DETAILED ACTION
This is in response to the applicant’s communication filed on 10/21/25 wherein:
Claims 1-20 are currently pending.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/085863, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. 63/085863 fails to provide support for at least the following limitations: determining accuracy of said machine learning algorithm supplied labels and relevance of the indicia to user criteria; a machine learning algorithm combining road ageing curve data that overlap every quarter year to accumulate and average the aging curve data over a ten-year time span to create a conditional aging curve model; said machine learning algorithm creating a conditional aging curve model for different climate and road use levels specified by a user; said machine learning algorithm collecting dynamic road data to create a current dynamic road aging curve model; generating a family of optimized road ageing curves utilizing said conditional aging curve models and said dynamic road aging curve model for the same road segments over time (claim 1). Claim 11 contains similar limitations. All remaining claims are dependent on claim 1 or claim 11. Therefore, all of the claims are assigned the priority date of 9/21/21.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Claim 1 recites a method and therefore, falls into a statutory category. Similar independent claim 11 recites a system, and therefore, also fall into a statutory category.
Step 2A – Prong 1 (Is a Judicial Exception Recited?): The underlined limitations of
collecting a data set of photographic images of roadway condition indicia in accordance with search criteria from a user;
providing said photographic images to a machine learning algorithm, where said machine learning algorithm labels each photographic image with an initial indicator of an area or item of concern meeting said search criteria;
providing said photographic images and said machine learning algorithm supplied labels to an evaluator module;
determining accuracy of said machine learning algorithm supplied labels and relevance of the indicia to user criteria;
for all accurate machine learning algorithm supplied labels and relevant indicia, said machine learning algorithm analyzing relevant indicia for quantifiable roadway distress, to measure the quantifiable roadway distress and to assign a rating thereto;
receiving collected roadway data to build a profile and history of said roadway;
a machine learning algorithm combining road ageing curve data that overlap every quarter year to accumulate and average the aging curve data over a ten-year time span to create a conditional aging curve model;
said machine learning algorithm creating a conditional aging curve model for different climate and road use levels specified by a user;
said machine learning algorithm collecting dynamic road data to create a current dynamic road aging curve model;
generating a family of optimized road ageing curves utilizing said conditional aging curve models and said dynamic road aging curve model for the same road segments over time;
providing an analysis report of distress extent, damage location, and repair estimates from said family of optimized road ageing curves to a user tailored to user-defined end goals for analysis and road repair;
server determining maintenance recommendations based upon data analysis of road maintenance scenarios input by said user;
said user utilizing recommendations and information from said analysis report to plan and execute road maintenance activities
are processes that, under their broadest reasonable interpretation, are considered certain methods of organizing human activity – commercial or legal interactions (including agreements in the form of contracts and marketing or sales activities or behaviors) and/or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). Examiner notes that road maintenance companies commonly plan and execute maintenance activities and the broadest reasonable interpretation of “executing” road maintenance includes directing workers to perform said maintenance. Accordingly, the claim recites an abstract idea.
Step 2A-Prong 2 (Is the Exception Integrated into a Practical Application?): This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of:
Claim 1: a machine learning algorithm, a server, and an evaluator module
Claim 11: a machine learning algorithm, a server comprising at least one processor, a video capture device, and at least one accelerometer.
The computer components and various devices are recited at a high-level of generality (i.e., as a generic processor performing generic computer functions), such that it amounts to no more than mere instructions to apply the exception using generic computer components and devices. Accordingly, the additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea when considered both individually and as a whole. The claim is directed to an abstract idea.
Step 2B (Does the claim recite additional elements that amount to Significantly More than the Judicial Exception?): The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer to perform the claimed steps amount to no 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. The claim is not patent eligible, as when viewed individually, and as a whole, nothing in the claim adds significantly more to the abstract idea.
Dependent claims 2-10 and 12-20 merely recite further embellishments of the abstract idea of independent claim 1 or claim 11 as discussed above with respect to integration of the abstract idea into a practical application, and these features only serve to further limit the abstract idea of independent claim 1 or claim 11; however, none of the dependent claims recite an improvement to a technology or technical field or provide any meaningful limits.
In light of the detailed explanation and evidence provided above, the Examiner asserts that the claimed invention, when the limitations are considered individually and as whole, is directed towards an abstract idea.
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 11 refer to "providing an analysis report of distress extent, damage location, and repair estimates from said family of optimized road ageing curves to a user tailored to user-defined end goals for analysis and road repair; server determining maintenance recommendations based upon data analysis of road maintenance scenarios input by said user," but it is unclear how this is accomplished. This appears to be an end result without an explanation of how to accomplish this step. The specification does not describe how this is done, but provides “to accomplish this feedback optimization, the data collection by the system and platform occurs on an annual basis” and “the system may utilize Census data to optimize future road maintenance and planning.” Specification 10, 12. No specific algorithm is supplied for how the various inputs may be used to provide the analysis report or how the server determines maintenance recommendations. In other words, there is no algorithm or teaching supplied as to how the computer uses the road ageing curves to provide the analysis report. Neither is there an algorithm or instructions for how the server determines maintenance recommendations from the data analysis.
When examining computer implemented, functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. Specifically, if one skilled in the art would know how to program the disclosed computer to perform the necessary steps described in the specification to achieve the claimed function and the inventor was in possession of that knowledge, the written description requirement would be satisfied. If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under §112, ¶ 1 for lack of written description must be made. For more information regarding the written description requirement, see MPEP §2161.01–2163.07(b). In this case, applicant’s specification does not disclose an algorithm for performing the function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.
Claims 1-20 refer to using a computer to accomplish the claimed steps (claims 1-10) or as part of the system claimed (claims 11-20). At most, the specification discloses generic computers and processors. However, for a specific function, the specification must disclose the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function sufficient detail such that one of ordinary skill can reasonably conclude that the inventor invented the claimed subject matter. It is not sufficient that one of ordinary skill in the art is capable of writing the software/program to achieve the claimed function. There must be an explanation of how the computer or component performs the claimed function. Here, the claimed functions appear to be specific functions that require a special purpose computer to perform, and the specification fails to disclose the corresponding structure and algorithm required to perform the claimed functions. As such, applicant has not met the requirements of 35 USC §112, first paragraph.
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.
Claims 1-20 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.
The claims refer to using a computer to accomplish the claimed steps (claims 1-10) or as part of the system claimed (claims 11-20). However, the specification does not disclose the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function. Without describing the computer and the algorithm, potential infringers cannot be sure whether they are infringing the claims or not.
Claim Rejections - 35 USC § 112, New Matter
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. Examiner has reviewed applicant’s disclosure and submits that these added limitations find no support in the specification as currently written, and is, therefore, directed to new matter.
Claim 1: “providing said photographic images and said machine learning algorithm supplied labels to an evaluator module” is not described in the specification as written. Applicant did not cite any specific portion of the specification for support. However, Examiner reviewed the entirety of the specification, and did not find the cited limitation.
The claims not specifically enumerated above are rejected as dependent upon one or more of the enumerated claims.
Examiner Note
Examiner notes that the rejections under 102/103 are withdrawn. The prior art of record neither anticipates nor supports a conclusion of obviousness without the use of impermissible hindsight with respect to the subject matter which is present in independent claim 1, specifically, a method for delivering optimized road maintenance analysis comprising:
collecting a data set of photographic images of roadway condition indicia in accordance with search criteria from a user;
providing said photographic images to a machine learning algorithm, where said machine learning algorithm labels each photographic image with an initial indicator of an area or item of concern meeting said search criteria;
providing said photographic images and said machine learning algorithm supplied labels to an evaluator module;
determining accuracy of said machine learning algorithm supplied labels and relevance of the indicia to user criteria;
for all accurate machine learning algorithm supplied labels and relevant indicia, said machine learning algorithm analyzing relevant indicia for quantifiable roadway distress, to measure the quantifiable roadway distress and to assign a rating thereto;
receiving collected roadway data to build a profile and history of said roadway;
a machine learning algorithm combining road ageing curve data that overlap every quarter year to accumulate and average the aging curve data over a ten-year time span to create a conditional aging curve model;
said machine learning algorithm creating a conditional aging curve model for different climate and road use levels specified by a user;
said machine learning algorithm collecting dynamic road data to create a current dynamic road aging curve model;
generating a family of optimized road ageing curves utilizing said conditional aging curve models and said dynamic road aging curve model for the same road segments over time;
providing an analysis report of distress extent, damage location, and repair estimates from said family of optimized road ageing curves to a user tailored to user-defined end goals for analysis and road repair;
server determining maintenance recommendations based upon data analysis of road maintenance scenarios input by said user;
said user utilizing recommendations and information from said analysis report to plan and execute road maintenance activities.
Claim 11 includes similar limitations.
Response to Arguments
Claim Rejections under 35 USC 101
Applicant traverses the rejection, stating that the claims are patentable under Alice, particularly arguing that the “analysis in the Office Action is not accounting for the effect of claims 1 and 11, as amended, as a whole and the individual claim elements as required by the decision in McRO.” Remarks 7. McRO is not similar to the instant case, however. McRO improved the ability of the computer to perform specific animation tasks that previously could only be performed subjectively by humans. The instant claims are not directed to improving the ability of the computer to perform a task that previously could only be performed by humans. Rather, the claim limitations do not amount to more than mere instructions to implement an abstract idea on a computer. It is noted that the claims recite only the idea of a solution, but fail to recite details of how the solution to the problem is accomplished. Further, the claims invoke computers merely as a tool to perform the existing processes regarding road analysis.
Applicant argues that the claimed invention is not merely an abstract idea but “an improvement in the technology for detecting and optimization of ongoing repair for roadways” in that the invention is about determining factors “utilizing machine learning analysis as guided and directed by a pre-loaded set of criteria and conditions required by a user.” Remarks 8. Examiner respectfully disagrees. Machine learning, itself, makes use of a pre-loaded set of criteria and conditions as programed by a user. Applicant’s use of machine learning is recited at a high-level of generality (i.e., without specific technical details), such that it amounts to no more than mere instructions to apply the exception using generic computer components and devices.
Applicant further argues that the “claims recite a novel machine-learning capability for data collection that permits a new function for not only ongoing, but predictive road degradation over time that shows road deterioration in real time and future road deterioration based upon predictive analysis from the ongoing dynamic data collection and the inclusion of this information into a new type of aging curves” which provides an “significantly more analysis and information for use in roadway maintenance activities than what is previously known in the industry.” Remarks 9. Examiner respectfully disagrees. This alleged improvement is directed to the abstract idea, not to an improvement in technology. If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art. See MPEP 2106.05(a). In this case, the Specification does not provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Neither has Applicant identified a specific improvement in technology, itself. At most, the Specification sets forth an alleged improvement in a conclusory manner. Therefore, the claim does not improve technology.
Claim Rejections under 35 USC 112(a)
Applicant argues that the claims are amended to recite how the data is captured and analyzed to produce a report and that the claims are supported by page 8, paragraphs 1 and 2 of the Specification and the figures. Remarks 9. Examiner respectfully disagrees that the amendments or specification overcome the rejection, for all of the reasons above. Examiner notes that no computer algorithm has been identified by the Applicant. No specific algorithm is supplied for how the various inputs may be used to provide the analysis report or how the server determines maintenance recommendations. In other words, there is no algorithm or teaching supplied as to how the computer uses the road ageing curves to provide the analysis report.
Claim Rejections under 35 USC 112(b)
Applicant argues that “multiple references to computer systems, computers, servers, and processors are found throughout the specification . . . that enable the necessary steps to perform the functions recited in the claims.” Remarks 10. Examiner respectfully disagrees, for all the reasons above. The specification does not disclose the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed functions. Without describing the computer and the algorithm, potential infringers cannot be sure whether they are infringing the claims or not.
Conclusion
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 CARRIE S GILKEY whose telephone number is (571)270-7119. The examiner can normally be reached Monday-Thursday 7:30-4:30 CT and Friday 7:30-12 CT.
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/CARRIE S GILKEY/Primary Examiner, Art Unit 3626