DETAILED ACTION
Claims 1-4 are presented for examination.
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 INTERPRETATION
5. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
6. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as "configured to" or "so that"; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) are: a receiving unit configured to; a determination unit configured to; and a transmission unit configured to… in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 1-2 are 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 pre-AIA the applicant regards as the invention.
Claim limitation “a receiving unit configured to; a determination unit configured to; a transmission unit configured to; a storage configured to” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any structure that performs the function in the claim.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (note: If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, then the claim is then rejected under 101 for lack of hardware);
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 101
9. 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.
10. Claims 1, 3 and 4 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 user ID for a service providing company which provides services related to a vehicle used by a user from a server device of an information collection company; determining whether or not the services are provided to the user when the user uses the vehicle; and transmitting a determination result to the server device of the information collection company” which is an abstract idea under mental process.
This judicial exception is not integrated into a practical application because the additional computer elements which are recited as server device, do not add meaningful limitations to the abstract idea, and they simply implement the abstract idea on a computing device. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because determining whether or not the services are provided to the user when the user uses the vehicle based on user ID and vehicle information, are general computer functions which is well understood routine and conventional activities.
Claim 2 is dependent on claim 1, and includes all the limitations of claim 1. Therefore, claim 2 recites the same abstract idea. The additional limitations recited in claim 2, for example determining whether or not the services are provided to the user by referring to the contract information, do not amount to significantly more than the abstract idea.
Double Patenting
11. 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.
12. 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
A server device comprising:
a receiving unit configured 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;
a determination unit configured to 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; and
a transmission unit configured to transmit a determination result by the determination unit to the server device of the information collection company.
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.
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.
Claim Rejections - 35 USC § 102
13. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
14. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
15. Claims 1-4 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by UMIGAI (US 2019/0188926).
In claim 1, UMIGAI teaches
A server device comprising:
a receiving unit configured 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 ([0038] a system for managing service information (license information) required when a user of a vehicle uses a service provided by an application using the vehicle. The system is configured such that a mobile information terminal (communication equipment) possessed by the user of the vehicle can communicate with the vehicle. A vehicle ID and a user ID are transmitted to a data center that manages a number of pieces of vehicle information. The mobile information terminal obtains the vehicle ID through communication with the vehicle. The user ID is identification information of the user possessing the mobile information terminal. When receiving the vehicle ID and the user ID from the mobile information terminal, the data center reads the license information associated with the vehicle ID and the user ID from a storage unit. The data center returns the read license information to the mobile information terminal that is a sending source. Thus, the use of the service using the vehicle at the mobile information terminal is managed [0051] The vehicle information table 324 contains travel history information such as a travel distance of the vehicle and on-board equipment information such as a serial number of a data communication module (DCM) installed in the vehicle, and so forth, with a vehicle identification number (VIN) serving as a key);
a determination unit configured to 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 ([0061] the user ID 122 (AAA) corresponding to the user A is associated with the user information and the service use history information of the user A, and is also associated with the terminal information of the terminals T1, T2 possessed by the user A. The user ID 122 (AAA) is associated with the license code (111) corresponding to the vehicle V1. The license code (111) is associated with the vehicle information and the license information of the vehicle V1 [0064] When the user A uses the vehicle V1, the license code (111) is applied, which is associated with the user ID 122 (AAA) corresponding to the user A and is assigned to the vehicle V1. The periods of validity (the period of validity of the navigation service using the mobile information terminal 100 and the period of validity of the service using the DCM) associated with the license code (111) are applied); and
a transmission unit configured to transmit a determination result by the determination unit to the server device of the information collection company ([0047] When receiving the user ID 122 and the vehicle ID 123 from the mobile information terminal 100 through the communication unit 130, the service management unit 311 refers to the tables 321 to 324 stored in the storage unit 320 to extract the license information required when the user uses the application 121 using the vehicle 200, based on the user ID 122 and the vehicle ID 123. The service management unit 311 transmits, through the communication unit 330, the extracted license information to the mobile information terminal 100 that is a sending source of the user ID 122 and the vehicle ID 123 [0077] When the user ID 122 is input through the operation unit 140 of the mobile information terminal 100, the input user ID 122 is transmitted from the mobile information terminal 100 to the data center 300. At this time, the data center 300 conducts authentication of the user ID 122 input through the mobile information terminal 100. When the user ID 122 is authenticated by the data center 300, the mobile information terminal 100 reads the vehicle ID 123 stored in the storage unit 120 and transmits the vehicle ID 123 to the data center 300 [0078] based on the user ID 122 and the vehicle ID 123 transmitted through the mobile information terminal 100, the data center 300 refers to the user information table 322, the license code table 323, and the vehicle information table 324 to extract the license information corresponding to the combination of the user ID 122 and the vehicle ID 123 from the license code table 323).
In claim 2, UMIGAI teaches
The server device according to claim 1, further comprising: a storage configured to store the user ID and contract information of a user corresponding to the user ID in association with each other, wherein the determination unit determines whether or not the services are provided to the user by referring to the contract information ([0090] When the user of the vehicle 200 uses the services, content of the services to be provided to the user varies based on the license information associated with both the vehicle ID 123 and the user ID 122 [0092] The license information includes the periods of validity and the contractor information of the services to be provided to the user of the vehicle 200. Thus, it is possible to manage the content of the services to be provided to the user of the vehicle 200 in accordance with the content of contract of each service).
Claim 3 is essentially same as claim 1 except that it recites claimed invention as a method and is rejected for the same reasons as applied hereinabove.
Claim 4 is essentially same as claim 1 except that it recites claimed invention as a non-transitory computer-readable program and is rejected for the same reasons as applied hereinabove.
Conclusion
16. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is listed on 892 form.
Examiner’s Note: Examiner has cited particular figures, and paragraphs in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested for the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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.
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, 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