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 .
Status of Claims
This office action is in response to Applicant Amendments and Remarks filed on 06/12/2025, for application number 18/126,131 filed on 03/24/2023, in which claims 1-11 were originally presented for examination.
Claims 1 and 3-11 are amended.
Claim 2 is canceled.
Claims 12-16 are new.
Claims 1 and 3-16 are pending and will be examined
Response to Arguments
Applicant Amendments and Remarks filed on 06/12/2025 in response to the Non-Final office action mailed on 02/12/2025 have been fully considered and are addressed as follows:
Regarding the Specification Objections: The objections are withdrawn, as the amendment to the Title has properly addressed the informalities recited in the Non-Final office action.
Regarding the Claim Objections: The objections are withdrawn, as the Applicant’s arguments are found persuasive.
Regarding the Claim Rejections under 35 U.S.C. § 112(b): The rejections of claims 1-11 for being indefinite are withdrawn, as the amended claims 1, 3, 10, and 11 have properly addressed the rejections recited in the Non-Final office action. Accordingly, the rejections of claims 1, 3, 10, and 11 and dependent claims 4-9 are withdrawn. The rejections of claim 2 for being indefinite are withdrawn, as claim 2 has been canceled.
Regarding the Claim Rejections under 35 U.S.C. § 101: With respect to the previous claim rejections under 35 U.S.C. § 101, Applicant has amended the independent claims and these amendments have changed the scope of the claims, and the Office has supplied new grounds for rejection attached below in the FINAL office action and therefore the prior arguments are considered moot.
Regarding the Claim Rejections under 35 U.S.C. § 103: With respect to the previous claim rejections under 35 U.S.C. § 103, Applicant has amended the independent claims and these amendments have properly addressed the rejections recited in the Non-Final office action. Accordingly, the rejections under 35 U.S.C. § 103 are withdrawn.
FINAL OFFICE ACTION
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – 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.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 112(a)
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 and 3-16 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 claims contain 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.
Independent claims 1 and 10 recite “controlling at least one of the plurality of electric vehicles in accordance with the operation plan” and claim 11 similarly recites “control at least one of the plurality of electric vehicles in accordance with the operation plan.” However, the limitations are not described in the specification.
The specification as originally filed states “The drive operation unit 11 receives a drive operation of the electric vehicle 1 by the driver. The drive operation unit 11 includes, for example, a steering wheel, a shift lever, an accelerator pedal, and a brake pedal. Note that the electric vehicle 1 may be an autonomous car. In a case where the electric vehicle 1 is an autonomous car, an autonomous system controls drive instead of the drive operation unit 11” in paragraph [0043], “The drive unit 12 is, for example, an inverter, an electric motor, and a transmission, and moves the electric vehicle 1 under the control of a drive control unit 151” in paragraph [0044], and “The drive control unit 151 controls the drive unit 12 in response to a drive operation of the driver by the drive operation unit 11 to move the electric vehicle 1” in paragraph [0048]. At most, the specification states that the vehicle is controlled in response to the drive operation of the driver. Further, the specification states “The route assignment unit 244 assigns a plurality of operation routes determined in advance to the plurality of electric vehicles 1” in paragraph [0074]. At most, the specification states that the operation routes are assigned to the vehicles.
However, the specification does not state anything regarding how the vehicles are controlled based on the operation plan. For example, are the vehicles controlled to receive the assigned operation routes, are the vehicles controlled to develop a driving plan, or are the vehicles controlled by the driver who is instructed to follow the assigned operation routes? As such, nothing in the specification discloses any controlling of the vehicles in accordance with the operation plan.
Therefore, the specification as originally filed does not describe how the electric vehicle is controlled in accordance with the operation plan, and thus claims 1, 10, and 11 fail to comply with the written description requirement.
Claims 3-9 and 12-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, , as being dependent on the rejected claims and for failing to cure the deficiencies listed above.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 and 3-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1, 10, and 11 recite an abstract idea in the form of mental processes without significantly more. The claims recite acquiring information, predicting a replacement time, and creating an operation plan.
Regarding eligibility step 1, the claimed invention of claims 1, 10, and 11 falls into at least one of the enumerated categories of apparatuses and processes. Therefore, claims 1, 10, and 11 pass step 1.
Proceeding to eligibility step 2A, the claimed invention of claims 1, 10, and 11 is directed to a judicial exception, such as an abstract idea. If a claim limitation under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the mental process grouping of an abstract idea. The claimed invention of claims 1, 10, and 11 is directed to processes that acquire information, predict a replacement time, and create an operation plan using generic computer components which can be performed in the human mind, or by a human using a pen and paper. The mere nominal recitation of a generic computer/generic computer components does not take the claim limitation out of the mental processes grouping. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application. In particular, claims 1, 10, and 11 only recites one additional element of using generic computer components to perform acquiring, predicting, and creating steps. The generic computer components in the step are recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using the generic computer components. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Also, the limitation of “controlling at least one of the plurality of electric vehicles in accordance with the operation plan” as recited in claim 1, and similarly recited in claims 10 and 11 does not integrate the abstract idea into a practical application because the limitation does not impose meaningful limits on practicing the abstract idea. The limitation does not specify how the vehicle is controlled, and how the operation plan is used in controlling the vehicle. For example, does the vehicle develop a driving plan in accordance with the operation plan? Specifically, any action taken by the vehicle being controlled is not recited in the claims. Therefore, the additional elements of using generic computer components to perform the controlling step amounts to no more than mere instructions to apply the exception using the generic computer components. Mere instructions to apply the exception using the generic computer components cannot provide an inventive concept.
Moreover, the limitation of “wherein, in the creating of the operation plan, the operation plan is created such that a first electric vehicle having a first replacement time that is later than the periodic inspection and maintenance time of the first vehicle is assigned a first route having a first operation distance, and a second electric vehicle having a second replacement time that is earlier than the periodic inspection and maintenance time of the second vehicle is assigned a second route having a second operation distance shorter than the first operation distance” as recited in claim 1, and similarly recited in claims 10 and 11 does not specify how the operation plan is utilized in controlling the vehicles. Therefore, the limitation does not integrate the abstract idea into a practical application because it does not impose meaningful limits on practicing the abstract idea.
Proceeding to eligibility step 2B, claims 1, 10, and 11 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the additional elements of using generic computer components to perform acquiring, predicting, controlling, and creating steps amounts to no more than mere instructions to apply the exception using the generic computer components. Mere instructions to apply the exception using the generic computer components cannot provide an inventive concept.
Therefore, claims 1, 10, and 11 are not patent eligible.
Dependent claims 3-9 and 12-16, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea. The additional elements, if any, in the dependent claims are not sufficient to amount to significantly more than the judicial exception for the same reasons as with claims 1, 10, and 11.
Office Note 1: Claim 12 recites “wherein the at least one of the plurality of electric vehicles which is controlled in accordance with the operation plan is an autonomous vehicle.” The limitation does not impose meaningful limits on practicing the abstract idea because merely reciting to “autonomous vehicle” does not impose meaningful limits without further specifying the level of driving automation, how the autonomous vehicle is controlled, or how the operation plan is utilized in controlling the autonomous vehicle. For example, does the autonomous vehicle develop a driving plan in accordance with the operation plan? Specifically, any action taken by the autonomous vehicle being controlled is not recited in the claim. Further, the limitation is not sufficient to amount to significantly more than the judicial exception because mere instructions to apply the exception using the generic computer components cannot provide an inventive concept. Therefore, claim 12 is not patent eligible.
Office Note 2: Claim 12 recites “at least one of the plurality of electric vehicles … is an autonomous vehicle.” Under the doctrine of claim differentiation, the limitation “at least one of the plurality of electric vehicles” in claim 1 should be interpreted to include manually driven vehicles (i.e., non-autonomous vehicles) since each claim should have a different scope. The interpretation of the limitation of claim 1 under the doctrine of claim differentiation further supports the above stated patent ineligibility of claim 1 because the limitation of claim 1 would require the operation plan to be implemented by drivers in human mind to control the vehicles. Therefore, claim 1 is not patent eligible.
Conclusion
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 JISUN CHOI whose telephone number is (571)270-0710. The examiner can normally be reached Mon-Fri, 9:00 AM - 5:00 PM.
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, Scott Browne can be reached on (571)270-0151. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JISUN CHOI/Examiner, Art Unit 3666
/SCOTT A BROWNE/Supervisory Patent Examiner, Art Unit 3666
Prosecution Insights