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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/11/26 has been entered. Currently claims 2, 3, 5-8, 11-13, 17, 18, 20, 22, 27-33, are pending.
Claim Rejections - 35 USC § 112
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.
Claim 33 is 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 claim(s) contains 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.
Claim 33 recites the use of a third communication link that communicates data from a sensor in an additional mobile device carried by the vehicle, and that is used to determine the driving behavior. The claimed additional mobile device that is carried in the vehicle is reciting new matter that is not disclosed in the specification as originally filed. The specification as originally filed does not disclose that there is more than one mobile device being carried by the vehicle and that are being used to collect sensor data from each mobile device, and to transmit the additional data from the additional mobile device, where the driving behavior is determined from the additional data. The specification at most discloses that the data from the data collection device of the vehicle can be communicated to a passenger device where the passenger device forwards the information to the remote processor, see paragraph 027. However, in this disclosure, the passenger device is not being used to collect sensor data that is being used to determine the driving behavior, it is just disclosed as being used to forward the information to the remote processor. The additional mobile device is not being used to collect sensor data from a sensor of the additional device, where it is being used as claimed. For this reason claim 33 is found to be reciting new matter.
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 2, 3, 5-8, 11-13, 17, 18, 20, 22, 27-33, 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 method, system, 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 determining if any penalties or incentives should be applied to an account of a driver of a vehicle that has been rented.
Using claim 2 as a representative example that is applicable to claims 11 and 18, the abstract idea is defined by the elements of:
receiving telematics data collected over a period of time, wherein the telematics data is indicative of operation of the vehicle during the period of time;
determining based on a first portion of the telematics data, a driving behavior occurring during the period of time, the driving behavior being characterized by a behavior value;
determining based on a second portion of the telematics data, an environmental condition existing during occurrence of the driving behavior;
modifying based on the environmental condition, a threshold value associated with the driving behavior, wherein modifying the threshold value results in an adjusted threshold value;
determining that the behavior value satisfies the adjusted threshold value;
receiving vehicle data captured by the second sensor of the data collection device during the period of time; [captured is past tense, the data is just being received]
based on receiving the vehicle data, retrieving a usage preference setting associated with an owner of the vehicle;
determining based on the vehicle data, that the usage a current use of the vehicle satisfies the usage preference setting; and
based on determining that the behavior value satisfies the adjusted threshold value and that the current use of the vehicle satisfies the usage preference setting, causing a change to be applied to an electronic account
The above limitations represents the concept of applying the terms and conditions set forth in a vehicle rental contract (thresholds for driving behaviors, penalties or incentives associated therewith that are based on owner preferences) to determine if a penalty or an incentive is to be applied to the driver. This is construed as reciting a legal interaction (contractual obligation, execution of the terms and conditions of a contract) that is part of a commercial interaction of renting a vehicle to a user. The claim is evaluating driving information to determine if a fee is to be charged, such as when a rented takes a vehicle out of a given state where the rental contract does not allow for that, and pays a fee due to the violation of the terms of the contract. The claimed evaluations can also be performed mentally by analyzing data to determine if the claimed behavior values satisfies a threshold, and if a change is to be applied (a penalty or an incentive). Renting vehicles to users and charging fees (penalties) for certain actions taken by the driver is reciting a fundamental economic practice that is a commercial practice from the rental vehicle industry. The claim is receiving data and processing the data to determine if an incentive or penalty is to be applied and this qualifies as a certain method of organizing human activities type of abstract idea, where the steps also are capable of being performed mentally by a person using the claimed data to make the claimed determinations. For these reasons the claims are found to be reciting the abstract idea of determining if any penalties or incentives should be applied to an account of a driver of a vehicle that has been rented.
For claims 2, 11, 18, the additional elements are:
establishing a first communication link between a mobile device carried by a vehicle and a first processor remote from the vehicle;
receiving of the telematics data via a communication link, from a first sensor disposed in the particular mobile device
establishing a second communication link, separate from the first communication link, between the first processor and a second processor of the vehicle;
wherein the second processor is communicatively coupled to a second sensor disposed within a data collection device of the vehicle and separate from the particular mobile device;
receiving, at the first processor and via the second communication link, vehicle data that was captured by the sensor
the mobile device
the first processor
a second processor of the vehicle
calling the account an electronic account
Claims 11 and 18 also recites the additional elements of a non-transitory computer readable media storing instructions that allow for the claimed steps to occur.
This judicial exception recited in claims 2, 11, 18, is not integrated into a practical application (2nd prong of eligibility test for step 2A) because the additional elements of the claim when considered individual and in combination as a whole, amount to the use of a processor(s) connected by a network and a computer readable medium, that are simply being used as a tool to execute the abstract idea, see MPEP 2106.05(f). The claim is simply instructing one to practice the abstract idea by using a generically recited processors, mobile device, and/or by using a computer readable medium with instructions that causes a processor to perform the steps that define the abstract idea. The claimed devices are nothing more than generically recited computer hardware and the specification makes it clear that no special computers are required beyond that of generic computing technology. The use of the claimed sensors to collect vehicle data is using a device for its intended purpose, which is the use of a sensor to collect data. This is using a sensor (broadly claimed, not limited to any specific type of sensor or class of sensors) to sense data, which is what sensor do by definition. See MPEP 2106.05(f)(2) in this regard. The claim is establishing a communication link between a remote processor and a mobile device that a person carries in a vehicle and between the remote processor and a processor of the vehicle, for the purpose of collecting the necessary data to be able to determine if a change is to be applied to the electronic account of the user. This is just using connected computers to collect the data that is used in the abstract idea to determine if a penalty or an incentive is to be applied. As was stated in Electric Power Group (CAFC 2015-1778), claims directed to collecting data from disparate data sources and analyzing the data was found to be an abstract idea, even when recited in the context of an electrical power grid. The same can be said of the use of the two communication channels by the use of the mobile device and vehicle processor, as far as this is just claiming two sources for received information that is being analyzed to make a change to an account, such as an incentive or penalty for a rental. The additional elements do not amount to more than a mere instruction to implement the abstract idea with computing devices connected by a network, and is indicative of the fact that the claim has not integrated the abstract idea into a practical application; therefore, the claims is/are found to be directed to the abstract idea identified by the examiner.
Additionally, the use of the two separate communication channels is not found to provide for integration and is taken as just specifying two sources for the received data that is being analyzed in the abstract idea, with no criticality or inventive concept being found in the use of two communication channels as opposed to one communication channel. The use of the communication channels for the 1st processor to receive the data, so that the claimed analysis can occur, is an instruction for one to use computers and a network to perform the steps that define the abstract idea. This is a general link to computer implementation and does not provide for integration into a practical application. See MPEP 2106.05(f). The specification makes it clear that the remote processor can receive vehicle data from the first communication link or the second communication link separately, and teaches that the vehicle data received by the second processor can be sent to the first communication link to be sent to the remote processor. There is no inventive concept found in the use of two communication links as opposed to one communication link, where the mobile device and/or the processor of the vehicle can be responsible for sending the claimed data to the remote processor. This is a general link to computer implementation and does not provide for integration into a practical application. See MPEP 2106.05(f).
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 processor(s) that are connected to each other by a network (communication links) and a computer readable medium, with instructions that causes a processor to perform the steps that define the abstract idea, and the use of a sensor to sense data as was addressed above. The use of the claimed sensors to collect vehicle data is using a device for its intended purpose, which is the use of a sensor to collect data. This is using a sensor (broadly claimed, not limited to any specific type of sensor or class of sensors) to sense data, which is what sensor do by definition. See 2106.05(f)(2) in this regard. The claim is establishing a communication link between a remote processor and a mobile device that a person carries in a vehicle and between the remote processor and a processor of the vehicle, for the purpose of collecting the necessary data to be able to determine if a change is to be applied to the electronic account of the user. This is just using connected computers to collect the data that is used in the abstract idea to determine if a penalty or an incentive is to be applied, as was stated above for the 2nd prong. This does not render the claims as being eligible. See MPEP 2106.05(f). The rationale set forth for the 2nd prong of the eligibility test above is also applicable to step 2B in this regard so no further comments are necessary.
Therefore, for the above reasons, claims 2, 11, 18 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 3, claiming that the account is associated with a driver exhibiting the driving behavior is claiming more about the abstract idea and the fact that the account is for a user. This is part of the abstract idea. The claim also recites the receipt of an indication that a driver has agreed to terms included in a rental contract for renting the vehicle from an owner, where the terms include potential penalties or incentives based on driving behavior, and reciting the comparison between the behavior value and the adjusted threshold for the change, is reciting more about the abstract idea of claim 2. Agreeing to terms of a rental contract and its execution based on those terms, is a further recitation to a legal interaction that is the renting of a vehicle, as was stated for claim 2. The claimed processor and the reference to “electronic” for the account has been treated in the same manner that is set forth for claim 2 to which applicant is referred. The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claim is not considered to be eligible.
For claim 5, the claimed environmental conditions and the data that it is based on, are what in part defines the abstract idea of the claims. Nothing is claimed but more about the abstract idea of claim 2. No further additional elements are recited for consideration beyond that already addressed for claims 2. The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claim is not considered to be eligible.
For claims 6, 7, the claimed determining of the driving behavior and the behavior values, etc. are all elements that are part of the abstract idea of claim 2. No further additional elements are recited for consideration beyond that already addressed for claim 2. 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 8, the claimed types of telematics data is considered to be part of the abstract idea. The data that is used in the analysis to determine the driving behavior and whether or not to apply a penalty or an incentive, is part of the abstract idea. Reciting where the environmental data comes from is part of the abstract idea as far as coming from a third party. The use of a third party server is another instruction for one to practice the invention using a computer and does not provide for integration or significantly more at step 2B. See MPEP 2106.05(f). Therefore the claim is not considered to be eligible.
For claim 12, the receiving of an indication that the terms of a rental contract have been agreed to, and sending a message to the driver or owner indicating a penalty or incentive, is considered to be reciting more about the abstract idea. This is the parties entering into a contract for the use of the vehicle and the terms and conditions associated with the use of the vehicle. The reference to the message being electronic has been treated in the same manner that was set forth for claim 11. The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claim is not considered to be eligible.
For claim 13, the claimed telematics data is part of the abstract idea and is reciting data or information per se. The claimed determining of the current use based on the weight or sound or based on a video are all elements that serve to further define the abstract idea. Using values such as acceleration or speed or lateral force is claiming the data that is also part of the abstract idea. The sensed data itself is part of the abstract idea because it is information per se, and the use of the sensors such as a weight sensor or a microphone or a camera has been addressed in the same manner as set forth for claim 11, to which applicant is referred. The use of the sensors in the claimed manner to sense a weight or a sound or a video does not render the claims eligible and is simply using a sensor for what it is used for, namely sensing data, see MPEP 2106.05(f)(2) in this regard and the ordinary use of a device in conjunction with a judicial exception. Determining the current based on the weight or sound or a video is part of the abstract idea and is something that can be performed by a human being looking at a weight or listening to an audio recording or watching a video. This is part of the abstract idea. The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claim is not considered to be eligible.
For claim 17, determining the claimed driving metric and composite threshold value and causing the change to be applied, are all elements that are part of the abstract idea. No further additional elements are recited for consideration beyond that already addressed for claim 11. The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claim is not considered to be eligible.
For claim 20, reciting what the second portion of the telematics data and the environmental condition comprises is a further recitation to more about the abstract idea. The claimed use of a sensor to do what they are designed to do, namely to sense data such a temperature. Reciting the claimed sensors does not provide for integration or significantly more, especially when one considers that the telematics and vehicle data is just being received in the claim, the claims do not recite they actual collection of the sensor data because the sensor language is written in terms of being past tense. The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claim is not considered to be eligible.
For claim 22, the applicant is reciting a further embellishment of the abstract idea of claim 11. Reciting the determining of a time a vehicle is stopped based on data (where the data comes from as far as a sensor is outside of the claim scope), serves to further define the abstract idea. The data that is used to determine the time the vehicle is stopped, and the recitation of the data being from a sensor, is simply reciting data or information per se, which is something that is part of the abstract idea. The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claim is not considered to be eligible.
For claim 27, the claimed determining of an adjustment specific to the vehicle in the claimed manner, and the adjusted threshold value, is reciting more about the abstract idea of claim 2. This is part of the abstract idea and is something that a person can do. A person (human being) can determine an adjustment specific to a vehicle and an adjusted threshold value by using data such as the claimed preference setting. The claim(s) is/are not found to be eligible. The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claim is not considered to be eligible.
For claims 28, 29, the abstract idea is being further defined by reciting the settings and the use of the settings for determining the usage. Claiming the setting as being a maximum weight to be carried in the vehicle, or the setting for an animal being in the vehicle, or for carrying a child, are all elements that serve to define more about the abstract idea. This is the preference of the vehicle owner as far as how they want the rented car to be used or to not be used. Using this data and comparing it to collected sensor data is what further defines the abstract idea. The use of the sensor has been treated in the same manner as set forth for claim 1. Using a weight sensor to sense a weight, so that one can determine if the weight carried by the vehicle satisfies a user setting value, is using the weight sensor in its ordinary capacity to do what it does, which is to determine/sense a weight. This is claiming the use of a device in its ordinary capacity to do what it does, similar to the use of a telephone unit in TLI, see MPEP 2106.05(f)(2).
For claim 30, reciting that the current use (of the vehicle) includes a type of passenger is reciting more about the abstract idea. The same is noted for the use of the sound or video to determine the passenger type, this is reciting an element that is part of the abstract idea. The use of the microphone or the camera has been treated as being the ordinary use of a device to do what it is designed to do, which is a microphone sensing sound and a camera taking a video. This is claiming the use of a device in its ordinary capacity to do what it does, similar to the use of a telephone unit in TLI, see MPEP 2106.05(f)(2). The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claim is not considered to be eligible.
For claim 31, claiming that the current use of the vehicle comprises the claimed weight or indication of an animal being carried or an indication of a child being carried is claiming more about the abstract idea of claim 11. The claimed current use is the criteria that the user has set for a preference, such as not being allowed to have a dog or a child carried in the vehicle or else a penalty can be applied to the account of the user. This is reciting more about the abstract idea and the terms and conditions under which use of the vehicle is allowed or preferred by the renter/owner. The claimed sensors are considered to be additional elements that are reciting the source for the data that is used in the abstract idea and is claiming the use of a sensor in its ordinary capacity, as is set forth for claim 11 to which applicant is referred. This does not provide for integration or significantly more, see MPEP 2106.05(f). This is claiming the use of a device in its ordinary capacity to do what it does, similar to the use of a telephone unit in TLI, see MPEP 2106.05(f)(2). The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claim is not considered to be eligible.
For claim 32, reciting that the usage preference is a geolocation boundary within which the vehicle may operate, and the determining of the locations during a period of time using the telematics data, so that it can be determined if the locations fall in the boundary and determining that the current use of the vehicle satisfies the usage preference is claiming more about the abstract idea of claim 11. This is claiming another preference, such as not being allowed to use the vehicle outside of a given area, such as a county or state or other defined area, or else a penalty can be applied to the account of the user. This is reciting more about the abstract idea and the terms and conditions under which use of the vehicle is allowed or preferred by the renter/owner. No further additional element is claimed for consideration. The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claim is not considered to be eligible.
For claim 33, the claimed receiving of additional data collected over time and that is used to determine the driving behavior is reciting more about the abstract idea of the claims. This is just defining more data that is being collected and used to determine if a change should be made to the account of the user (incentive or penalty). The claimed use of a third communication link that communicates the additional data to the remote processor is claiming implementation of the abstract idea by using connected computers, as was addressed for claim 1 and to which the applicant is referred. The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claim is not considered to be eligible.
Therefore, for the above reasons, Claims 2, 3, 5-8, 11-13, 17, 18, 20, 22, 27-33, are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Response to arguments
The traversal of the 35 USC 101 rejection is not persuasive. On page 12 of the reply the applicant argues that the establishment of a communication link between a processor and a sensor, receiving sensor data via the communication links and processing the data cannot be characterized as being a mental process that can be practically performed mentally. This is not persuasive because the examiner has not considered the use of the communication links to be part of the abstract idea, and has not alleged that humans can mentally communicate via communication links with a processor. This argument is not addressing the actual rejection of record. The use of the communication links to send data to the processor and the use of the sensors are additional elements that are not part of the abstract idea. Therefore, arguing that the use of the communication links cannot be performed mentally is arguing something that is not found in the rejection itself. Also, the claims are found to be reciting a certain method of organizing human activities and the argument does not address that, it only addresses the mental process category that is not the primary basis for the rejection. The argument is not persuasive.
Additionally, the data analysis steps that defines the abstract idea are more than capable of being practically performed by a person, even if using pen and paper to assist. Other than the use of a communication links to convey data to a processor, the claimed steps that define the abstract idea can be performed mentally by a person who collects data and uses it to arrive at a driving behavior and whether or not a threshold is satisfied, etc.. Other than alleging that communication via computer links cannot be performed mentally, the applicant has not addressed the steps that define the abstract idea with any argument of why that cannot be performed mentally. A person with the claimed data can review the data and make the claimed determinations. The argument is not persuasive.
On page 13 the applicant argues that the claims are integrated into a practical application. The applicant argues that example 40 from the USPTO eligibility examples supports this assertion. This is not persuasive. Example 40 has two example claims, one of which was not eligible. The examiner assumes the argument is for claim 1 of the example 40. Claim 1 of example 40 was found to be eligible because it provided for an improvement to network monitoring. Specifically, the method of example 40 limits collection of additional Netflow protocol data to when the initially collected data reflects an abnormal condition, which avoids excess traffic volume on the network and hindrance of network performance. The collected data can then be used to analyze the cause of the abnormal condition. This provides a specific improvement over prior systems, resulting in improved network monitoring. No such analogy can be made to the pending claims that are not improving technology in any manner. Example 40 was not eligible because it was reciting an improvement in collecting traffic data as has been argued. When looking at the pending claims and how the claimed invention is collecting the data, the examiner notes that it is done by simply using sensors to collect data and by using a communication link to send the data to a processor. This is nothing more than using a computer as a tool to execute the abstract idea for a data collection step, and so that the data processing can occur that defines the abstract idea. That does not provide for integration into a practical applicant and is not similar to example 40 from the USPTO examples. The argument is not persuasive.
The applicant also argues that the use of more than one communication link to receive the data is an improvement in data for monitoring vehicle use. This is not persuasive. The use of the communication links is nothing more than an instruction for one to use a computer, and does not amount to providing for an improved manner by which data is being received. The use of the two separate communication channels is specifying two sources for the received data that is being analyzed in the abstract idea, with no criticality or inventive concept being found in the use of two communication channels as opposed to one communication channel. The use of the communication channels for the 1st processor to receive the data from, so that the claimed analysis can occur, is an instruction for one to use computers and a network to perform the steps that define the abstract idea. This is a general link to computer implementation and does not provide for integration into a practical application. See MPEP 2106.05(f). The specification makes it clear that the remote processor can receive vehicle data from the first communication link or the second communication link separately, and also teaches that the vehicle sensor data collected by the second processor (of the vehicle) can be sent to the first communication link (the mobile device) for transmission to the remote processor such that only one communication channel is being used. There is no inventive concept found in the use of two communication links as opposed to one communication link, where the mobile device and/or the processor of the vehicle. This is a general link to computer implementation and does not provide for integration into a practical application. See MPEP 2106.05(f).
On page 14 the applicant argues that the claims recite the specific use of different data from the different communication links and argues that this is something not possible with just telematics data alone. This is not persuasive. The claimed telematics data collected over time is broadly reciting any data that one could collect that arguably relates to the vehicle. No specific data is claimed in the claimed invention of the independent claims. The vehicle data from the second communication link that is from the vehicle processor is broadly recited as being “vehicle data” that is collected over time. The claims do not recite that there is any difference in data that is being received by the first and second communication links as argued such that the use of the two communication links is critical to the functioning of the method. The claims do not recite specific data types as the applicant argues because the collected data can be the same, such as location or acceleration. The argument is not commensurate with the scope of the claims and is not persuasive.
The applicant argues on pages 15-16 that claim 2 recites features that the Office has not established are "well-understood, routine, conventional activities" as required by the April 2018 Memo. The applicant argues that even if any of the individual elements recited in Applicant's claims are considered to be known or conventional, an "inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces." The applicant argues that "even if an additional element does not amount to significantly more on its own, it can still amount to significantly more when considered in combination with the other elements of the claim.". The applicant argues that there is no indication that the particular combination of elements recited in Applicant's claims is "well-understood, routine, conventional activity in the field." In reply the examiner notes that no such requirement exists in the eligibility guidance. Examiners do not have to prove that a claimed invention as a combination was well understood, routine, and conventional in a given field to find that the claims are not eligible. This is a misinterpretation of the Berkheimer memo that does not support what has been argued. The examiner has not taken the position that anything is well understood, routine, or conventional at step 2B because nothing has been found to be an insignificant extra solution activity at the 2nd prong. Again, examiners do not have to prove that a claimed invention was well understood, routine, and conventional in a given field to find that the claims are not eligible. To do so would be injecting a prior art analysis into the eligibility inquiry. An element or combination of elements that is well understood, routine, and conventional is more than just known in the art, it means that it is more or less ubiquitous in a given field. There is no requirement that an examiner prove with evidence that a claimed invention in combination with all of the recited features is so well known in a given field that it rises to the level of being well understood, routine, and conventional. The rejection of record does not find anything to be an insignificant extra solution activity at the 2nd prong so there is nothing to reassess at step 2B with respect to the issue of being well understood, routine, and conventional (the Berkheimer memo). The argument is not persuasive. The applicant cannot allege that the invention as a whole and as a recited combination is not well understood routine and conventional in the art in order to require that the examiner prove with evidence that the entire claim as a whole is ubiquitous (well understood, routine, and conventional) in the art to maintain the eligibility rejection. The argument is not persuasive.
On page 17 the applicant argues that the examiner has not proven with a preponderance of evidence that the claims are not eligible. This is a general allegation that is more of a statement of disagreement with the examiner than an argument that the examiner can respond to. A prime facie case has been made that the claims are not eligible that is in accordance with the eligibility guidance set forth in MPEP 2106.05. The allegation is not persuasive.
No other arguments have been presented for consideration. The 35 USC 101 rejection is being maintained.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Lemieux can be reached at 5712703445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS W RUHL/Primary Examiner, Art Unit 3626