Detailed Office 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 .
This is a non-final Office Action on the merits. Claims 21-46 are currently pending and are addressed below.
Priority
Acknowledgment is made of applicant's claim priority for provisional applications filed 03/07/2019 and 07/16/2019.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/15/2025 has been entered.
Response to Arguments
Applicant’s amendments and/or arguments with respect to the rejection of claims 21-46 under 35 USC 103 as set forth in the office action of 12/15/2025 have been considered and are found persuasive by the examiner. Therefore the rejections have been withdrawn.
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 21-46 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The analysis of the claims’ subject matter eligibility will follow the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50-57 (January 7, 2019) (“2019 PEG”).
101 Analysis - With respect to Claim 1
Claims 21, 39, 40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
101 Analysis - Step 1:
Claim 21 is directed towards a non-transitory computer readable medium which is directed to the statutory category of a manufacture. Claim 39 is directed towards a server which is directed to the statutory category of a machine. Claim 40 is directed towards a method which is directed towards the statutory category of a process. Therefore Claims 21, 39, and 40 are within at least one of the four statutory categories.
101 Analysis- Step 2A Prong One:
Regarding Prong One of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether they recite subject matter that falls within one of the following groups of abstract ideas: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental process.
Independent claim 40 includes limitations that recite an abstract idea (emphasized below) and will be used as a representative claim for the remainder of the 101 rejection.
Claim 40 recites, inter alai:
“A computer-implemented method for aligning navigation information from a plurality of vehicles, the method comprising:
receiving first navigational information collected by a first vehicle;
receiving second navigational information collected by a second vehicle, wherein the first navigational information and the second navigational information are associated with a road segment;
dividing the first navigational information into at least a first portion and a second portion, and divide the second navigational information into at least a first portion and a second portion, wherein:
the first portion of the first navigational information and the first portion of the second navigational information represent a common first section of the road segment, and the second portion of the first navigational information and the second portion of the second navigational information represent a common second section of the road segment, and
the first portion of the second navigational information and the second portion of the second navigational information and share at least a common point, the common point being positioned at ends of the first portion of the second navigational information and the second portion of the second navigational information closest to each other wherein the common point links the first portion of the second navigational information and the second portion of the second navigational information and represents a point around which the second portion of the second navigational information is rotated relative to the first portion of the second navigational information for aligning navigational information;
aligning the first portion of the first navigational information with the first portion of the second navigational information, and align the second portion of the first navigational information with the second portion of the second navigational information, wherein aligning the second portion of the first navigational information with the second portion of the second navigation information includes rotating the second portion of the second navigational information relative to the first portion of the second navigational information, such that the second portion of the second navigational information is rotated about the common point relative to the first portion of the second navigational information;
generating a road model based on the aligned portions; and
sending at least a portion of the road model to one or more vehicles for use in navigating the one or more vehicles along the road segment.”
The examiner submits that the foregoing bolded limitation(s) constitute a “mental process” because under its broadest reasonable interpretation, the claim covers performance of the limitation in the human mind.
For example, “dividing”, “aligning” and “generating” in the context of this claim, all encompass a person looking at available data and forming a simple judgement (determination, analysis, comparison, etc.) either manually or using a pen and paper. Accordingly, the claim recites at least one abstract idea. The examiner notes that under MPEP 2106.04(a)(2)(III), the courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same).
As drafted, the above claims, under their broadest reasonable interpretation, cover mental processes performed in the human mind (including an observation, evaluation, judgement, opinion), that are merely completed via generic computer components. Accordingly, the claims recite an abstract idea.
Step 2A Prong Two Analysis:
Regarding Prong Two of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether the claim, as a whole, integrates the abstract idea into a practical application. As noted in the 2019 PEG, it must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application”.
In the present case, the additional limitations beyond the above-noted abstract idea are as follows (where the underlined portions are the “additional limitations” while the bolded portions continue to represent the “abstract idea”):
Claim 40 recites, inter alai:
“A computer-implemented method for aligning navigation information from a plurality of vehicles, the method comprising:
receiving first navigational information collected by a first vehicle;
receiving second navigational information collected by a second vehicle, wherein the first navigational information and the second navigational information are associated with a road segment;
dividing the first navigational information into at least a first portion and a second portion, and divide the second navigational information into at least a first portion and a second portion, wherein:
the first portion of the first navigational information and the first portion of the second navigational information represent a common first section of the road segment, and the second portion of the first navigational information and the second portion of the second navigational information represent a common second section of the road segment, and
the first portion of the second navigational information and the second portion of the second navigational information and share at least a common point, the common point being positioned at ends of the first portion of the second navigational information and the second portion of the second navigational information closest to each other wherein the common point links the first portion of the second navigational information and the second portion of the second navigational information and represents a point around which the second portion of the second navigational information is rotated relative to the first portion of the second navigational information for aligning navigational information;
aligning the first portion of the first navigational information with the first portion of the second navigational information, and align the second portion of the first navigational information with the second portion of the second navigational information, wherein aligning the second portion of the first navigational information with the second portion of the second navigation information includes rotating the second portion of the second navigational information relative to the first portion of the second navigational information, such that the second portion of the second navigational information is rotated about the common point relative to the first portion of the second navigational information;
generating a road model based on the aligned portions; and
sending at least a portion of the road model to one or more vehicles for use in navigating the one or more vehicles along the road segment.”
For the following reason(s), the examiner submits that the above identified additional limitations do not integrate the above-noted abstract idea into a practical application.
Regarding the additional limitation of “receiving…” and “sending…”, these limitations merely describe the sending and receiving of data which is in insignificant extra solution activity. See MPEP § 2106.05(g).
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitation(s) as an ordered combination or as a whole, the limitation(s) add nothing that is not already present when looking at the elements taken individually. Accordingly, the additional limitation(s) do/does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Step 2B Analysis:
The claims do not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using generic computer components to perform the abstract idea amounts 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. Further, the act of collecting data and displaying data amounts to no more than merely storing and displaying information of the exception and thus is an extra-solution activity. The claims are not patent eligible.
Regarding dependent claims 22-38 and 41-46, no claim further adds a limitation that introduces any practical applications to the claimed invention, the dependent claims merely add more mental process, mathematical concepts, and post-solution activities and are thus not patent eligible.
Therefore, Claims 21-46 are ineligible under 35 USC §101.
Allowable Subject Matter
Claims 21-46 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 as set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH A YANOSKA whose telephone number is (703)756-5891. The examiner can normally be reached M-F 9:00am to 5:00pm (Pacific Time).
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/JOSEPH ANDERSON YANOSKA/Examiner, Art Unit 3664
/RACHID BENDIDI/Supervisory Patent Examiner, Art Unit 3664