DETAILED ACTION
Applicant submitted a response on 17 February 2026. Therein, claims 1, 3, 10, 12, 19 and 20 are amended. No new claims have been cancelled or added. These amendments have been entered and reviewed below.
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 .
Response to Amendments/Arguments
Applicant's arguments with respect to the rejection under 35 U.S.C. 103 have been fully considered but they are not persuasive. The current prior art of record discloses the claim limitations as reasoned below.
Applicant asserts that the prior art of record does not explicitly disclose the amended claim and that disabling an application on the mobile device occurs “a first predetermined time before the traffic light turning green.” Examiner does not agree.
Penilla teaches that “sending an alert” occurs when state information changes (see para. 0015, “upon determining” the state information changed) and a device may be disabled “just before receiving the alert” (see para. 0083). Thus, at the moment light changes (or at a timing that is imperceptible to humans), an alert is sent; reception of the alert is instantaneous. However, it is the teaching of “just before receiving the alert” that establishes the timing and reads on “a predetermined time before”. Because the time gap of sending and reception of the alert is negligible, the time of “receiving” is equivalent to the time of “sending”. Therefore, as time is not considered in the context of the alerting, Penilla teaches the timing that the UI (“one or more applications on the mobile device”) is disabled before (“a time before”) the alert (“traffic light turning green”). Penilla teaches “a first predetermined time before the traffic light turning green.”
Further, it is noted that significant patentable weight is not given to the term “predetermined” because of the 112(a) issue noted below. The newly added element is interpreted as “a time”.
Applicant further asserted that the combination is improper because the combination teaches disabling a users device and an autonomous vehicle. Specifically, it is asserted that disabling a user’s device is not consistent with use with an autonomous vehicle. Examiner does not agree.
First, and most importantly, the claim does not define an autonomous vehicle. It only defines a vehicle. The application of prior art containing an autonomous vehicle is therefore not relevant to claim 1. The claimed invention is open ended, and therefore, may be manually operated or autonomous. One of ordinary skill in the art would have the knowledge to modify the teachings of the prior art to a manually operated vehicle should claim 1 be limited as such.
Second, Applicant’s Specification for the claimed invention outlined the technology area and problems reasonably related to that technology. Examiner’s citation of prior art shares the technology area and also echoes similar concepts to the claimed invention. The scope of the prior art is applicable to the claimed invention.
In a further assertion to prove that the prior art combination is invalid, Applicant asks the question “why would one want to disable a device in an autonomous vehicle?”. Examiner is not persuaded.
Asserting that the combination is improper despite the prior art containing similar elements to the claimed invention is not a persuasive argument. The specification for the claimed invention mentions autonomy of vehicles 66 times. Applicant’s Claim 2 defines an autonomous vehicle for use with their device disabling system. It is unclear how to examine and prosecute elements from a claim if the same elements in the prior art are not reasonable to be combined.
Additionally, Applicant alleges that the motivation to combine is conclusory, insufficient, impermissibly generic and drawn only from Penilla. Examiner does not agree.
Examiner asserts that is a Best Practice of the Office to take the required “motivation” from the modifying reference. Thus, as Penilla is the secondary reference, taking motivation only from Penilla is in line with how obviousness rejections are to be structured. The outlined motivation follows statutory guidance and legal precedent.
Further, applicant alleges that the stated motivation is insufficient and generic. Examiner does not agree.
The outlined motivation was taken directly from Penilla. It is therefore the strongest type of rationale for showing proper motivation. “The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) ("Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.").” See MPEP 2144. Examiner presented a desire for “improvement” expressly from the prior art.
The motivation and combination are proper; the rejection is maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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 the first paragraph of pre-AIA 35 U.S.C. 112:
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 1-6, 10-17 and 19-24 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 10 and 19 define that the device is disabled “a predetermined time before the traffic light [turns] green”. The specification fails to disclose how the system knows when the light will turn green. This knowledge is required so that the claimed invention disables the device for “the predetermined time” prior to the light changing. The specification teaches that it detects a changed light, but it does not describe how the light-change timing is obtained or otherwise communicated to the claimed invention. Given the enormous number of traffic lights and non-standardized interval timing, the variability renders this an extremely important determination. The timing for each individual light change is impossible to determine without additional information.
Claim Rejections - 35 USC § 103
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, 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6, 10-17 and 19-24 are rejected under 35 U.S.C. 103 as being unpatentable over Kentley, et al. (U.S. Patent Publication No. 2017/0123421) and in view of Penilla, et al. (U.S. Patent Publication No. 2017/0197617).
For claim 1, Kentley discloses a method comprising: determining, by a computing device that a vehicle is approaching an intersection (see paras. 0061, 0084); determining, by the computing device, a plurality of potential maneuvers at an intersection (see para. 0061); determining, by the computing device, a navigation score for each of the plurality of potential maneuvers at the intersection (see para. 0061); selecting, based on the navigation score for each of the plurality of potential maneuvers, a maneuver (see para. 0061). Kentley does not explicitly disclose the remaining limitations.
A teaching from Penilla discloses sending, via one or more wireless communications and to a mobile device of a driver of the vehicle, the maneuver (see para. 0270, accelerating is a maneuver; para. 0081); determining, by the computing device, a status of a traffic light at the intersection (see para. 0284); enabling one or more applications on the mobile device upon determining that the status of the traffic light is red (see para. 0281, red light implicit as “waiting to turn green”, and “manipulating a mobile device” implies device is enabled; see para. 0300, “certain applications… will be enabled when the vehicle is at a stop, and intersection…”); and disabling the one or more applications on the mobile device when the traffic light turns green (see para. 0300. “when the state changes of the connected objects, such as the light turning green, … computing systems of the vehicle, display screens, or user devices within the vehicle may be disabled, deactivated, place to sleep, paused, stopped, turned off, etc.”).
Penilla does not explicitly disclose that the mobile device would be disabled “a predetermined time before” the traffic light turning green. However, Penilla discloses that “the alert can also take on the form of…a traffic light state (e.g. the light is green, the light is red…)” (see para. 0300) where “sending an alert” occurs when or “upon determining” the state information changed (see para. 0015) and a device may be disabled “just before receiving the alert” (see para. 0083). Because it is interpreted that the time gap of sending and reception of the alert is negligible, the time of “receiving” is equivalent to the time of “sending”. Therefore, as time is removed from the alerting, it is interpreted that the alert occurs when the light turns green (“upon determining” equivalent to “when”) and the device is disabled before (“a time before”) the alert (“traffic light turning green”). It would have been obvious to one of ordinary skill in the art at the effective date of filing that Penilla teaches disabling the one or more applications on the mobile device a time before the traffic light turning green based on the motivation to improve enhancing communication between connected vehicles and connected objects, and methods for exchanging information with cloud-based processing systems (see para. 0004).
It would have been obvious at the effective date of filing to modify Kentley to include the teachings of Penilla based on a reasonable expectation of success and the motivation to improve a subject vehicle that may receive information from other connected objects based on the geo-location of the subject vehicle, and certain of the connected objects within a zone of influence to the subject vehicle may be surfaced to the subject vehicle and/or mobile devices within the vehicle or associated with the vehicle (see para. 0007).
Regarding claim 2, Kentley further teaches determining, by the computing device, a level of autonomy of the vehicle (see para. 0059), and in response to determining that the vehicle is approaching the intersection and that the vehicle has one or more autonomous features enabled, sending, to the vehicle, an instruction to deactivate one or more of the one or more autonomous features (see para. 0083, autonomy deactivated).
With reference to claim 3, Penilla does not explicitly disclose “determining the status of the traffic light is red for a second predetermined time”. However, Penilla teaches monitoring that the vehicle has stopped for a specific amount of time. One of ordinary skill in the art would find the amount of time a vehicle is stopped (while in mobile modes) is equivalent to the amount of time a traffic light is red. It would have been obvious to one of ordinary skill in the art that determining the amount of time a vehicle is stopped is based on the amount of time a traffic light is red such that determining the amount of time for one is also determining the amount of time for the other.
Continuing with the claim, Penilla further teaches enabling the one or more applications on the mobile device (see para. 0081).
With regards to claim 4, Penilla further discloses determining a location of the computing device based on a sensor of the computing device or a sensor associated with the intersection (see para. 0013, 0084, 0307).
Referring to claim 5, Penilla further discloses sending instructions to turn off the mobile device, turn off a screen of the mobile device, or stop the one or more applications on the mobile device (see para. 0300).
Regarding claim 6, Penilla further teaches sending an instruction to the computing device to display a message requesting a pause to usage of the mobile device as the mobile device approaches the intersection (see paras. 0298-0299, 0311, 0313, 0314).
Claims 10 and 19 largely mirror the subject matter defined in claim 1. Therefore, claims 10 and 19 are rejected based on the reasoning and citations outlined above for claim 1.
Referring to claim 11, Penilla further teaches wherein the computing device is a mobile device or a vehicle control computer (see para. 0163).
Claims 12 and 20 largely mirror the subject matter defined in claim 3. Therefore, claims 12 and 20 are rejected based on the reasoning and citations outlined above for claim 3.
Claims 13 and 21 largely mirror the subject matter defined in claim 4. Therefore, claims 13 and 21 are rejected based on the reasoning and citations outlined above for claim 4.
Claims 14 and 22 largely mirror the subject matter defined in claim 5. Therefore, claims 14 and 22 are rejected based on the reasoning and citations outlined above for claim 5.
Claims 15 and 23 largely mirror the subject matter defined in claim 6. Therefore, claims 15 and 23 are rejected based on the reasoning and citations outlined above for claim 6.
For claim 16, Penilla further discloses wherein the non-transitory computer readable medium stores instructions that, when read by the computing device, cause the computing device to: display information indicative of how a driver associated with the vehicle compares to other drivers (see para. 0196-0197; see also, paras. 0311, 0313, 0314).
With regards to claim 17, Penilla further discloses wherein the information includes relative speed, reactive time, or risk score (see para. 0201, confidence equivalent to risk).
For claim 24, the limitations largely mirror the subject matter defined in claim 16. Therefore, claim 24 is rejected based on the reasoning and citations outlined above for claim 16.
Conclusion
Examiner previously stated at the end of the previous rejection that Applicant is considered to have implicit knowledge of the entire disclosure once a reference has been cited. The cited figures, columns and lines should not be considered the only relevant teachings. The entire reference must be taken as a whole. This includes any teachings within the reference that were not explicitly cited in the previous Office action. Any new citation of additional teachings of the previously cited art is not a new ground of rejection. Taking the references as a whole, the art supports the new rejection of the currently amended claims.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM D TISSOT whose telephone number is (571)270-3439. The examiner can normally be reached 8:00-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Ortiz can be reached at (571) 272-1206. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM D TISSOT/ Primary Examiner, Art Unit 3663