 (IDS dated 9/28/2020, 1/21/2022, 7/12/2022).
Claim Objections
5. Claims 1-4 are objected to because of the following informalities: the definition for the term “ID” should be provided in the claims. Appropriate correction is required.
Double Patenting
6. 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.
7. Claims 1-4 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,299,762. Although the conflicting claims are not identical, they are not patentably distinct from each other.
U.S. Patent Application 19/176,016
Claim 1 (Amendment 5/18/2026)
A server device comprising:
a memory configured to store instructions; and
one or more processors configured to execute the instructions to:
receive a user ID for a service providing company which provides services related to a vehicle used by a user, and vehicle information related to the vehicle, from a server device of an information collection company which collects information from vehicles; receive service information from a terminal device of the user via a terminal device of the vehicle, wherein the service information includes provision information indicating information to be provided to the service providing company that has a contract with the user, and destination address of the provision information;
determine whether or not the services are provided to the user when the user uses the vehicle, based on the user ID and the vehicle information by referring to user's contract information corresponding to the user ID; and
transmit information corresponding to the provision information among detection information acquired from the vehicle, based on the provision information included in the service information, in a case where it is determined that the services are provided to the user.
U.S. Patent No. 12,299,762
Claim 1
A terminal device used by a user of a vehicle, comprising:
a first input unit configured to receive a first user ID inputted by the user;
a first transmission unit configured to transmit the first user ID to a second server device operated by a service providing company;
a receiving unit configured to receive service information from the second server device, the service information including provision information, the provision information indicating information to be provided from a first server device to the second server device from among information transmitted from a terminal device of the vehicle to the first server device;
a storage unit configured to store the received service information;
a second input unit configured to receive a use start instruction of the vehicle inputted by the user; and
a second transmission unit configured to transmit from the terminal device of the vehicle to the first server device, only a part of the service information related to transmission destination of the first server device among the service information, when receiving the use start instruction, wherein the provision information is information that the service providing company request in order to provide a service associated with the vehicle
Claim 3
The terminal device according to claim 1, wherein the first server device is a server device of an information collection company which collects information from the vehicle provided to the user, and wherein the second server device is a server device of a service providing company which provides the service associated with the vehicle.
Claim 4
The terminal device according to claim 1, wherein the service information comprises: the first user ID which is a user ID for a service providing company that provides the user with the service associated with the vehicle; and a second user ID which is a user ID for a vehicle providing company that provides the user with a vehicle.
Claim 6
The terminal device according to claim 1, wherein the service relates to insurance, and wherein the provision information relates to an accident of the vehicle.
It is noted that the claimed limitations of claims 1-4 of Patent Application 19/176,016 are not patentably distinct from that of claims 1-9 of U.S. Patent No. 12,299,762. It appears to be proper to apply the judicially created doctrine of obvious-type double patenting to the claims at issue.
Allowable Subject Matter
8. Claims 1-4 would become allowable if the obvious-type double patenting rejection is overcome. As noted above, this rejection can be overturned by filing a terminal disclaimer.
Claims 1, 3 and 4 would be considered allowable since the prior art of record fails to disclose each and every element of the Applicant's claimed invention. Specifically, the prior art of record fails to teach and/or suggest “receive service information from a terminal device of the user via a terminal device of the vehicle, wherein the service information includes provision information indicating information to be provided to the service providing company that has a contract with the user, and destination address of the provision information;
determine whether or not the services are provided to the user when the user uses the vehicle, based on the user ID and the vehicle information by referring to user's contract information corresponding to the user ID; and
transmit information corresponding to the provision information among detection information acquired from the vehicle, based on the provision information included in the service information, in a case where it is determined that the services are provided to the user”.
The preceding limitations, when combined with the rest of the limitations recited in claims 1, 3 and 4 results in a combination of elements that is both novel and unobvious over the prior art of record.
Response to Amendment
9. The rejections given under 35 U.S.C. 112(b) have been withdrawn because the affected claims have been amended.
10. The rejections given under 35 U.S.C. 101 have been withdrawn because the affected claims have been amended.
Conclusion
11. THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUAWEN A PENG whose telephone number is (571)270-5215. The examiner can normally be reached Mon thru Fri 9 am to 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sherief Badawi can be reached at 571-272-9782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HUAWEN A PENG/Primary Examiner, Art Unit 2169
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