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 .
Applicant’s Reply
Applicant's response of 07/08/25 has been entered. The examiner will address applicant's remarks at the end of this 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, 5-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims recite a system, a method, and a non-transitory computer readable medium; therefore, the claims pass step 1 of the eligibility analysis.
For step 2A, the claim(s) recite(s) an abstract idea of obtaining information from a user about a destination for an electric vehicle, and selecting a battery that is to be used to a vehicle and where the battery is rented to the user. This is considered to be a certain method of organizing human activities that is allocating a resource for rent.
Using claim 1 as a representative example that is applicable to claims 8 and 9, the abstract idea is defined by the elements of:
acquire information on a destination of the electrified vehicle
estimate an energy required for the electrified vehicle to reach the destination by estimating the energy required based on each travel route to the destination using big data,
the big data being a collection of a plurality of pieces of data on a relationship between a traveling state and traveling environment of the electrified vehicle and power required for traveling,
calculate a travel route that requires a lowest power consumption among each travel route to the destination,
uses as input data the big data to include a distance to the destination, road conditions, traffic conditions of each travel route, information on the traveling environment including a temperature and a weather of each travel route, and information based on an obtained vehicle state of the electrified vehicle including a carried load weight and tire pressures to estimate a power consumption when the electrified vehicle travels along each travel route,
estimate the travel route to the destination that requires less power consumption based on the big data, and
estimate the required energy when the electrified vehicle travels along the travel route that requires the less power consumption; and
automatically select a battery to be used by the electrified vehicle from the plurality of batteries based on the estimated required energy and whose remaining capacity of the battery is appropriate for the energy required for the electrified vehicle
The above limitations are reciting a process of obtaining information and analyzing the information to select a battery to be rented to a user. While the claim has been amended to delete a reference to the battery being rented, the scope still includes the situation where the batteries are being rented, see claim 2 for example that still refers to the rental aspect to the invention. The act of using data/information to make selections about a proper item to rent in the form of a battery, is considered to be a fundamental economic practice that is allocating a rental item. When renting an item such as an electric vehicle, information is used to determine what specific vehicle to rent based on a state of charge for the vehicle (akin to a combustion engine and the level of fuel in the tank). When one is renting a combustion engine vehicle, information is used to determine what vehicle to allocate to the user. The point the examiner is trying t to make is that deciding what rental item to allocate to a user based on information such as their destination and information about the route, etc., is part of the act of renting and is defining a certain method of organizing human activities. The claimed invention is
collecting information, analyzing the information, and outputting a result. This represents an abstract idea of allocating an item to rent by analyzing information and making a selection.
The examiner also notes that the claimed steps can also be performed mentally by a person who is using obtained data to mentally determine what battery to rent based on the estimated required energy to make a trip, etc.. This is the same as mentally noting that for a user to take a 400 mile trip, they cannot get there with a vehicle that will only get them 20 miles due to the battery, or for a combination vehicle and the range they can obtain from a tank of gas. While the claim recites the data that is used in the analysis to select a battery, nothing is claimed about how the analysis occurs such that it could not be performed mentally by a person. The claimed elements are first and foremost defining a certain method of organizing human activities type of abstract idea, that just happens to also be capable of being performed mentally by a person.
For claim 1, the additional elements are the server having a processor that is configured to perform the steps that define the abstract idea, and the recitation to using artificial intelligence to estimate the energy required for the electric vehicle to travel to the destination.
For claim 8, the only additional element claimed is the use of artificial intelligence to estimate the energy required for the electric vehicle to travel to the destination. The acquiring of the information on the destination, the estimating of the travel route and the selecting of the battery are steps that are broadly recited and not tied to any technology at all.
For claim 9, the additional element is the recitation to the non-transitory computer readable medium and the use of artificial intelligence.
For claims 1, 8, 9, this judicial exception is not integrated into a practical application (2nd prong of eligibility test for step 2A) because the additional elements of the claim when considered individually and in combination with the claim as a whole, amount to the use of a computing device or a non-transitory medium (hard drive as an example), and the use of artificial intelligence (recited at a high level of generality) that are being used as a tool to execute the abstract idea, see MPEP 2106.05(f). With respect to the use of artificial intelligence, this requires a computer. The claimed elements of the processor and the use of artificial intelligence amounts to simply instructing one to practice the abstract idea by using a generically recited computing device that executes instructions to perform the steps that define the abstract idea and by linking the execution of the abstract idea to the particular technological environment which is artificial intelligence. See MPEP 2106.05(f) and (h) in this regard. The server with a processor and the link to use of artificial intelligence is not sufficient to provide for more than a general instruction for one to “apply it” using a processor and artificial intelligence. This is indicative of the fact that the claim has not integrated the abstract idea into a practical application and therefore the claim is found to be directed to the abstract idea identified by the examiner.
For step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they do not amount to more than simply instructing one to practice the abstract idea by using a generically recited computing device and the use of artificial intelligence to perform steps that define the abstract idea. The claimed elements of the processor and the use of artificial intelligence amounts to simply instructing one to practice the abstract idea by using a generically recited computing device that executes instructions to perform the steps that define the abstract idea and by linking the execution of the abstract idea to the particular technological environment which is artificial intelligence. See MPEP 2106.05(f) and (h) in this regard.
The claims 1, 8, 9, do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claim 2, the claimed manner of selecting the battery is a further recitation to more about the abstract idea as was addressed for claim 1. The claimed plurality of batteries are considered to be positively recited as being part of the claimed system. The batteries are considered to be an additional element that is claiming the item to be rented, where the batteries are generic in nature. This is considered to be a field of use limitation that is claiming two batteries for rent. The batteries are generically recited and are nothing more than the item being rented; they are not actually used by the system in any manner. For this reason the recitation to the batteries is considered to be field of use limitation that does not provided for integration into a practical application or significantly more. See MPEP 2106.05(h). The claim is not found to be eligible.
For claims 3, 4, the claimed manner in which the estimation is being made is considered to be part of the abstract idea. Estimating the energy based on the claimed data is something that is part of the abstract idea, and is something that a person can perform mentally. No further additional element is claimed for consideration. The estimation unit has been treated in the same manner that was set forth for claim 1. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claim 5, claiming that the destination has a controlled area with an entrance and an exit is considered to be part of the abstract idea. This is just describing where a user wants to go, so that a selection of a battery can be made. The claimed estimation and selection steps are part of the abstract idea as was already addressed for claim 1. The only further additional element claimed is the vehicle that is a hybrid electric vehicle with an engine. Similar to claim 2, the vehicle claims is generic in nature and is considered to be a field of use limitation that is defining the type of vehicle that the claimed system/method are to be used with. For this reason the recitation to the batteries is considered to be field of use limitation that does not provided for integration into a practical application or significantly more. See MPEP 2106.05(h). The claim is not found to be eligible.
For claims 6, 7, the selection step of selecting a towable battery trailer or selecting based on energy for batteries to be loaded on the electrified vehicle, are elements that are part of the abstract idea. This is just making another selection, and is something that a person can perform mentally. No further additional element is claimed for consideration. The selection unit has been treated in the same manner that was set forth for claim 1. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
Response to arguments
The comments regarding the invocation of 112f are noted. In view of the amendment to the claims there is no longer any language that is found to be invoking 112f. This claim interpretation has been withdrawn.
The traversal of the 35 USC 101 rejection is not persuasive. On page 9 of the reply the applicant argues that the claims do not recite a judicial exception. The applicant argues that the claims include recitations to the system for providing a battery to a vehicle. The examiner notes that the claims do not provide a battery for a vehicle because the claims do nothing more than to select a battery for a vehicle. The applicant provides a repeat of the claimed subject matter and argues that the claims recite an improvement of providing one of a plurality of batteries to an electric vehicle. The applicant argues that this is not a certain method of organizing human activities. Other than stating that the claims are not reciting an abstract idea that is a certain method of organizing human activities, the applicant does not explain this position beyond a general allegation. In what way is technology being improved by the claimed invention? The claims are reciting the collecting of information, analyzing the information and using the analysis to make a selection of a battery that is to be rented to a user. For the reasons set forth in the 101 rejection of record, this is considered to be reciting an abstract idea.
The applicant argues on pages 10-11 that the claims do not recite a method of organizing human activities when the claims are viewed as a whole. In reply the examiner notes that the claims and their respective limitations have been considered as a whole when assessing the eligibility of the claims. The argument to the contrary is not persuasive.
On page 11 the applicant argues that the claims recite making an estimation and acquire information which is transforming data and improving the providing of a battery to a vehicle. With respect to the argument about improving the providing of a battery to a vehicle, this is not persuasive for the same reasons that have already been addressed. This is more of a general allegation than a reasoned argument because nothing is explained about what the alleged improvement is. How is technology being improved? The applicant is repeating the same argument that was made for step 2A, which is still not found to be persuasive. With respect to a data transformation and arguing the claims transform data and that makes the claims eligible, data itself is not eligible to be argued for the transformation factor to claim eligibility. This argument is not persuasive. From MPEP 2106.05(c):
An "article" includes a physical object or substance. The physical object or substance must be particular, meaning it can be specifically identified. "Transformation" of an article means that the "article" has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article. A new or different function or use can be evidence that an article has been transformed. Purely mental processes in which thoughts or human based actions are "changed" are not considered an eligible transformation. For data, mere "manipulation of basic mathematical constructs [i.e.,] the paradigmatic ‘abstract idea,’" has not been deemed a transformation. CyberSource v. Retail Decisions, 654 F.3d 1366, 1372 n.2, 99 USPQ2d 1690, 1695 n.2 (Fed. Cir. 2011) (quoting In re Warmerdam, 33 F.3d 1354, 1355, 1360, 31 USPQ2d 1754, 1755, 1759 (Fed. Cir. 1994))
The data of the claims in the form of the information that is analyzed to make the battery selection is not being transformed, and even if it were to be considered as transformed, data is not an article within the meaning of an article being transformed from one state to another as is explained in MP P 2106.05(c).
On page 11 the applicant argues the 2nd prong and argues that the claims are integrated into a practical application. The applicant again argues that the claims are transforming data and are providing an improvement to providing an electric vehicle with one of a plurality of batteries that supply power to the vehicle to select a battery to be used. For reasons already addressed, these arguments are not persuasive. See immediately above.
On page 11-12 the applicant refers to a part of the claim that is estimating the energy required to allow the vehicle to reach the destination, and argues that the claims recite a judicial exception in some other meaningful way beyond generally linking the use of the exception to a particular technological environment. This is not persuasive because the claims are doing nothing more than simply instructing one to practice the abstract idea by using a generically recited computing device (server with a processor) that executes instructions to perform the steps that define the abstract idea and by linking the execution of the abstract idea to the particular technological environment which is artificial intelligence. The use of artificial intelligence requires a computer and is a link to a particular technological environment, which amounts to an instruction for one to use a computer to perform the steps that define the abstract idea, where the computer is being used as a tool to execute the abstract idea. See MPEP 2106.05(f) and (h) in this regard. The server with a processor and the link to use of artificial intelligence is not sufficient to provide for more than a general instruction for one to “apply it” using a processor and artificial intelligence. The argument is not persuasive.
On page 13 the applicant argues step 2B. The applicant argues on page 13 that the combination of elements taken individually and in combination amount to significantly more. On page 14 the applicant generally argues that the claims are eligible and recite an inventive concept. The applicant argues that the claims are transforming data and are providing an improvement to transforming data and providing a batter to an electric vehicle. This is the same argument that has been made by the applicant more than once on pages 9-13. This argument is not persuasive for the same reasons previously set forth by the examiner, to which the applicant is referred. The claimed data and the data analysis occurring in the claims and that defines the abstract idea, is not reciting an eligible type of transformation of an article as this term is defined in the MPEP. This argument is still not found to be persuasive. With respect to the argument about the system being for providing a battery to a vehicle, the examiner again notes that the claims do not provide a battery for a vehicle because the claims do nothing more than to select a battery for a vehicle. This aspect of the argument is not persuasive for the same reasons already addressed.
On page 15 the applicant argues that the claims recite significantly more because they recite a non-conventional and non-generic arrangement that provides for a technical improvement in the art, with a reference to Bascom. The applicant summarizes what is claimed in total with a conclusion that it amounts to significantly more. This is not persuasive. The additional elements of the claim do not result in an improvement to technology because the result of the claim is just that of selecting a battery for use. There is nothing claimed that is non-conventional as the use of a computer (server) and the link to artificial intelligence is an instruction for one to use a computer and is a link to the field of AI in general, which is not considered to be non-conventional and non-generic when the issue at hand is the mere computer implementation of an abstract idea. The argument is not persuasive as the rationale set forth in MPEP 2106.05(f) and (h) is directly applicable to the claimed invention. The argument is not persuasive.
On page 16 the applicant argues that the claims result in a system that is entirely new and is an inventive means to provide a battery to an electric vehicle. This is not persuasive. With respect to the claims being considered as “entirely new”, the applicant is reminded that novelty or non-obviousness over prior art is not dispositive of the eligibility issue. Claims being found allowable over prior art does not equate to automatically being eligible in view of 35 USC 101, because even inventive and novel and non-obvious abstract ideas are still abstract ideas. As was noted in SAP AMERICA, INC., Plaintiff-Appellee v. INVESTPIC, LLC, the eligibility inquiry is not a prior art based inquiry that looks to allowability over prior art as a deciding factor for eligibility.
The court stated:
We affirm. We may assume that the techniques claimed are “[g]roundbreaking, innovative, or even brilliant,” but that is not enough for eligibility. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89–90 (2012); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.”); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (same for obviousness) (Symantec). The claims here are ineligible because their innovation is an innovation in ineligible subject matter. Their subject is nothing but a series of mathematical calculations based on selected information and the presentation of the results of those calculations (in the plot of a probability distribution function). No matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the nonabstract application realm. An advance of that nature is ineligible for patenting.
The very same reasoning can be applied to the pending claims. They are claiming a series of calculations that serve to define the abstract idea and is reciting the ineligible subject matter, so even if the claims are novel and non-obvious over the prior art, the claim is still not eligible for patenting under 35 USC 101. The argument on page 16 is not persuasive.
The traversal of the 35 USC 101 rejection based on the amended claims is not persuasive to show error in the rejection; therefore, the rejection is being maintained.
With respect to the prior art, the cited prior art of record does not teach or suggest the claimed invention in totality. Reasons for allowance over the prior art will be set forth if and when the applicant is allowed.
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 DENNIS WILLIAM RUHL whose telephone number is (571)272-6808. The examiner can normally be reached M-F 7am-3:30pm.
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/DENNIS W RUHL/Primary Examiner, Art Unit 3626