FINAL OFFICE ACTION
ACKNOWLEDGEMENTS
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is responsive to reissue application 17/852,822 filed June 6, 2022 of US Patent Number US 10,696,249 B2 (“‘249 Patent”) issued to Heinrich et al on June 30, 2020. The ‘249 Patent was based upon U.S. patent application 15/893,085 (“’085 Application”).
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. § 251 and 37 C.F.R. §§ 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 C.F.R. § 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,696,249 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 C.F.R. § 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
B. Terminology Used by the Examiner
Unless expressly noted otherwise, the following terminology is used by the Examiner is this Office action (and any future Office action(s)).
“Original Disclosure”
“Original Disclosure” refers to the substantive sections of the ‘085 Application (i.e., the specification, drawings, claims, and abstract) there were present (or deemed to be present by e.g., by a Federal Circuit decision) on the effective filing date of the ‘085 Application.
“Applicant”
“Applicant” refers to the Applicant in this reissue application.
“applicant” or “applicants” (lower case)
“applicant” or “applicants” (lower case) refers not to the Applicant in this reissue application but to applicants generally.
“POSITA:” “Person having Ordinary Skill In The Art”
PROSCUTION HISTORY OF THE INSTANT REISSUE APPLIACTION
A non-final Office action was mailed on July 28, 2023 (“July 2023 Non-Final Action”). In response to the July 2023 Non-Final Action, Applicant filed a response on January 26, 2024 (“Jan 2024 Response”). In response to the Jan 2024 Response the Examiner mailed a final Office action on May 24, 2024 (“May 2024 Final Office Action”). An interview was held on October 7, 2024 (“Oct 2024 Interview”). In the Oct 2024 Interview, Applicant noted the incompleteness of the May 2024 Final Office Action. In response, the Examiner agreed to withdraw the finality and make the May 2024 Final Office Action a non-final Office action. Thus the May 2024 Final Office Action is hereby renamed the May 2024 Non-Final Office Action.
In response to the May 2024 Non-Final Office Action, Applicant filed a response on November 6, 2024 (“Nov 2024 Response”). The Nov 2024 Response contained, among other things, “Amendments to the Claims” (“Nov 2024 Claim Amendments”); “STATEMENT OF STATUS AND SUPPORT FOR ALL CHANGES TO THE CLAIMS;” and “REMARKS/DISCUSSION OF ISSUES” (“Nov 2024 Remarks”). This final Office action is in response to the Nov 2024 Response.
STAUS OF CLAIMS
Claims 1-21, 25-27, and 31-54 are pending.
Claims 49-54 are additional new claims.
Claims 22-24 and 28-30 are cancelled.
Claims 1-2, 5-6, 8-9, 11-14, 16, 19, ,25, 31, 34, 37, 40, 43, and 46 are amended.
As a result of this Office action, claims 1-21, 25-27, and 31-54 are rejected.
IV. CLAIM INTERPRETATION
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111 et seq.
A. Lexicographic Definitions
After careful review of the Original Disclosure, the prosecution history, and unless expressly noted otherwise by the Examiner below, the Examiner finds that he is unable to locate any lexicographic definitions (either express or implied) with reasonable clarity, deliberateness, and precision. Because the Examiner is unable to locate any lexicographic definitions with reasonable clarity, deliberateness, and precision, the Examiner concludes that Applicant is not their own lexicographer. See MPEP § 2111.01 IV.
B. ‘Sources’ for the 'Broadest Reasonable Interpretation'
For terms not lexicographically defined by Applicant, the Examiner hereby adopts the following interpretations under the broadest reasonable interpretation standard. In other words, the Examiner has provided the following interpretations simply as express notice of how he is interpreting particular terms under the broadest reasonable interpretation standard. Additionally, these interpretations are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language.1 In accordance with In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997), the Examiner points to these other “sources” to support his interpretation of the claims. Finally, the following list is not intended to be exhaustive in any way:
“Processor” #1
“1: one that processes 2. a: (1) a computer (2) The part of a computer system that operates on data – called also a central processing unit.” Microsoft Press Computer Dictionary, 2nd Edition, Microsoft Press, Redmond, WA, 1994. 2
Device
“(7) A hardware unit that is capable of performing some specific function.” The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, 12/2000.
Configuration
“(C) The physical and logical elements of an information processing system, the manner in which they are organized and connected, or both. Note: May refer to a hardware configuration or software configuration.” The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, 12/2000.
Instruction
“(4) a statement or expression consisting of an operations and its operands (if any) , which can be interpreted by a computer in order to perform some function or operation.” The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, 12/2000.
Operable
“: PRACTICABLE” Merriam-Webster’s Collegiate Dictionary, 10th Edition, Merriam-Webster Inc., Springfield, M.A., 1997. Practicable “1 : capable of being put into practice or of being done or accomplished : feasible” Merriam-Webster’s Collegiate Dictionary, 10th Edition, Merriam-Webster Inc., Springfield, M.A., 1997.
“Software”
“n. Computer programs; instructions that make hardware work....” Microsoft Press Computer Dictionary, 5th Edition, Microsoft Press, Redmond, WA, 2002.
“Special programming”
“Includes any functionality that is not 'coextensive' with a microprocessor or general purpose computer. [Emphasis added.]” Apr 2023 Remarks (quoting Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012)).
“arrange”
“2: to put into a proper order or into a correct or suitable sequence, relationship, or adjustment < ~flowers in a vase> < ~ cards alphabetically>” Merriam-Webster’s Collegiate Dictionary, 10th Edition, Merriam-Webster Inc., Springfield, M.A., 1997.
“circuit”
“1. Any path that can carry electrical current. 2. A combination of electrical components interconnected to perform a particular task.” Microsoft Computer Dictionary, 5th Edition, Microsoft Press, Redmond, WA, 2002.
“Algorithm”
“a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. See also Ergo Licensing:
An algorithm may be expressed “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.” Typhoon Touch [Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011)] (quoting Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)). Even described “in prose,” an algorithm is still “a step-by-step procedure for accomplishing a given result.” Id. at 1385.
Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012).
“to”
“a — used as a function word to indicate purpose, intention, tendency, result or end” Merriam-Webster’s Collegiate Dictionary, 10th Edition, Merriam-Webster Inc., Springfield, M.A., 1997.
C. 35 U.S.C. § 112(f)
The following is a quotation of pre AIA § 35 U.S.C. § 112(f):
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
A second exception to the broadest reasonable interpretation standard occurs when a claimed phrase is interpreted in accordance with 35 U.S.C § 112(f) (“§ 112(f)”). See MPEP § 2181 et seq. To invoke § 112(f), a claimed phrase must meet the three prong analysis (“3 Prong Analysis”) as set forth in MPEP § 2181 I.
Use of the word “means” in a claim with functional language creates a rebuttable presumption that the claim limitation should be interpreted in accordance with § 112(f). The presumption that the claim limitation is interpreted under § 112(f) is rebutted when the claim limitation recites sufficient structure to perform the entire claimed function.
Absence of the word “means” in a claim creates a rebuttable presumption that the claim limitation is not to be interpreted in accordance with § 112(f). The presumption that the claim limitation is not interpreted under § 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure to perform the entire claimed function.
Claim limitations that use the word “means” are therefore being interpreted under § 112(f), except as otherwise indicated below. Conversely, claim limitations that do not use the word “means” are not being interpreted under § 112(f), except as otherwise indicated below.
The following phrases will be first identified and then analyzed using the MPEP’s 3 Prong Analysis to determine if the claimed phrase invoke § 112(f). If a phrase invokes § 112(f), the corresponding structure for the phrase will also be determined.
Functional Phrase #1 Claim 1
Functional Phrase #1 states:
at least one first sensor, wherein the at least one first sensor is arranged to produce first sensor data associated with a user ….
Functional Phrase #1 (“FP#1”) as recited in Claim 1.
a. Prong (C)
As an initial matter, the Examiner finds that FP#1 does not use the term “means.” Therefore the issue arising under Invocation Prong (A) then becomes whether or not FP#1 is a generic placeholder for “means.”
First the Examiner has reviewed the Original Disclosure and has determined that an off the shelf sensor is arranged to produce sensor data and that a POSITA would understand the function of producing a first sensor data which is associated with a user. In other words, the Examiner finds that a person having ordinary skill in this particular art understands that an ordinary, off-the-shelf sensor can produces sensor data and all the functions within FP#1 without special programming. Thus, the FP#1 fails Prong C. Because the FP#1 fails Prong C, FP#1 does not invoke § 112(f).
Functional Phrase #2 Claim 1
Functional Phrase #2 states:
wherein the first processor circuit is arranged to:
…
determine an identification of the user based on the first sensor data; [and]
cause the mobile device to send the identification of the user to a second processor circuit,
Functional Phrase #2 (“FP#2”) as recited in Claim 1.
a. Prong (A)
As an initial matter, the Examiner finds that FP#2 does not use the term “means.” Therefore, the issue arising under Invocation Prong (A) then becomes whether or not FP#1 is a generic placeholder for “means.”
First, the Examiner has reviewed the Original Disclosure and concludes that the Original Disclosure does not provide a description sufficient to inform a POSITA that the claimed “the first processor circuit” denotes sufficient structure (as defined by the Federal Circuit) to perform the all the functions within FP#2 without ‘special programming.’ In other words, the Examiner finds that a person having ordinary skill in this particular art understands that an ordinary, off-the-shelf processor (or general purpose computer with instructions, memory, CPU, circuit etc.) can be arranged to receive data but cannot perform the all the functions within FP#2 without special programming.
Second, the Examiner has reviewed both general dictionaries and subject matter specific dictionaries (e.g. Microsoft Computer Dictionary and the IEEE Dictionary, both cited above in this Office action) for evidence to establish that the claimed “the first processor circuit” has achieved recognition as agent noun denoting sufficient structure to perform the all the functions within FP#2 without special programming. Based upon a review of these dictionaries, the Examiner is unable to locate sufficient evidence that the claimed “the first processor circuit” has achieved recognition as an agent noun denoting sufficient structure for performing the all the functions within FP#2. For example, see the subsection of “Sources” noted above, describing how neither the claimed “instructions” nor an off-the-shelf “processor” can perform the all the claimed functions within FP#2 without special programming.
Third, the Examiner has reviewed the prior art of record for evidence that the claimed “first processor circuit” has sufficient structure to perform all the claimed functions within FP#2 without special programming. Based upon a review of the prior art now of record, the Examiner is unable to locate sufficient evidence to establish that the claimed “first processor circuit” has sufficient structure to perform the all the claimed functions within FP#2 without special programming.
Accordingly, the Examiner concludes that the that the claimed “first processor circuit” as set forth in FP#2 is being used as a generic term for a structure performing all the claimed functions within FP#2, and therefore is a generic placeholder for the phrase “means for.” Because the claimed “first processor circuit” is a generic placeholder having insufficient structure for performing the entire claimed functions within FP#2, the Examiner concludes that FP#2 meets invocation Prong (A).
c. Prong (B)
In accordance with the MPEP, Invocation Prong (B) requires:
(B) the term ‘means’ … or the generic placeholder is not modified by the term “means” or “step” or the generic placeholder is modified by functional language ….
MPEP § 2181 I. — Invocation Prong (B).
Based upon he claimed language itself, the Examiner finds the function of FP#2 is:
arranged to:
…
determine an identification of the user based on the first sensor data; [and]
cause the mobile device to send the identification of the user to a second processor circuit,
Function of Functional Phrase #2 (“Function of FP#2”) as recited in Claim 1
(i) Function Gets Its Ordinary Meaning
Because nothing in the ‘249 Patent or the prosecution history suggests otherwise, the Function of FP#2 will have its ordinary meaning. “Ordinary principles of claim construction govern interpretation of this claim language … and, for all the reasons discussed in the preceding two sections, we construe this function according to its ordinary meaning ….” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333-34 (Fed. Cir. 2004)(citations omitted). “Ordinary principles of claim construction govern interpretation of the claim language used to describe the function.” Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002)(citations omitted).
(ii) Function of FP#2 is Computer Implemented
Based upon a review of the ‘249 Patent itself, the prosecution history, and with particular emphasis on the claimed language itself (“first processor circuit is arranged to”), the Examiner concludes that the Function of FP#2 is computer (i.e., software) implemented. A “first second and third processor circuit” are interpreted as set forth in the ‘249 specification:
Processing for certain embodiments of the vehicle settings adjustment system may be included in one or any combination of the vehicle processing unit 12, a cloud (e.g., one or more devices of the clouds 18 and/or 26), the driver wearable 22, the passenger wearable 30, the driver mobile device 24, the passenger mobile device 32, and/or the camera 34. For instance, user identification and/or user preferences (e.g., for vehicle parameter adjustments) may be achieved and/or stored, respectively, at any one or more of these devices based on sensed physiological parameters. Further, sensing of physiological parameters may be achieved via the mobile devices 24, 32, interior and exterior sensors 16, 14, respectively, camera 34, and/or the one or more sensors of the wearable devices 22, 30. However, in the interest of facilitating an understanding of operation of certain embodiments of a vehicle settings adjustment system and further in the interest of brevity, the description that follows focuses on the measurement of physiological parameters and any identification of the user using one or more sensors of the wearable devices 22 and/or 30, and determination of vehicle parameters (whether via access to pre-defined settings locally or remotely stored and/or without using an identity of the user) is described as being performed by the vehicle processing unit 12, with the understanding that variations to the described embodiments where these functions are implemented elsewhere among the various devices depicted in FIG. 1 are also contemplated and hence within the scope of the invention. [Emphasis added.]
‘249 specification column 9 lines 26-53.
The specification also supports the Examiner’s conclusion that the Function of FP#2 is computer (i.e., software) implemented with respect to a user device and a wearable device, a cloud, a vehicle processing device or in any combination of the above.
c. Prong (C)
Examiner’s Prong (C) Findings
In accordance with the MPEP, § 112(f) Invocation Prong (C) requires:
(C) the term ‘means’ … or the generic placeholder is not modified by sufficient structure ... for performing the claimed function.
MPEP § 2181 I. — Invocation Prong (C).
Based upon a review of the entire FP#2, the Examiner finds that although FP#2 expressly recites a “processor,” the phrase itself does not contain sufficient structure (as defined by the Federal Circuit) for performing the entire Function of FP#2 without the addition of special programming (i.e. algorithm(s)). In fact, the Examiner finds that FP#2 positively recites very little structure other than the claimed “first sensor,” and “processor circuit.”
Algorithm Defined
An algorithm is a step-by-step procedure for accomplishing a given result:
An algorithm may be expressed “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.” Typhoon Touch [Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011)] (quoting Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)). Even described “in prose,” an algorithm is still “a step-by-step procedure for accomplishing a given result.” Id. at 1385.
Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012).3
FP#1 Doe Not Recite Any Algorithms, Let Alone All Algorithms to Perform the Entire Claim Function
Based upon the express wording within FP#2 and all evidence of record, the Examiner finds that to a POSITA, the claim language itself within FP#2 does not recite an algorithm for accomplishing the Function of FP#1 (i.e., the function of “arranged to: … determine an identification of the user based on the first sensor data; [and] cause the mobile device to send the identification of the user to a second processor circuit …).” For at least this reason, the Examiner finds that algorithm(s) to perform the entire Function of FP#2 are not expressly recited in claim 1.
In other words, the claim language itself does not provide a step-by-step procedure explaining how to “determine an identification of the user based on the first sensor data; [and] cause the mobile device to send the identification of the user to a second processor circuit …”
Because the algorithm(s) needed to perform the entire Function of FP#2 are not expressly recited in claim 1 and to avoid improperly reading the specification into the claim,4 another claim construction principle would be needed to properly bring any algorithm(s) from the specification into claim 1.
To a POSITA and based upon all evidence of record, the Examiner finds that the claimed “first processor circuit” cannot perform the entire Function of FP#2 without additional structure (i.e., an algorithm).
Because the claimed “first processor circuit” does not contain sufficient structure (as defined by MPEP § 2181 and the Federal Circuit) for performing the entire Function of FP#2 without special programming, the Examiner concludes that FP#2 meets invocation Prong (C).
Because FP#2 does not contain sufficient structure for performing the entire Function of FP#2, the Examiner concludes that FP#2 meets Invocation Prong (C).
Because FP#2 meet’s the MPEP’s 3-Prong Analysis, the Examiner concludes that FP#2 invokes § 112(f).
d. Corresponding Structure for FP#2
“The next step in construing a means-plus-function claim limitation is to look to the specification and identify the corresponding structure for that function.” In re Aoyama, 656 F3d 1293, 1297 (Fed. Cir. 2011) quoting Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333 (Fed. Cir. 2004). “Under this second step, structure disclosed in the specification is `corresponding' structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Aoyama, 656 F3d at 1297 (quoting Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003).
Furthermore, because the claimed phase is meant to ‘cover’5 software, “[i]t is well-established that the corresponding structure for a function performed by a software algorithm is the algorithm itself.” EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 621 (Fed. Cir. 2015). In other words, “[i]f special programming is required for a general-purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies.” Ergo Licensing, 673 F.3d at 1365. As noted in Diebold Nixdorf, Inc. v. Int'l Trade Comm'n, 899 F.3d 1291 (Fed. Cir. 2018):
“Structure disclosed in the specification qualifies as ‘corresponding structure; if the intrinsic evidence clearly links or associates that structure to the function recited in the claim.” Williamson, 792 F.3d at 1352 (citing Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012)). “Even if the specification discloses corresponding structure, the disclosure must be of ‘adequate’ corresponding structure to achieve the claimed function.” Id. (citation omitted). Thus, under § 112, paras. 2 and 6, if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim, a means-plus-function clause is indefinite. Id. (citation omitted).
Diebold Nixdorf, 899 F.3d at 1303.
Based upon a review of the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#2 to some corresponding structure found in the specification. The Original Disclosure at best states that the following:
Processing for certain embodiments of the vehicle settings adjustment system may be included in one or any combination of the vehicle processing unit 12, a cloud (e.g., one or more devices of the clouds 18 and/or 26), the driver wearable 22, the passenger wearable 30, the driver mobile device 24, the passenger mobile device 32, and/or the camera 34. For instance, user identification and/or user preferences (e.g., for vehicle parameter adjustments) may be achieved and/or stored, respectively, at any one or more of these devices based on sensed physiological parameters. Further, sensing of physiological parameters may be achieved via the mobile devices 24, 32, interior and exterior sensors 16, 14, respectively, camera 34, and/or the one or more sensors of the wearable devices 22, 30. However, in the interest of facilitating an understanding of operation of certain embodiments of a vehicle settings adjustment system and further in the interest of brevity, the description that follows focuses on the measurement of physiological parameters and any identification of the user using one or more sensors of the wearable devices 22 and/or 30, and determination of vehicle parameters (whether via access to pre-defined settings locally or remotely stored and/or without using an identity of the user) is described as being performed by the vehicle processing unit 12, with the understanding that variations to the described embodiments where these functions are implemented elsewhere among the various devices depicted in FIG. 1 are also contemplated and hence within the scope of the invention.
‘249 Patent, specification column 9 lines 26-53
Based upon the entire Original Disclosure and with particular emphasis on the passage of the ‘249 Patent quoted directly above, the Examiner finds that this evidence is still insufficient because the specification simply states that any of the elements of the system could process the information. This passage does not clearly or associate the Function of FP#2 to any specific structure.
Because the Original Disclosure fails to clearly link or associate the Function of FP#2 to some corresponding structure, claim 1 is indefinite under § 112(b). A § 112(b) rejection for FP#2 for claim 1 is set forth below.
Functional Phrase #3 Claim 1
Functional Phrase #3 states:
wherein the sending of the identity of the user to the second processor circuit causes the second processor circuit to:
determine that the user is to enter into a vehicle;
cause the second mobile device to send the identification of the user to a third processor circuit when it is determined that the user is to enter into the vehicle,
Functional Phrase #3 (“FP#3”) as recited in Claim 1.
a. Prong (A)
As an initial matter, the Examiner finds that FP#3 does not use the term “means.” Therefore, the issue arising under Invocation Prong (A) then becomes whether or not FP#1 is a generic placeholder for “means.” The analysis with respect to FP#2 prong A is applicable and incorporated by reference herein.
b. Prong (B)
Based upon he claimed language itself, the Examiner finds the function of FP#2 is:
determine that the user is to enter into a vehicle; [and]
cause the second mobile device to send the identification of the user to a third processor circuit when it is determined that the user is to enter into the vehicle,
Functional Phrase #3 (“FP#3”) as recited in Claim 1.
The analysis with respect to FP#2 prong B is applicable and incorporated by reference herein.
To a POSITA and based upon all evidence of record and based upon all evidence of record and with particular emphasis on the Original Disclosure, the Examiner finds that the Function of FP#3 is computer (i.e., software) implemented.
To a POSITA and based upon all evidence of record, the Examiner finds that the claimed “second processor circuit” cannot perform the entire Function of FP#3 without additional structure (i.e., an algorithm).
Because the claimed “second processor circuit” does not contain sufficient structure (as defined by MPEP § 2181 and the Federal Circuit) for performing the entire Function of FP#3 without special programming, the Examiner concludes that FP#3 meets invocation Prong (C).
c. Prong (C)
Based upon a review of the FP#3, the Examiner finds that although FP#3 expressly recites a “processor,” the phrase itself does not contain sufficient structure for performing the entire Function of FP#3 without the addition of special programming (i.e. algorithm(s)). In fact, the Examiner finds that FP#3 positively recites very little structure other than the claimed “processor.”
To a POSITA and based upon all evidence of record, the Examiner finds that the claimed “first processor circuit” cannot perform the entire Function of FP#3 without additional structure (i.e. an algorithm).
Based upon the express wording with FP#3, the Examiner finds that to a POSITA, the claim language itself within FP#3 does not recite an algorithm for accomplishing the Function of FP#3 (e,g,, “determine that the user is to enter into a vehicle ….” For at least this reason, the Examiner finds that an algorithm to perform the entire Function of FP#3 is not expressly recited in claim 1.
In other words, the claim language itself does not provide a step-by-step set of instructions indicating how to “determine that the user is to enter into a vehicle ….” In particular, the Examiner finds that FP#3 is attempting to encompass a special purpose computer having special programming (i.e., an algorithm).
In other words, based upon the express wording within FP#3, the Examiner finds that to a POSITA, the claim language itself within FP#3 does not recite an algorithm for accomplishing the Function of FP#3.
Because the claimed “first processor circuit” does not contain sufficient structure for performing the entire Function of FP#3 without special programming (i.e., an algorithm), the Examiner concludes that FP#3 meets invocation Prong (C).
Because FP#3 meet’s the MPEP’s 3-Prong Analysis, the Examiner concludes that FP#3 invokes § 112(f).
d. Corresponding Structure for FP#3
Based upon a review of the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#3 to some corresponding structure found in the specification. The Original Disclosure at best states that the following is the corresponding structure;
Processing for certain embodiments of the vehicle settings adjustment system may be included in one or any combination of the vehicle processing unit 12, a cloud (e.g., one or more devices of the clouds 18 and/or 26), the driver wearable 22, the passenger wearable 30, the driver mobile device 24, the passenger mobile device 32, and/or the camera 34. For instance, user identification and/or user preferences (e.g., for vehicle parameter adjustments) may be achieved and/or stored, respectively, at any one or more of these devices based on sensed physiological parameters. Further, sensing of physiological parameters may be achieved via the mobile devices 24, 32, interior and exterior sensors 16, 14, respectively, camera 34, and/or the one or more sensors of the wearable devices 22, 30. However, in the interest of facilitating an understanding of operation of certain embodiments of a vehicle settings adjustment system and further in the interest of brevity, the description that follows focuses on the measurement of physiological parameters and any identification of the user using one or more sensors of the wearable devices 22 and/or 30, and determination of vehicle parameters (whether via access to pre-defined settings locally or remotely stored and/or without using an identity of the user) is described as being performed by the vehicle processing unit 12, with the understanding that variations to the described embodiments where these functions are implemented elsewhere among the various devices depicted in FIG. 1 are also contemplated and hence within the scope of the invention.
‘249 specification column 9 lines 26-53
This is still insufficient because the specification simply states that any of the elements of the system could process the information and does not have specific functions applied to specific processors as currently claimed.
Because the Original Disclosure fails to clearly link or associate the Function of FP#3 to some corresponding structure, claim 1 is indefinite under § 112(b). A § 112(b) rejection is set forth below for FP#3 in claim 1.
Functional Phrase #4 Claim 1
Functional Phrase #2 states:
wherein the sending of the identification of the user to the third processor circuit causes the third processor circuit to:
access at least one pre-defined user setting from a storage circuit based on the identification of the user; and
adjust at least one vehicle parameter based on the at least one pre-defined user setting
Functional Phrase #4 (“FP#4”) as recited in Claim 1.
Based upon he claimed language itself, the Examiner finds the function of FP#4 is:
access at least one pre-defined user setting from a storage circuit based on the identification of the user; and
adjust at least one vehicle parameter based on the at least one pre-defined user setting ….
(“Function of FP#4”) as recited in Claim 1.
The analysis with respect to FP#2 prongs A and B is applicable to FP#4.
Based upon the Original Disclosure and evidence of record, the Examiner finds that the Function of FP#4 is computer (i.e., software) implemented.
Based upon the express wording with FP#4 and evidence of record, the Examiner finds that to a POSITA, the claim language itself within FP#4 does not recite an algorithm for accomplishing the Function of FP#4 (i.e., “adjust at least one vehicle parameter based on the at least one pre-defined user setting ….” For at least this reason, the Examiner finds that an algorithm to perform the entire Function of FP#4 is not expressly recited in claim 1.
In other words, the claim language itself does not provide a step-by-step set of instructions indicating how to “adjust at least one vehicle parameter based on the at least one pre-defined user setting ….” In particular, the Examiner finds that FP#4 is attempting to encompass a special purpose computer having special programming.
Based upon a review of all evidence of record and the express wording within FP#4, the Examiner finds that although FP#4 expressly recites a “third processor circuit,” the FP#4 itself does not contain sufficient structure for performing the entire Function of FP#4 without the addition of special programming (i.e., algorithm(s)). In fact, the Examiner finds that FP#4 positively recites very little structure other than the claimed “third processor circuit.” In other words, the Examiner finds that FP#4 is attempting to encompass a special purpose computer having special programming.
Because the claimed “third processor circuit” does not contain sufficient structure (as defined by the CAFC) for performing the entire Function of FP#4 without special programming, the Examiner concludes that FP#4 meets invocation Prong (C).
Because FP#4 meet’s the MPEP’s 3-Prong Analysis, the Examiner concludes that FP#4 invokes § 112(f).
Because the Original Disclosure fails to clearly link or associate the Function of FP#4 to some corresponding structure, claim 1 is indefinite under § 112(b).
Functional Phrase #5 Claim 19
Functional Phrase #5 states:
wherein one of the first processor circuit and the second processor circuit is arranged to determine an identification of the user based on the at least one physiological parameter;
Functional Phrase #5 (“FP#5”) as recited in Claim 19.
Function of FP#5 states:
to determine an identification of the user based on the at least one physiological parameter;
Function of Functional Phrase #5 (“Function of FP#5”) as recited in Claim 19.
Based upon all evidence of record and with particular emphasis on the express wording within FP#5, the Examiner finds that to a POSITA, the claim language itself within FP#5 does not recite an algorithm for accomplishing the Function of FP#5 (i.e., “to determine an identification of the user based on the at least one physiological parameter ….” For at least this reason, the Examiner finds that an algorithm to perform the entire Function of FP#5 is not expressly recited in claim 1.
In other words, the claim language itself does not provide a step-by-step set of instructions indicating how to “to determine an identification of the user based on the at least one physiological parameter ….” In particular, the Examiner finds that FP#5 is attempting to encompass a special purpose computer having special programming.
Based upon a review of the FP#5, the Examiner finds that although FP#5 expressly recites a “one of the first processor circuit and the second processor circuit,” the phrase itself does not contain sufficient structure for performing the entire Function of FP#5 without the addition of special programming (i.e., algorithm(s)). In fact, the Examiner finds that FP#5 positively recites very little structure other than the claimed “first processor circuit and the second processor circuit.” In other words, the Examiner finds that FP#5 is attempting to encompass a special purpose computer having special programming.
Based upon the express wording within FP#5, the Examiner finds that to a POSITA, the claim language itself within FP#5 does not recite an algorithm for accomplishing the Function of FP#5.
Because the claimed “one of the first processor circuit and the second processor circuit” does not contain sufficient structure (as defined by the CAFC) for performing the entire Function of FP#5 without special programming, the Examiner concludes that FP#5 meets invocation Prong (C).
Because FP#5 meet’s the MPEP’s 3-Prong Analysis, the Examiner concludes that FP#5 invokes § 112(f).
Based upon a review of the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#5 to some corresponding structure found in the specification.
Because the Original Disclosure fails to clearly link or associate the Function of FP#5 to some corresponding structure, claim 19 is indefinite § 112(b).
Functional Phrase #6 Claim 25
Functional Phrase #6 states:
wherein one of the first processor circuit is arranged to:
determine an identification of the user based on the at least one physiological parameter; [and]
access the at least one pre-defined user setting from the storage circuit, based on the identification of the user ….
Functional Phrase #6 (“FP#6”) as recited in Claim 25.
Based upon the claim language, the function of FP#6 is:
to: determine an identification of the user based on the at least one physiological parameter;
[and to:] access the at least one pre-defined user setting from the storage circuit, based on the identification of the user ….
Function of Functional Phrase #6 (“Function of FP#6”) as recited in Claim 25.
The analysis with respect to FP#2 prongs A and B is applicable to FP#6.
Based upon all evidence of record and with particular emphasis on the express wording within FP#6, the Examiner finds that to a POSITA, the claim language itself within FP#6 does not recite an algorithm for accomplishing the Function of FP#6.
Because the claimed “first processor circuit” does not contain sufficient structure (as defined by the CAFC) for performing the entire Function of FP#5 without special programming, the Examiner concludes that FP#6 meets invocation Prong (C).
Because FP#6 meet’s the MPEP’s 3-Prong Analysis, the Examiner concludes that FP#6 invokes § 112(f).
Based upon a review of the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#6 to some corresponding structure found in the specification.
Because the Original Disclosure fails to clearly link or associate the Function of FP#6 to some corresponding structure, claim 25 is indefinite § 112(b).
Functional Phrase #7 Claim 25
Functional Phrase #7 states:
wherein sending the identification of the user and the at least one
pre-defined user setting from the second mobile device to the third processor circuit causes the vehicle to adjust at least one vehicle parameter based on the at least one pre-defined user setting and the identification
.
Functional Phrase #7 (“FP#7”) as recited in Claim 25.
Based upon the claim language, the function of FP#7 is:
causes the vehicle to adjust at least one vehicle parameter based on the at least one pre-defined user setting and the identification.
Function of Functional Phrase #7 (“Function of FP#7”) as recited in Claim 25.
The analysis with respect to FP#2 prongs A and B is applicable to FP#7.
Based upon all evidence of record and with particular emphasis on the express wording within FP#7, the Examiner finds that to a POSITA, the claim language itself within FP#6 does not recite an algorithm for accomplishing the Function of FP#7.
Because the claimed “third processor circuit” does not contain sufficient structure (as defined by the CAFC) for performing the entire Function of FP#7 without special programming, the Examiner concludes that FP#7 meets invocation Prong (C).
Because FP#7 meet’s the MPEP’s 3-Prong Analysis, the Examiner concludes that FP#7 invokes § 112(f).
Based upon a review of the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#7 to some corresponding structure found in the specification.
Based upon all evidence of record and with particular emphasis on the express wording within FP#7, the Examiner finds that to a POSITA, the claim language itself within FP#7 does not recite an algorithm for accomplishing the Function of FP#7.
Because the claimed “first processor circuit” does not contain sufficient structure (as defined by the CAFC) for performing the entire Function of FP#5 without special programming, the Examiner concludes that FP#6 meets invocation Prong (C).
Based upon a review of the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#6 to some corresponding structure found in the specification.
Because the Original Disclosure fails to clearly link or associate the Function of FP#7 to some corresponding structure, claim 25 is indefinite § 112(b).
Functional Phrase #8 Claim 31
Functional Phrase #11 states:
wherein the first processor circuit is arranged to:
determine an identification of the user based on the at least one physiological parameter;
Functional Phrase #8 (“FP#8”) as recited in Claim 31.
Based upon the claim language, the function of FP#8 is:
“to: determine an identification of the user based on the at least one physiological parameter;”
Functional Phrase #8 (“FP#8”) as recited in Claim 31.
Because the claimed “the first processor circuit” does not contain sufficient structure (as defined by the CAFC) for performing the entire Function of FP#8 without special programming, the Examiner concludes that FP#8 meets invocation Prong (C).
Based upon the express wording within FP#8, the Examiner finds that to a POSITA, the claim language itself within FP#8 does not recite an algorithm for accomplishing the Function of FP#8.
Based upon a review of the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#8 to some corresponding structure found in the specification.
Because the Original Disclosure fails to clearly link or associate the Function of FP#8 to some corresponding structure, claim 31 is indefinite § 112(b).
Functional Phrase #9 Claim 31
Functional Phrase #9 states:
wherein the third processor circuit is arranged to adjust at least one vehicle parameter based on the at least one pre-defined user setting and the identification.
Functional Phrase #9 (“FP#9”) as recited in Claim 31.
Based upon the claim language, the function of FP#9 is:
“to adjust at least one vehicle parameter based on the at least one pre-defined user setting and the identification;”
Functional Phrase #9 (“FP#9”) as recited in Claim 31.
Because the claimed “the third processor circuit” does not contain sufficient structure (as defined by the CAFC) for performing the entire Function of FP#8 without special programming, the Examiner concludes that FP#9 meets invocation Prong (C).
Based upon the express wording within FP#9, the Examiner finds that to a POSITA, the claim language itself within FP#9 does not recite an algorithm for accomplishing the Function of FP#9.
Based upon a review of the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#9 to some corresponding structure found in the specification.
Because the Original Disclosure fails to clearly link or associate the Function of FP#9 to some corresponding structure, claim 31 is indefinite § 112(b).
The Examiner finds that the analysis above with respect to FP#1-4 for the first, second, and third processors of claim 1 apply to FP#5-FP#13 and the analysis or the FP#1-4 for claims 1 is incorporated herein.
Because the Original Disclosure fails to clearly link or associate the Function of FP#5-13 to some corresponding structure, claims 19, 25 and 31are indefinite under § 112(b). A § 112(b) rejection is set forth below for claims 19, 25, and 31.
CLAIM REJECTIONS - 35 USC § 112 1ST PARAGRAPH
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.
Claims 1-15, 37-39, and 46-49 are rejected under 35 U.S.C. § 112(a), as failing to comply with the written description requirement.
New Matter
1. “mobile device” in claim 1 is “arranged to … cause the second mobile device to
Claims 1-10 and 12-15 are rejected under § 112(a) because these claims contain new matter.
The Original Disclosure does not disclose that the “mobile device” in claim 1 is “arranged to … cause the second mobile device to send the identification of the user to a third processor circuit when it is determined that the user is to enter into the vehicle ….”
2. “determine that the user is to enter into a vehicle”
Claims 1-15, 37, 38, 39, and 46-49 are rejected under § 112(a) because these claims contain new matter.
The Original Disclosure does not disclose “determin[ing] that the user is to enter into a vehicle ….” This function or method step is not disclosed.
Computer Implemented Functions – 35 U.S.C. § 112(a) Rejections
Claims 1-21, 25-27, and 31-54 are rejected under 35 U.S.C. § 112(a), as failing to comply with the written description requirement.
Claims 1-21, 25-27, and 31-54 recites computer-implemented functions including, among other limitations, “a first processor circuit”, “a second processor circuit” and a “a third processor circuit” perform the limitations of the claims.
Applicant(s) is/are respectfully reminded, for 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.” MPEP § 2161.01(I).
Applicant’s Original Disclosure does not describe an algorithm that performs the functions of FP#1-#13 as outlined above or in any of the independent method claims 11, 16, 34, 37, 40, 43, and 46. For example, the algorithm for “adjust at least one vehicle parameter based on at least one pre-defined user setting and the identification of the user” in claim 34 and the algorithm for “determining by the second mobile device that the user is to enter into the vehicle” as recited in claim 37 cannot be reasonably found in the Original Disclosure.
Applicant’s specification does not describe an algorithm that performs 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. For example, Applicant’s specification ‘249 defines the following;
Processing for certain embodiments of the vehicle settings adjustment system may be included in one or any combination of the vehicle processing unit 12, a cloud (e.g., one or more devices of the clouds 18 and/or 26), the driver wearable 22, the passenger wearable 30, the driver mobile device 24, the passenger mobile device 32, and/or the camera 34. For instance, user identification and/or user preferences (e.g., for vehicle parameter adjustments) may be achieved and/or stored, respectively, at any one or more of these devices based on sensed physiological parameters. Further, sensing of physiological parameters may be achieved via the mobile devices 24, 32, interior and exterior sensors 16, 14, respectively, camera 34, and/or the one or more sensors of the wearable devices 22, 30. However, in the interest of facilitating an understanding of operation of certain embodiments of a vehicle settings adjustment system and further in the interest of brevity, the description that follows focuses on the measurement of physiological parameters and any identification of the user using one or more sensors of the wearable devices 22 and/or 30, and determination of vehicle parameters (whether via access to pre-defined settings locally or remotely stored and/or without using an identity of the user) is described as being performed by the vehicle processing unit 12, with the understanding that variations to the described embodiments where these functions are implemented elsewhere among the various devices depicted in FIG. 1 are also contemplated and hence within the scope of the invention.
‘249 specification column 9 lines 26-53.
However, such disclosure is not an algorithm (e.g., the necessary steps and/or flowcharts) that performs the claimed function in sufficient detail suc