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 .
Status of Claims
This action is in reply to the application filed on June 11, 2025.
Claims 1-4 are currently pending and have been examined.
Applicant’s remarks and arguments are addressed below.
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 1-4 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. When considering subject matter eligibility under 35 U.S.C. § 101, there are multiple steps that may need to be assessed. First, in step 1 it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined in step 2A prong 1 whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). If the claim is directed toward a judicial exception, it must then be determined in step 2A prong 2 whether the judicial exception is integrated into a practical application. Finally, if the judicial exception is not integrated into a practical application, it must additionally be determined in step 2B whether the claim recites “significantly more” than the abstract idea. See “2019 Revised Patent Subject Matter Eligibility Guidance,” 84 Fed. Reg. (4): 50-57 (Jan. 7, 2019).
In the instant case, Claims 1-4 are directed toward a system, i.e., apparatus. Thus, each of the claims falls within one of the four statutory categories as required by step 1. Nevertheless, the claims are directed toward the judicial exception of an abstract idea in step 2A prong 1. Independent Claim 1 recites as follows:
Claim 1. A system for managing a drug testing program for commercial drivers, comprising:
a computer server comprising a memory arrangement hosting server software and a database in non-volatile memory, and provided with secure network communication capabilities;
a driver app configured to run on a personal communication device; and
a testing site app;
wherein the personal communication device comprises at least one of a smartphone or a tablet, and has location-sensing capabilities and wireless network communication capabilities;
wherein the driver app is configured to receive user input from a driver and send registration data provided by the driver to the database;
wherein the registration data comprises personal information associated with the driver and a driver license number associated with the driver;
wherein the testing site app is configured to receive user input from a testing site and send testing site information to the database;
wherein the testing site information comprises a location of the testing site and availability of the testing site to perform drug tests;
wherein the server software is configured to receive driver selection information from an entity governing the drug testing program;
wherein the server software is further configured to send a notice of testing to the personal communication device associated with a particular driver selected by the entity, and to provide a list of testing sites to the particular driver based on at least one of a location of the particular driver's location detected by the particular driver's personal communications device or a route being driven by the particular driver;
wherein the server software is configured to receive a selection of a particular testing site by the particular driver via the driver app, generate a testing appointment based on the testing site information associated with the particular testing site, and confirm the testing appointment with the particular driver and the particular testing site via the driver app and the testing site app respectively.
The bold language above corresponds to the abstract ideas recited in Claim 1 (whereas the underlined language is language that is addressed in step 2A prong 2 and step 2B). As the bold language above demonstrates, Applicant’s claims are directed toward scheduling and tracking the necessary drug and alcohol testing program that applies to commercial drivers. Because the drug testing is required by applicable laws, this is a method of organizing human activity, specifically legal interactions. See MPEP § 2106.04(a)(2)(II)(B). In other words, because Applicant’s invention recites a series of steps necessary for complying with law and regulations, the invention organizes the certain method of organizing human activities relating to legal interactions. Thus, Applicant’s claims recite an abstract idea in step 2A prong 1 of the Alice/Mayo framework.
Finding the claims to be directed toward an abstract idea, however, is not the end of the inquiry. Rather, the next step is to determine whether the judicial exception is integrated into a practical application (step 2A prong 2). The revised guidance provides exemplary considerations that are indicative that an additional element or combination of elements may have integrated the exception into a practical application: 1) an additional element reflecting an improvement in the functioning of a computer or an improvement to another technology or technical field, 2) an additional element that implements the judicial exception with a particular machine or manufacture that is integral to the claim, 3) an additional element that effects a transformation or reduction of a particular article to a different state or thing, or 4) an additional element that applies or uses 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 more than a drafting effort designed to monopolize the exception. See MPEP § 2106.04(d). Examples where a judicial exception has not been integrated into a practical application include: 1) use of “apply it” or the equivalent, i.e., merely using a computer to implement or perform an abstract idea, 2) an additional element that adds insignificant extra-solution activity to the judicial exception, and 3) an additional element that does no more than generally link the use of the judicial exception to a particular technological environment or field of use. See id.
Applying these considerations to the claims in the instant application, the claims do not integrate the judicial exception into a practical application. The claims fail to recite an improvement of a computer, any improvement to a technology or technical field, any particular machine, any transformation or reduction of a particular article to a different state or thing, or any additional element that uses the judicial exception in a meaningful way. Instead, the claims are merely reciting instructions to implement the abstract idea on a computer (i.e., the use of “apps,” “databases,” software and “computer servers,” etc.), which is insufficient to provide a practical application of the claims and provide subject matter eligibility. See id. Therefore, there is no integration of the abstract idea into a practical application in step 2A prong 2.
If the claims are not integrated into a judicial exception, the Examiner must consider whether there is “significantly more” recited in the claim in step 2B. See MPEP § 2106.05. There is nothing unconventional or inventive in Applicant’s claims for the purpose of analysis under step 2B, e.g., any combination of elements that provide an advance over any technological state of the art. Rather, as noted above, an abstract legal interaction is merely implemented by a general-purpose computer. Other than the limitations that are abstract for the reasons articulated above, Applicant has merely recited a generic computer that facilitates the steps of the invention. Thus, Applicant’s claims merely recite a computer to implement the abstract idea, which fails to provide “significantly more” than the abstract idea.
As the MPEP states, Examiners may consider the following three factors when determining whether the claim recites mere instructions to implement an abstract idea on a computer: 1) whether the claim recites only the idea of a solution or outcome, i.e., the claim fails to recite details of how a solution to a problem is accomplished; 2) whether the claim invokes computers or other machinery merely as a tool to perform an existing process; and 3) the particularity or generality of the application of the judicial exception. See MPEP § 2106.05(f). Applying those factors to the instant application: 1) the claims do not recite how the computer performs any of the steps other than just stating that they do it; 2) the claims invoke the computer to perform a process of drug testing of drivers that has been performed without computers and before the ubiquity of computers; and 3) the claims are general and not recited in much particularity because it can apply to any way of facilitating the drug testing of the drivers.
The dependent claims 2-4 are merely reciting further embellishments of the abstract idea and do not amount to anything that is significantly more than the abstract idea itself. Claims 2 and 3 relate to further embellishments regarding the receiving and the sending of the data collected as part of the abstract legal interaction of legal compliance. Claim 4 relates to providing any driver who tests positive for drugs or alcohol with a counselor and facilitating the scheduling of counseling sessions. The matching of a driver who tests positive for drugs or alcohol with a counselor is abstract because it mitigates risk (i.e., a fundamental economic principle or practice) of a positive retest, relates to legal or regulatory requirements (legal interaction), or is managing the personal relationship between the driver and the counselor (i.e., managing personal behavior or interactions between people). See MPEP § 2106.04(a)(2)(II).
In other words, none of the dependent claims recite an improvement to a technology or technical field or provide any meaningful limitations that, in an ordered combination provide “significantly more” or providing any integration into a practical application. Rather, the dependent claims are merely further reciting features that are just as abstract as independent Claim 1. Therefore, Claims 1-4 are directed to non-statutory subject matter and are rejected as ineligible subject matter under 35 U.S.C. § 101.
Claim Rejections - 35 USC § 103
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 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.
The following is a quotation of 35 U.S.C. § 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. § 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3 are rejected under 35 U.S.C. § 103 as being unpatentable over Dawson, Jr. et al. (US 2017/0316381 A1, hereinafter “Dawson”) in view of Thome et al. (US 2004/0162844 A1).
Claim 1. Dawson teaches: A system for managing a drug testing program for commercial drivers, comprising:
a computer server comprising a memory arrangement hosting server software and a database in non-volatile memory, and provided with secure network communication capabilities (see, e.g., ¶s 118-120 and 126-128 teaching a computer server and readable storage medium; regarding secure network communication abilities, see, e.g., ¶ 33);
a driver app configured to run on a personal communication device (see, e.g., ¶ 135 teaching that the user interface “may be a user application;” see also ¶s 21, 47, 86-87, and 117 teaching substantially the same; regarding that this is for drivers, this is further addressed below; see also feature 135 teaching the test subject for drug testing and test subject device 130); and
a testing site app (see, e.g., Figure 1 features 105, 110, 120, and 125 all teaching various computers associated with testing sites);
wherein the personal communication device comprises at least one of a smartphone or a tablet, and has location-sensing capabilities and wireless network communication capabilities (see, e.g., Figure 1 feature 130 and ¶ 13 teaching that it can be “a cell phone associated with a test subject 135” and connected to other computing devices via network(s) 104; see further ¶s 51 and 77 teaching that the test subject device 130 has a GPS system that can be accessed by the employer or the medical review office (“MRO”) computer);
wherein the driver app is configured to receive user input from a driver and send registration data provided by the driver to the database (see, e.g., ¶ 23 teaching receiving information from the test subject to register or pre-register the test subject);
wherein the registration data comprises personal information associated with the driver and a driver license number associated with the driver (see, e.g., ¶ 23 teaching that the personal information includes data like name, address, and social security number, though Examiner notes that a driver license number is further addressed below);
wherein the testing site app is configured to receive user input from a testing site and send testing site information to the database (see, e.g., ¶ 56 teaching that the adding of GPS coordinates of testing site locations to the database; see also ¶ 41 teaching the medical review office computer receiving geographic locations and a range of schedule times from the testing sites);
wherein the testing site information comprises a location of the testing site and availability of the testing site to perform drug tests (see, e.g., ¶ 56 teaching that the adding of GPS coordinates of testing site locations to the database; see also ¶ 41 teaching the medical review office computer receiving geographic locations and a range of schedule times from the testing sites);
wherein the server software is configured to receive driver selection information from an entity governing the drug testing program (see, e.g., ¶ 21 teaching receiving a selection of tests and test subjects from the medical review office computer);
wherein the server software is further configured to send a notice of testing to the personal communication device associated with a particular driver selected by the entity, and to provide a list of testing sites to the particular driver based on at least one of a location of the particular driver's location detected by the particular driver's personal communications device or a route being driven by the particular driver (see, e.g., ¶ 42 teaching generating and transmitting an alert to the test subject device; see further ¶s 51 and 77 teaching that the test subject device 130 has a GPS system that can be accessed by the employer or the medical review office (“MRO”) computer; see additionally, e.g., ¶ 44 teaching arranging a list of test sites by distance to the test subject based on his or her location and ¶s 46, 52, 58, and 75 teaching providing test sites within a predetermined geographic range or threshold distance of the test subject);
wherein the server software is configured to receive a selection of a particular testing site by the particular driver via the driver app, generate a testing appointment based on the testing site information associated with the particular testing site, and confirm the testing appointment with the particular driver and the particular testing site via the driver app and the testing site app respectively (see, e.g., ¶s 45-46 and 88 teaching receiving a selection of the testing site from the test subject device 130; see also ¶ 39 teaching receiving a selection of the schedule options from the test subject device 130; see further, e.g., ¶ 42 teaching a reminder or alert notification of an upcoming appointment, i.e., a confirmation).
Dawson fails to expressly teach that its invention obtains a driver license number associated with the driver as part of the registration data. Nevertheless, obtaining a driver license number for the driver in a registered commercial drivers platform that includes drug testing is taught in the prior art. Thome, for example, teaches such a feature (see, e.g., Thome ¶s 61-64 teaching obtaining employee data in a database, including “license numbers”). Thome is similar to the instant application and Dawson because it relates to “computerized management of employees operating under government regulations such as commercial truck drivers” (see Thome ¶ 2) including drug testing programs (see, e.g., Thome ¶s 65-71).
Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique of including driver’s license numbers (as disclosed by Thome) as driver registration data in the known system of registering commercial drivers for monitoring various compliance issues including drug testing (as disclosed by Dawson). One of ordinary skill in the art would have been motivated to apply the known technique of including driver’s license numbers because it is important data when tracking commercial drivers who are employees (see Thome ¶s 61-64; see also Thome ¶ 10 teaching compiling and displaying all of the necessary information “relating to the tasks which must be performed under the regulations in order for the company to show that it and its drivers are in compliance”).
Furthermore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique of including driver’s license numbers (as disclosed by Thome) as driver registration data in the known system of registering commercial drivers for monitoring various compliance issues including drug testing (as disclosed by Dawson), because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known technique of including driver’s license numbers as driver registration data in the known system of registering commercial drivers for monitoring various compliance issues including drug testing, because predictably the driver’s license number data acts, and can be stored exactly the same way, as other driver registration data). See also MPEP § 2143(I)(D).
Claim 2. The combination of Dawson and Thome teach the limitations of Claim 1. Dawson further teaches: The system of claim 1, wherein: the server software is further configured to receive drug test results from a medical review officer based on test samples provided by the particular driver to the particular testing site, store the results in the database, and send at least a portion of the drug test results to the particular driver via the driver app (see, e.g., ¶s 36 and 61 teaching the tracking of statuses, including the results of the testing; see further ¶s 38 and 64 teaching transmitting the results of the test to the test subject device; see additionally, e.g., ¶s 62 and 100 teaching the storing of the testing data).
Claim 3. The combination of Dawson and Thome teach the limitations of Claim 2. Thome further teaches: The system of claim 2, wherein the server software is further configured to send a further portion of the drug test results to an employer associated with the particular driver via the driver app, wherein the further portion is different from the portion of the drug test results sent to the particular driver (see, e.g., Figure 11 feature 1103 and ¶ 37 teaching managing confidential employee information, i.e., separating confidential information from non-confidential information).
Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over Dawson in view of Thome and further in view of Larson et al. (US 2023/0343421 A1, hereinafter “Larson”).
Claim 4. The combination of Dawson and Thome teach the limitations of Claim 1. Dawson and Thome fail to teach, however, analogous reference Larson teaches: The system of claim 1, further comprising
a counselor app configured to receive user input from a certified drug counselor on a computing device associated with the drug counselor, and to send counselor registration data provided by the counselor to the database (see, e.g., at least Larson ¶s 28 and 32 teaching registering the peer recovery specialist 104 who is providing various counseling and recovery services for the client);
wherein the counselor registration data comprises contact information for the counselor, a location of the counselor, and availability data of the counselor to provide counseling services (see, e.g., ¶ 45 teaching determining a location of the client and of the treatment; see further, e.g., ¶s 45 and 46 teaching tracking time in counseling meetings and other recovery items);
wherein the server software is configured to provide a list of available counselors to a positive-testing driver via the driver app based on location data associated with the positive-testing driver and on the counselor registration data (see, e.g., Figure 3 and ¶ 41 teaching that when the client accesses the centralized platform of the invention, the user can view various support services from recovery specialists, counselors, and therapists); and
wherein the server software is further configured to receive a selection of a particular counselor from the list of available counselors by the positive-testing driver via the driver app, generate a counseling appointment based on the selection of the particular counselor, and confirm the counseling appointment with the positive-testing driver and the selected counselor via the driver app and the counselor app respectively (see, e.g., ¶s 51, 55, 57, and 58 teaching selection of peer recovery specialist counselors by the clients for counseling).
The combination of Dawson and Thome fails to expressly the integration of counseling for anyone who tests positive during the drug testing. Nevertheless, as noted above, Larson teaches such a feature for those with a substance use disorder (see, e.g., Larson ¶s 2-7). Larson is similar to the instant application, Dawson, and Thome because it relates to a computerized system of helping those who test positive for drugs or alcohol by aiding in their recover (see Larson ¶s 2-7).
Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique of connecting those who test positive for drugs or alcohol with drug counselors (as disclosed by Larson) into the combined system of registering commercial drivers for monitoring various compliance issues including drug testing (as disclosed by Dawson and Thome). One of ordinary skill in the art would have been motivated to apply the known technique of connecting those who test positive for drugs or alcohol with drug counselors because people suffering from substance use disorder have a hard time accessing resources and receiving support from services that are offered by the state in which they reside (see Larson ¶ 5).
Furthermore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique of connecting those who test positive for drugs or alcohol with drug counselors (as disclosed by Larson) into the combined system of registering commercial drivers for monitoring various compliance issues including drug testing (as disclosed by Dawson and Thome), because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known technique of connecting those who test positive for drugs or alcohol with drug counselors into the combined system of registering commercial drivers for monitoring various compliance issues including drug testing, because predictably the connecting with counselors occurs the same way the connecting with testing sites does). See also MPEP § 2143(I)(D).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure: Magaletta, US 12,205,453 B1; Konczewski et al., US 2024/0387023 A1; Price, US 2021/0233022 A1; Walton et al., US 2016/0358129 A1; Mundt et al., US 2015/0248677 A1; Loeb, Jr. et al., US 2015/0111187 A1; and Greene et al., US 2009/0157423 A1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAN P MINCARELLI whose telephone number is (571)270-5909. The examiner can normally be reached Monday through Friday, 8:00 AM to 4:30 PM Eastern Time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan C. Uber can be reached at (571)270-3923. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JAN P MINCARELLI/
Primary Examiner, Art Unit 3626
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