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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/05/2025 has been entered.
Status of Claims
This office action is in response to Applicant Amendments and Remarks filed on 11/05/2025, for application number 18/126,675 filed on 03/27/2023, in which claims 1-2 and 4-9 were previously presented for examination.
Claim 1 is amended.
Claims 1-2 and 4-9 are currently pending in this application.
Response to Arguments
Applicant Amendments and Remarks filed on 11/05/2025 have been fully considered and are addressed as follows:
Regarding the Claim Objections: The objections are withdrawn, as the amended claim has properly addressed the informalities recited in the Final office action.
Regarding the Claim Rejections under 35 USC § 112(b): The rejections are withdrawn, as the amended claim properly addressed the rejection recited in the Final office action.
Regarding the Claim Rejections under 35 USC § 101: With respect to the previous claim rejections under 35 U.S.C. § 101, Applicant has amended the independent claim and the amendment has changed the scope of the original claims and the Office has supplied new grounds for rejection attached below in the NON-FINAL office action.
The Office notes that the arguments in Applicant Amendments and Remarks filed on 11/05/2025 are not persuasive.
Initially, Applicant states that “as discussed in detail in the previously filed Amendment of June 20, 2025, the claimed invention cannot be performed in human mind” (Applicant Amendments and Remarks filed on 11/05/2025 at page 11).
As stated in the Final office action dated 07/11/2025, the claims recite an abstract idea because comparing numerical values of collected data can be done in the human mind, or by using a pen and paper. Applicant’s conclusive statement to the issue without further explanation cannot be considered as persuasive.
Therefore, the claims recite an abstract idea.
Further, Applicant states that “Independent claim 1 is thus limited to a specific implementation of a technological improvement to simulation device that determines whether one or more of plurality of electric vehicles of different models are suitable for replacing an internal combustion engine vehicle based on the travel information - for example, an average speed, an average value of accelerator opening, an average value of depression amounts of brake pedal, a total travel distance, and a frequency of changing temperature setting of an air conditioner - of the internal combustion engine vehicle. Independent claim 1 specifically explain how the result is achieved thereby satisfying step one of Alice test making it patent eligible” (Applicant Amendments and Remarks filed on 11/05/2025 at page 11).
It appears that Applicant’s argument is associated with an improvement to the functioning of a computer or to any other technology or technical field at Step 2A Prong Two and Step 2B.
MPEP § 2106.05(a)(I) states that “the claim was not simply the addition of general purpose computers added post-hoc to an abstract idea, but a specific implementation of a solution to a problem in the software arts” Enfish, LLC v. Microsoft Corp.,822 F.3d at 1339, 118 USPQ2d at 1691.
Applicant appears to focus on the “specific implementation” of a solution. However, the specificity of the collected data is not what the MPEP and the courts recognize as improvement to the functioning of a computer. The specific data recited in the claim does not improve computer functionality or capability, but rather the claims invoke a computer merely as a tool to process the collected data.
Moreover, MPEP § 2106.05(a)(I) provides examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality. The examples include “viii. Arranging transactional information on a graphical user interface in a manner that assists traders in processing information more quickly” Trading Technologies v. IBG LLC, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019).
The claim as a whole recites, under the broadest reasonable interpretation, collecting data, comparing data, and displaying data. The claimed limitation aligns with the example “viii. Arranging transactional information on a graphical user interface in a manner that assists traders in processing information more quickly” in MPEP § 2106.05(a)(I), which is indicated as not sufficient to show an improvement in computer-functionality. Additionally, “gathering and analyzing information using conventional techniques and displaying the result” has been found to be insufficient to show an improvement to technology. See MPEP § 2106.05(a)(II).
As such, the claim as a whole does not recite additional elements that amount to significantly more than the judicial exception.
Therefore, the rejections are maintained.
Non-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 § 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 1-2 and 4-9 are rejected under 35 U.S.C. 101.
Claims 1-2 and 4-9 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.
Claim 1 recites an abstract idea in the form of mental processes without significantly more. The claims recite determining suitability based on a comparison result between measurement values.
Regarding eligibility step 1, the claimed invention of claim 1 falls into at least one of the enumerated categories of machines. Therefore, claim 1 passes step 1.
Proceeding to eligibility step 2A, the claimed invention of claim 1 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 claim 1 is directed to processes determining suitability by comparing information 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 an information terminal or step by step processes of comparing the accelerator opening average value to the reference values does not take the claim limitation out of the mental processes grouping. Although the steps refer to each values to be compared, comparing between numerical values to determine whether a certain value falls within a specific range can be done in the human mind, or by a human using a pen and paper. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application. In particular, claim 1 recites an additional element, “an information terminal of the user, said information terminal having an input screen.” Claim 1 further recites “wherein when the user touches an icon on the information terminal corresponding to a next electric vehicle model, a screen of the information terminal displaying determined suitability of a first specific electric vehicle model is switched to a screen showing determined suitability of a next specific electric vehicle model, and to a screen showing determined suitability of another next specific electric vehicle model.”
Although claim 1 recites the user interaction of touching the icon to display determined suitability on the information terminal, displaying data is insignificant extra solution activity.
Additionally, there is no nexus between the information terminal display and the user interaction. The user interaction only includes touching the icon, and interaction causes the display to show determined suitability. However, no further interaction is recited in the claims as to what triggers the screen to be switched to show determined suitability of different models.
Therefore, the information terminal in the step is recited at a high-level of generality (i.e., as a generic interface performing general function of outputting data) such that it amounts to no more than insignificant extra solution activity of data outputting.
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.
Proceeding to eligibility step 2B, claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above, the additional elements of “an information terminal of the user, said information terminal having an input screen” and “wherein when the user touches an icon on the information terminal corresponding to a next electric vehicle model, a screen of the information terminal displaying determined suitability of a first specific electric vehicle model is switched to a screen showing determined suitability of a next specific electric vehicle model, and to a screen showing determined suitability of another next specific electric vehicle model” amount to no more than insignificant extra solution activity of data outputting. Insignificant data outputting cannot provide an inventive concept.
Initially, the additional elements are well-understood, routine, conventional activity of browsing information on a display by touching icons.
Claim 1 further recites that the additional elements improve “an efficiency of evaluating the determined suitability of the plurality of electric vehicles based on the travel information of the internal combustion engine vehicle.”
However, there is no nexus between the “determined suitability” and the “vehicle-specific evaluation value.” The claim language suggests that the suitability may be determined independent from the vehicle-specific evaluation value without a nexus. In the claim, “vehicle-specific evaluation value is determined based on specific data and comparison between the specific data. However, there is no connection between the analyzed data and the determination of the suitability. Therefore, the claimed invention does not necessarily provides the alleged efficiency of evaluating the determined suitability based on the travel information of the internal combustion engine vehicle (i.e., the specific data). Therefore, the claimed invention may not provide the alleged improvement.
Moreover, MPEP § 2106.05(a)(I) provides examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality. The examples include “viii. Arranging transactional information on a graphical user interface in a manner that assists traders in processing information more quickly” Trading Technologies v. IBG LLC, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019).
The claim as a whole recites, under the broadest reasonable interpretation, collecting data, comparing data, and displaying data. The claimed limitation aligns with the example “viii. Arranging transactional information on a graphical user interface in a manner that assists traders in processing information more quickly” in MPEP § 2106.05(a)(I), which is indicated as not sufficient to show an improvement in computer-functionality.
Therefore, the additional elements are not sufficient to amount to significantly more than the judicial exception.
Therefore, claim 1 is not patent eligible.
Dependent claims 2 and 4-9, 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 claim 1.
Conclusion
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/JISUN CHOI/Examiner, Art Unit 3666
/SCOTT A BROWNE/Supervisory Patent Examiner, Art Unit 3666