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 .
DETAILED ACTION
Status of Claims
This action is in reply to the response filed on 11-22-2025. Claims 1-5, 8-13 and 15-23 are currently pending and have been examined. Claims 6, 7 and 14 have been cancelled. Claims 1, 10 and 17 have been amended.
Request for Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 [11-22-2025] has been entered
Patent-Ineligible Subject Matter - 35 U.S.C. § 101
Under 35 U.S.C. § 101, “[w]hoever 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.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217–18.
The U.S. Patent and Trademark Office (the “USPTO”) published revised guidance on January 7, 2019, for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the USPTO’s examination procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50.1
The first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 54; see also MPEP §§ 2106.04(II)(A)(1), 2106.04(a). If so, we next determine, in Step 2A, Prong Two, whether the claim as a whole integrates the recited judicial exception into a practical application of that exception, i.e., whether the additional elements recited in the claim beyond the judicial exception, apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Id.; see also MPEP §§ 2106.04(II)(A)(2), 2106.04(d). Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. Id.; see also MPEP § 2106.04(II)(A)(2).
If the claim is determined to be directed to a judicial exception under Step 2A, we next evaluate the additional elements, individually and in combination, in Step 2B, to determine whether they provide an inventive concept, i.e., whether the additional elements or combination of elements amounts to significantly more than the judicial exception itself; only then, is the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56; see also MPEP § 2106.05.
Analysis:
STEP 1
Is the claim(s) directed to a process, machine, manufacture or composition of matter?
Claims 1-5, 8-13 and 15-23 are all directed to a statutory category (e.g., a process, machine, manufacture, or composition of matter). The answer is YES. Therefore, the issue now is whether it is directed to a judicial exception without significantly more.
STEP 2
Step 2A(i): Does the Claim Recite a Judicial Exception?
Claims 1-5, 8-13 and 15-23 are directed to a computer-implemented method for determining driving behaviors of a target user in a target region by using a computing device (claimed) in a vehicle. The method involves receiving a selection of a reference region with sufficient trip data of reference users. A selection of a target region with insufficient trip data of target users is received. A subgroup of the target users in the target region similar to a subgroup of the reference users in the reference region is determined based on sociodemographic information of target users and reference users. Synthetic trips for the target user are generated based upon trip data associated with reference trips taken by the subgroup of the reference users in the reference region. A subset of synthetic trips is selected from the synthetic trips similar to the reference trips. Predicted driving behaviors of the target user in the target region are determined based on the subset of synthetic trips using a simulation model.
From this we see that the claims do not recite the judicial exceptions of either natural phenomena or laws of nature. The next issue is whether it recites the judicial exception of an abstract idea. To answer this, we next determine whether it recites one of the concepts the Courts have held to be lacking practical application, viz. mathematical concepts2, certain methods of organizing human interactions3, including fundamental economic practices and business activities, or mental processes4.
The practice of determining driving behaviors of a target user in a target region is a mental process. Thus, the invention is an example of a conceptual idea subject to the Supreme Court's "concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity." See Alice, 573 U.S. at 216 (citations omitted). Thus the claims are directed to a mental process because the invention as drafted is a process that under its broadest reasonable interpretation covers human actions. That is, other than generic computer components, nothing in the claim element precludes the step from practically being performed by a human. The steps mimic human thought processes or actions, perhaps with paper and pencil. See Planet Bingo, 961 F. Supp. 2d at 851 (“The district court correctly concluded that managing the game of bingo “consists solely of mental steps which can be carried out by a human using pen and paper”). Other than the recitation of generic computer components, the examiner finds that the instant case clearly falls within the “mental processes” grouping of abstract ideas. The examiner further finds that this type of activity represents longstanding conduct that existed well before the advent of computers and the Internet. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson").
And, when claimed in a manner similar to the claims here, gathering and analyzing information using conventional techniques has been determined to be an abstract idea. TLI Communications v. AV Automotive LLC, 823 F .3d 607, 612-13 (Fed. Cir. 2016). Also, more recently, a reviewing court has also concluded that some acts of collecting, analyzing, manipulating, and displaying data are patent ineligible. Univ. of Fl. Research Foundation, Inc. v. General Electric Co., 916 F.3d 1363 (Fed. Cir. 2019) (citing Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)).
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
The 2019 Revised Guidance sets forth a non-exhaustive listing of considerations indicative that an additional element or combination of elements may have integrated a recited judicial exception into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55; see also MPEP § 2106.04(d). In particular, the Guidance describes that an additional element may have integrated the judicial exception into a practical application if, inter alia, the additional element reflects an improvement in the functioning of a computer or an improvement to other technology or technical field. Id. At the same time, the Guidance makes clear that merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra-solution activity to the judicial exception; or only generally linking the use of the judicial exception to a particular technological environment or field are not sufficient to integrate the judicial exception into a practical application. Id.
The Examiner finds each of the limitations of representative claim 1 recites abstract ideas as Identified in Step 2A(i), supra, and none of the limitations integrate the mental process into a practical application as determined under one or more of the MPEP sections cited above. The claim as a whole merely uses instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea.
Thus, on this record, Applicant has not shown eligibility under the guidance of Manual for Patent Examining Procedure section 2106.05(a) (“Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field”) or section 2106.05(e) (“Other Meaningful Limitations”).
Step 2B – “Inventive Concept” or “Significantly More”
Evaluating representative claim 1 under step 2 of the Alice analysis, the Examiner concludes it lacks an inventive concept that transforms the abstract idea of predicting travel behavior into a patent-eligible application of that abstract idea. As evidence of the conventional nature of the invention as disclosed, the Examiner refers to paragraphs 20, 33, 58, 63 and 76, and Figure 7 of the published Specification. The Examiner finds the recited hardware is well-understood, routine, and conventional. The generic computers described in the Specification are well-understood, routine, and conventional, at least because the Specification describes the computers in a manner that indicates they are sufficiently well-known that the Specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112 ¶ 1(a). See Berkheimer Memo5 § III.A.1. Thus, because the Specification describes the additional elements in general terms, without describing the particulars, the Examiner concludes the claim limitations may be broadly but reasonably construed as reciting conventional computer components and techniques, particularly in light of Applicant’s Specification.6
Dependent claim 2 adds the additional limitations of determining whether the reference region has sufficient trip data collected in the reference regions and providing a list of regions that has sufficient trip data. These are is mental processes because other than generic computer components, nothing in the claim element precludes the step from practically being performed as in the human mind or with paper and pencil. See Planet Bingo, 961 F. Supp. 2d at 851. See also Guidance, 84 Fed. Reg. at 52.
Dependent claims 3 and 11 add the additional limitations of obtaining training trip data related to the reference trips taken in the reference region and generating the simulation model. This is insignificant extra-solution activity because this is activity incidental to the primary process or product that is merely a nominal or tangential addition to the claim. See 2019 Revised Guidance, 55 n.31; see also MPEP § 2106.05(g). As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Parker vs. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978).
Dependent claims 4, 12 and 18 add the additional limitations of receiving a selection of the subgroup of target users in the target region and determining the one or more subgroups of reference users in the reference region that have the similar sociodemographic variables as the subgroup of target users. Receiving is also insignificant extra-solution activity. Determining is also nonfunctional descriptive material.
Dependent claims 5 and 13 add the additional limitations of determining vehicle insurance policies associated with the target user of the subgroup of target users and selecting reference users from each of the one or more subgroup of reference users that matches the target user. These are also mental processes.
Dependent claims 8, 15 and 19 add the additional limitations of obtaining trip data of the reference trips, obtaining a garaging address of the target user, determining a starting point in the target region by leveraging at least in part upon a map and a distance of the corresponding reference trip and generating a synthetic trip from the starting point to the garaging address of the target user. Obtaining and generating is also insignificant extra-solution activity. Determining is also a mental process.
Dependent claims 9, 16 and 20 add the additional limitations of generating a sequence that represents each of the reference trips in the reference region, generating a predicted sequence for each synthetic trip in the target region, determining if one of the reference trips is similar to the corresponding synthetic trip based at least in part upon road conditions and/or road types and determining the subset of synthetic trips from the plurality of synthetic trips that have the similar reference trips. Generating is also insignificant extra-solution activity. Determining is also a mental process.
Dependent claim 21 adds the additional limitations of determining whether a selected reference region comprises sufficient trip data of reference users collected in the reference region, determining that the selected reference region comprises insufficient trip data and providing alternative reference regions that comprise sufficient trip data of reference users. These are also mental processes.
Dependent claim 22 adds the additional limitations of determining vehicle insurance policies associated with the target user of the subgroup of the target users and selecting one or more reference users from the subgroup of reference users that matches the target user of the subgroup of the target users based at least in part upon vehicle insurance policies including vehicle type and coverage limits. These are also mental processes.
Dependent claim 23 adds the additional limitations of obtaining training trip data related to the reference trips taken in the reference region and generating a simulation model based on the training trip data using a generative model. This is also insignificant extra-solution activity.
Conclusion of Law
The examiner concludes that the claims do not provide an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception. From these determinations the examiner further notes that the claims do not recite an improvement to the functioning of the computer itself or to any
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other technology or technical field, a particular machine, a particular transformation, or other meaningful limitations. From this the examiner finds the claims are directed to a mental process without significantly more.
Response to Arguments and amendments
Applicant contends that the invention is integrated into a practical application and recites significantly more than an abstract idea. Remarks at 13.
Applicant’s claims, though reciting the use of machinery, merely recite the use of generic computer elements and machines as tools to carry out the abstract idea, and thus do not integrate the abstract idea into a practical application or recite significantly more than the abstract idea itself. Taking the claimed elements separately, the functions performed by the computing device and autoencoder are purely conventional. These generic components operate in their ordinary and conventional capacities to perform the well-understood, routine, and conventional functions of receiving, determining, generating, and selecting. See Solutran, 931 F.3d at 1168 (“[T]he claims simply recite conventional actions in a generic way (e.g., capture data for a file, scan check, move check to a second location, such as a back room) and do not purport to improve any underlying technology”); TLI Commc’ns LLC v. AV Auto., LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) (“[T]he claims’ recitation of a ‘telephone unit,’ a ‘server’, an ‘image analysis unit,’ and a ‘control unit’ fail to add an inventive concept sufficient to bring the abstract idea into the realm of patentability”); Content Extraction, 776 F.3d at 1348 (“There is no ‘inventive concept’ in [Content Extraction’s] use of a generic scanner and computer to perform well-understood, routine, and conventional activities commonly used in industry”); Alice, 573 U.S. at 226 (“Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”).
Applicant also argues:
“[T]he claims recite an improvement to other technology[.]” Remarks at 12.
Applicant though fails to identify how the various steps and functions performed by the server(s) provide an improvement to another technology, i.e., an improvement to how a computer or the recited server performs or executes the abstract idea identified in step 1 of Alice/Mayo framework. The claims do not disclose any improvement specific to the computer rather than an improvement to the underlying abstract idea of predicting driver behavior using telematics data. Applicant fails to detail any server interactivity which improves the performance of the computers (servers), communication network, or system overall.
Thus, although possibly providing an improvement to the underlying abstract idea, the examiner finds insufficient evidence that the claims are directed to improving the technical field of computers, communications, networking, or otherwise. Indeed, the steps in the Applicant's claimed invention taken collectively may indicate improvements to the business process, but there is no specific improvement to the functioning of the computers, processors or networks themselves. While the presence of novel or non-obvious features in the Applicant's claimed invention may indicate an improvement to the business process, in the instant case it does not indicate an improvement to a technological process. Relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.
Accordingly, for reasons of record and as set forth above, the examiner maintains the rejection of the claims as being directed to a judicial exception without significantly more, and thereby being directed to non-statutory subject matter under 35 USC §101.
Conclusion
Prior art made of record and not relied upon that is considered pertinent to Applicant’s disclosure can be found on the attached PTO-892. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert R. Niquette whose telephone number is 571-270-3613. The examiner can normally be reached on Monday through Friday, 5:30 AM to 2:00 PM Eastern.
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, Abhishek Vyas, can be reached at 571-270-1836.
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/ROBERT R NIQUETTE/
Primary Examiner, Art Unit 3691
1 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates the revised guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020)..
2 See e.g., Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).
3 See e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Systems Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1383 (Fed. Cir. 2017); In re Marco Guldenaar Holding B. V., 2018 WL 6816331 (Fed. Cir. 2018).
4 See e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-1372 (Fed. Cir. 2011); Intellectual Ventures I LLCv. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
5 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), USPTO 3 (2018) (available at https://www.uspto.gov/ sites/default/files/documents/memo-berkheimer-20180419.PDF) (explaining that a specification that describes additional elements “in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well understood, routine, and conventional).
6 Claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).