DETAILED ACTION
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 .
Application Status
This non-final action is in response to applicant’s amendments of 10/09/2025. Claims 57-62, 64-76, and 78-81 are examined and pending. Claims 57, 76, 78, and 81 are currently amended, claims 1-56, 63, 77, and 82 are cancelled.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Arguments
Applicant’s arguments with respect to the rejection(s) under 35 U.S.C. § 103 have been fully considered and are persuasive. As such the rejection under 35 U.S.C 103 has been withdrawn.
Applicant’s amendments/arguments with respect to the rejection under 35 USC 101 as being directed to an abstract idea without significantly more have been carefully considered and are not persuasive.
Applicant specifically argues the following:
Claim 1 not only recites a "server" but recites operations performed by a server including receiving a request from a client device and transmitting a response to the client device. These operations are more than mental processes and include the electronic transfer of data.
Furthermore, the dependent claims recite additional features that are more than mental processes. For example, dependent Claim 65 states "establishing a ToD session." Not only does a tele-operated driving session include communicating information between a vehicle and a remote device, but establishing a ToD session necessarily requires more than a mental process.
In response to similar arguments presented in the previous response, page 4 of the Office Action asserts that the "claim limitations encompass a person looking at different types of data such as the types of servers that could provide ToD support and information for supporting the ToD session could determine/select what type of server is to be selected to provide the ToD support." However, it is unreasonably broad to interpret a server including "at least one processor; and at least one memory connected to the at least one processor and including instructions that are executable by the at least one processor to cause the first server to perform operations" including communicating with a client device (as recited in Claim 76) as encompassing mental processes by a person. When given the broadest reasonable interpretation in light of the specification, the claims recite features that are more than a mental process.
Moreover, even if, accepting only for the sake of the present argument, that the pending claims are directed to an abstract idea enumerated in the above groups a)-c), Applicant respectfully submits that the Claims are integrated into a practical application of the exception, which indicates that the claim is eligible at Prong Two of revised Step 2A. The claimed features can permit triggering ToD support from the vehicle to a remote driver. Additionally, prediction and adaptation of an upcoming ToD event may be provided. As a consequence, support and communications to a remote driver may be provided; and application programming interfaces (APIs) that allow V2X service providers to communicate with mobile network operators for establishing ToD support also may be provided.
Thus, Applicant respectfully submits that the pending claims are integrated into a practical application of the exception. For these reasons alone, the rejection should be withdrawn as the pending Claims improve the functionality of a ToD system.
However, even if, accepting only for the sake of the present argument, the pending claims recite an abstract idea and the Examiner believes the claims are not integrated into a practical application, their recitations add significantly more to the abstract idea, as determined under the second step (Step 2B) of the Mayo/Alice framework. As the Federal Circuit noted in Bascom v. AT&T Mobility: some inventions' basic thrust might more easily be understood as directed to an abstract idea, but under step two of the Alice analysis, it might become clear that the specific improvements in the recited computer technology go beyond "well-understood, routine, conventional activit[iesl"and render the invention patent-eligible. (Bascom Global Internet Services, Inc. v. AT&T Mobility, LLC, (Fed. Cir. 2016) at 11-12, emphasis added.) See Also Berkheimer v. HP Inc. (Fed. Cir. 2018)
On April 19, 2018, the Patent Office issued a memorandum to the Patent Examining Corps entitled "Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)" that discussed the Berkheimer v. HP, Inc. decision (hereinafter the "Berkheimer memo"). The Berkheimer memo states that "Berkheimer informs the inquiry into whether an additional element (or combination of additional elements) represents well-understood, routine, conventional activity (Berkheimer at page 2). The Berkheimer memo states on page 3:
As set forth in MPEP § 2106.05(d)(I), an examiner should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry. This memorandum clarifies that such a conclusion must be based upon a factual determination that is supported as discussed in section III below. This memorandum further clarifies that the analysis as to whether an element (or combination of elements) is widely prevalent or in common use is the same as the analysis under 35 U.S.C. § 112(a) as to whether an element is so well-known that it need not be described in detail in the patent specification. The question of whether additional elements represent well-understood, routine, conventional activity is distinct from patentability over the prior art under 35 U.S.C. §§ 102 and 103. This is because a showing that additional elements are obvious under 35 U.S.C. § 103, or even that they lack novelty under 35 U.S.C. § 102, is not by itself sufficient to establish that the additional elements are well-understood, routine, conventional activities or elements to those in the relevant field. See MPEP § 2106.05. As the Federal Circuit explained: "[w]hether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional." Berkheimer, 881 F.3d at 1369.
The examiner has considered the arguments and respectfully disagree.
In the interview, the examiner suggested further considering the arguments filed by applicant once the arguments were formally filed and upon further consideration and consultation, it was determined that the rejection under 35 USC 101 is maintained. The independent claims recite selecting by the VAE server a vehicle-to-everything (V2X) application-specific server for providing the ToD support based on the information for supporting the ToD session. These limitation(s), as drafted, is (are) a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. That is, other than reciting “VAE server”. The claim limitations encompass a person looking at different types of data such as the types of servers that could provide ToD support and information for supporting theToD session could determine/select what type of server is to be selected to provide the ToD support. The mere nominal recitation of “VAE server” to make the selection does not take the claim limitation(s) out of the mental process grouping and merely function to automate the generating steps. Thus, the claims recite a mental process. (Step 2A – Prong 1: Judicial exception recited: Yes).
Further, the independent claims recite the additional limitations/elements of receiving/transmitting a request from a client device for a ToD support, wherein the request comprises a trigger and information for supporting the ToD session, the client device being separate from the first server; transmitting a response to the client device based on the V2X application specific server selected by the VAE server; a first server; a VAE server; at least one processor; at least one memory; and a computer program. The receiving steps are recited at a high level of generality (i.e., receiving/collecting various data (server(s) type etc.) and amount to mere data gathering, which is a form of insignificant extra-solution activity. The transmitting steps/elements is/are recited at a high level of generality (i.e., as a general action or change being taken based on the results of the generating step) and amounts to mere post solution actions, which is a form of insignificant extra-solution activity. See MPEP 2106.05d2 II i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added)). The additional limitation(s) of a first server; a VAE server; at least one processor; at least one memory; and a computer program is/are recited at a high level of generality and merely function to automate the generating steps.
Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claim(s) is/are directed to the abstract idea (Step 2A—Prong 2: Practical Application?: No).
Furthermore, under the 2019 PEG, a conclusion that an additional element/limitation is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B. Here, the receiving and transmitting steps/additional elements were considered to be extra-solution activities in Step 2A, and thus they are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field. The specification does not provide any indication that these steps are performed by anything other than conventional components performing the conventional activity (steps) of the claim. 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), indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Further, the Federal Circuit in Trading Techs. Int’l v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019), and Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017), for example, indicated that the mere displaying of data is a well understood, routine, and conventional function. Accordingly, a conclusion that the collecting step is well-understood, routine, conventional activity is supported under Berkheimer. The claim is ineligible (Step 2B: Inventive Concept?: No).
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 57-62, 64-76, and 78-81 are rejected under 35 U.S.C. 101 because the claimed invention is not directed to patent eligible subject matter.
101 Analysis
Based upon consideration of all of the relevant factors with respect to the claim as a whole, the claim is determined to be directed to an abstract idea. The rationale for this determination is explained below:
When considering subject matter eligibility under 35 U.S.C. § 101 under the 2019 Revised Patent Subject Matter Eligibility Guidance, the Office is charged with determining whether the scope of the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter (Step 1).
If the claim falls within one of the statutory categories (Step 1), the Office must then determine the two-prong inquiry for Step 2A whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, or abstract idea), and if so, whether the claim is integrated into a practical application of the exception.
Claims 57-62, 64-76, and 78-81 are rejected under 35 U.S.C. 101 because the claim invention is directed to an abstract idea without significantly more.
101 Analysis – Step 1: Statutory Category
The independent claims 57, 76, 78, and 81 are rejected under 35 USC §101 because the claimed invention is directed to a process and machine respectively, which are statutory categories of invention (Step 1: Yes). The independent claims 77 and 82 are rejected under 35 USC §101 because the claimed invention is directed to a process and machine respectively, which are statutory categories of invention (Step 1: No).
101 Analysis – Step 2A Prong 1: Judicial Exception Recited
The claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea). The abstract idea falls under “Mental Processes” Grouping. The independent claims recite selecting by the VAE server a vehicle-to-everything (V2X) application-specific server for providing the ToD support based on the information for supporting the ToD session. These limitation(s), as drafted, is (are) a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. That is, other than reciting “VAE server”. The claim limitations encompass a person looking at different types of data such as the types of servers that could provide ToD support and information for supporting the ToD session could determine/select what type of server is to be selected to provide the ToD support. The mere nominal recitation of “VAE server” to make the selection does not take the claim limitation(s) out of the mental process grouping and merely function to automate the generating steps. Thus, the claims recite a mental process. (Step 2A – Prong 1: Judicial exception recited: Yes).
101 Analysis – Step 2A Prong 2: Practical Application
The independent claims recite the additional limitations/elements of receiving/transmitting a request from a client device for a ToD support, wherein the request comprises a trigger and information for supporting the ToD session, the client device being separate from the first server; transmitting a response to the client device based on the V2X application specific server selected by the VAE server; a first server; a VAE server; at least one processor; at least one memory; and a computer program. The receiving steps are recited at a high level of generality (i.e., receiving/collecting various data (server(s) type etc.) and amount to mere data gathering, which is a form of insignificant extra-solution activity. The transmitting steps/elements is/are recited at a high level of generality (i.e., as a general action or change being taken based on the results of the generating step) and amounts to mere post solution actions, which is a form of insignificant extra-solution activity. See MPEP 2106.05d2 II i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added)). The additional limitation(s) of a first server; a VAE server; at least one processor; at least one memory; and a computer program is/are recited at a high level of generality and merely function to automate the generating steps.
Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claim(s) is/are directed to the abstract idea (Step 2A—Prong 2: Practical Application?: No).
101 Analysis – Step 2B: Inventive Concept
As discussed with respect to Step 2A Prong Two, the additional elements in the claim amount to no more than insignificant extra-solution activity.
Under the 2019 PEG, a conclusion that an additional element/limitation is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B. Here, the receiving and transmitting steps/additional elements were considered to be extra-solution activities in Step 2A, and thus they are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field. The specification does not provide any indication that these steps are performed by anything other than conventional components performing the conventional activity (steps) of the claim. 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), indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Further, the Federal Circuit in Trading Techs. Int’l v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019), and Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017), for example, indicated that the mere displaying of data is a well understood, routine, and conventional function. Accordingly, a conclusion that the collecting step is well-understood, routine, conventional activity is supported under Berkheimer. The claim is ineligible (Step 2B: Inventive Concept?: No).
Dependent claims 58-62, 64-75, and 79-80 do not include any other additional elements that are sufficient to amount to significantly more than the judicial exception. Therefore, the claims 57-62, 64-76, and 78-81 are rejected under 35 U.S.C. §101 as being directed to non-statutory subject matter.
Allowable Subject Matter
Claims 57-62, 64-76, and 78-81 would be allowable if rewritten to overcome the rejections under 35 USC 101 set forth in this office action and to include all of the limitations of the base claim and any intervening claims.
Applicant’s amendment necessitated the new ground of rejection presented in the office action. Accordingly, 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 extension fee 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.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABDALLA A KHALED whose telephone number is (571)272-9174. The examiner can normally be reached on Monday-Thursday 8:00 Am-5:00, every other Friday 8:00A-5:00AM.
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, Faris Almatrahi can be reached on (313) 446-4821. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABDALLA A KHALED/Examiner, Art Unit 3667
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