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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 for Application #18,516,141, filed on 04/20/2026, has been entered. The following is a NON-FINAL OFFICE ACTION in response to the request for continued examination.
Claims 1-10, 12-22, and 24-26 are now pending and have been examined.
Claims 11 and 23 have previously been cancelled by the applicant.
Claim Objections
Claims 11 and 23 are objected to for a typographical error that changes their status. These claims were previously cancelled in a prior office action by the applicant. Therefore, they should still be labeled as “cancelled.” The applicant has now re-labeled them as “Original” and included the content of the claims in the claim set again. Appropriate correction is required.
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 1-10, 12-22, and 24-26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The rationale for this finding is explained below.
Per Step 1 of the analysis, the claims are analyzed to determine if they are directed to statutory subject matter. Claim 1 claims a system comprising a device, a GPS system, and a processor. Therefore, the claim is interpreted as an apparatus. An apparatus is a statutory category for patentability. Claim 14 claims a method, or process. A process is a statutory category for patentability.
Per Step 2A, Prong 1 of the analysis, the examiner must now determine if the claims are directed to an abstract idea or eligible subject matter. In the instant case, the independent claims are directed towards an abstract idea. Specifically, the independent claims 1 and 14 are directed to “receiving data indicative of one or more construction state numbers of one or more road segments, the one or more construction state numbers identifying characteristics for classifying the one or more road segments for repair, recording coordinates of the handheld device for the one or more construction state numbers, receiving data indicative of the one or more construction states of the one or more road segments and coordinates defining the one or more construction states, calculating dimensions for the one or more construction state numbers based upon the coordinates recorded, converting the calculated dimensions into surface area data, and calculating one or more cost scenarios for the one or more road segments based upon the pay items and the dimensions of the one or more construction state numbers.” Therefore, the claims are directed to an abstract idea, namely a mental process. The highlighted portions of the claims can all be performed by a human operator with access to the data indicative of construction state numbers, the coordinates, and the construction state data. The human operator can analyze the data and make calculations, and ultimately calculate the cost scenarios. The human operator could also gather the initial coordinate and construction state data visually in person or from images taken or with the aid of another person. The computer and GPS system only automate the abstract idea with conventional and generic technology. Therefore, the claims are determined to be directed to an abstract idea, namely a mental process.
Per Step 2A, Prong 2 of the analysis, the examiner must now determine if the claims integrate the abstract idea into a practical application. The additional elements of the claims include a “handheld device,” a “GPS system,” “a remote server,” and a “processor. However, these recited elements are considered generic recitations of technical elements as they are recited at a high level of generality. These elements are being used as “tools to automate the abstract idea” (see MPEP 2106.05 (f)), and do not integrate the abstract idea into a practical application. They are not recitations of a special purpose computer or transformation (see MPEP 2106.05 (b) and (c)). The GPS system configured to record coordinates and it being done in real time as the construction numbers are entered is considered using a computer as a tool to automate the abstract idea. The use of GPS is not an improvement to the technology itself, another technology, or the technical field. Therefore, the use of GPS to record coordinates does not integrate the abstract idea into a practical application. The fact it is happening in “real time” is considered a generic recitation of a technical element and conventional computer functioning as GPS technology is understood to track someone’s position in real-time. The claims also include the “receiving by a handheld device,” and “receiving data by a remote server processor.” However, absent further detail, these additional elements are considered “receiving and/or transmittal of data over a network” (see MPEP 2106.05 (d) (II) (i), citing TLI Communications, OIP Techs v Amazon.com, and buySAFE v Google). Therefore, these additional elements do not integrate the abstract idea into a practical application. The claims also include the actual “recording” of data and coordinates.” However, absent further detail, this additional element is recited at a high level of generality and is considered a generic recitation of a technical element and is not considered to integrate the abstract idea into a practical application. The claims also include “automatically recording.” However, the automatic nature in this case is referring to a system and a device, which are computer components which are simply automating the manual recording of coordinates. The fact that the recording is done “automatically” is considered the equivalent of “apply it,” or using a computer as a tool to automate the abstract idea (see MPEP 2106.05 (f)), and does not integrate the abstract idea into a practical application.
Per Step 2B of the analysis, the examiner must now determine if the claims include limitations that are “significantly more” than the abstract idea by demonstrating an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The additional elements of the claims include a “handheld device,” a “GPS system,” “a remote server,” and a “processor. However, these recited elements are considered generic recitations of technical elements as they are recited at a high level of generality. These elements are being used as “tools to automate the abstract idea” (see MPEP 2106.05 (f)), and are not significantly more than the abstract idea itself. They are not recitations of a special purpose computer or transformation (see MPEP 2106.05 (b) and (c)). The GPS system configured to record coordinates and it being done in real time as the construction numbers are entered is considered using a computer as a tool to automate the abstract idea. The fact it is happening in “real time” is considered conventional computer functioning as GPS technology is understood to track someone’s position in real-time. The use of GPS is not an improvement to the technology itself, another technology, or the technical field. Therefore, the use of GPS to record coordinates is not considered significantly more. The claims also include the “receiving by a handheld device,” and “receiving data by a remote server processor.” However, absent further detail, these additional elements are considered “receiving and/or transmittal of data over a network” which is listed in the MPEP as an example of conventional computer functioning (see MPEP 2106.05 (d) (II) (i), citing TLI Communications, OIP Techs v Amazon.com, and buySAFE v Google). Therefore, these additional elements are not considered significantly more. The claims also include the actual “recording” of data and coordinates.” However, absent further detail, this additional element is considered conventional computer functioning and is listed in the MPEP as such (see MPEP 2106.05 (d) (II) (iii-iv), citing Alice Corp.- “electronic recordkeeping” and Versata Dev Grp v Sap, OIP Techs v Amazon.com- “storing and retrieving information in a memory.” Therefore, this additional element is not considered significantly more. The claims as amended also include “automatically recording.” However, the automatic nature in this case is referring to a system and a device, which are computer components which are simply automating the manual recording of coordinates. The fact that the recording is done “automatically” is considered the equivalent of “apply it,” or using a computer as a tool to automate the abstract idea (see MPEP 2106.05 (f)), and is not considered significantly more.
When considered as an ordered combination, the claim is still considered to be directed to an abstract idea as the claims in the ordered combination simply recite the logical steps for receiving construction state number of one or more road segments, recording coordinates for the numbers, receiving data indicative of the one or more construction states, and calculating dimensions and cost scenarios. Therefore, the ordered combination does not lead to a determination of significantly more.
When considering the dependent claims, claims 2 and 3 are considered generic recitations of technical elements, as the type of handheld device does not change the analysis. Claim 4 recites a wireless network, and the network itself is considered a generic recitation of a technical element, and the transmitting is considered “receiving and/or transmittal of data over a network” (see MPEP 2106.05 (d) (II) (i), citing TLI Communications, OIP Techs v Amazon.com, and buySAFE v Google). Therefore, these additional elements are not considered significantly more. Claims 5 and 6 includes a remote server being a remote server processor. The processor has already been addressed above in the Step 2A, Prong 2 and Step 2B analysis, and further the “server” has no antecedent basis. Claims 7-10 and 12-13 and 25-26 are considered part of the abstract idea, as the calculating can be done as part of the mental process, and the processor is being used as a generic technical element, or tool, to automate the abstract idea. any negotiation involves receiving of an offer and determining it is valid or genuine and then responding to the offer with such as an acceptance or counteroffer. Claims 15 and 16 are considered part of the abstract idea as the pay items being predefined or selected by the user do not change the steps being able to be performed as a mental process. Claim 24 is considered conventional computer functioning, as “displaying a prioritized list” is considered conventional data display. The other dependent claims mirror those already discussed above.
Therefore, claims 1-10, 12-22, and 24-26 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. Vs. CLS Bank International et al., 2014 (please reference link to updated publicly available Alice memo at http://www.uspto.gov/patents/announce/alice_pec_25jun2014.pdf as well as the USPTO January 2019 Updated Patent Eligibility Guidance.)
Response to Arguments
Regarding the rejections based on 35 USC 101
Regarding the applicant’s argument on page 9 of the response that the claims are not directed to an abstract idea because they are directed to a “technical improvement in infrastructure assessment” and “these operations require specific hardware/software integration and cannot be practically performed in the human mind”:
The examiner first points out that “infrastructure assessment” is not automatically a technical field as “assessment” can be done as a mental process by analyzing data and making a judgment. Just because some technology is used, if the alleged improvement is to the assessment itself and not the technology or technical field than that is not a “technical improvement.” Further, the examiner does not see any “specific hardware/software integration” but only generic processors/servers/devices that might be running software instructions.
Regarding the applicant’s argument on page 9 of the response that the claims include significantly more under Step 2B because “the real-time linking of user input and geospatial data, conversion of such data into actionable infrastructure metrics, and computation of customized cost scenarios demonstrate an inventive concept that is not routine or conventional”:
The examiner points out that none of these are considered significantly more. “real-time linking” is considered conventional computer functioning. Conversion of data into metrics and computation of customized costs clearly recite mental steps that are automated using a computer, as conversions and calculations can be done with aid of a pen and paper by a human operator with access to the data.
Therefore, the arguments are not persuasive and the rejection is sustained.
Conclusion
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to Luis A. Brown whose telephone number is 571.270.1394. The Examiner can normally be reached on M-F 8:30am-4:30pm EST. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, JESSICA LEMIEUX can be reached at 571.270.3445.
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/LUIS A BROWN/Primary Examiner, Art Unit 3626
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