DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
This action is in reply to the communication filed on . The disposition of claims is as follows:
Pending:
Rejected:
Canceled:
Response to Arguments
Applicant's arguments filed have been fully considered. The Examiner proceeds below with a response.
Regarding Claims rejected under 35 U.S.C. § :
Applicant's arguments have been fully considered but they are not persuasive
Applicant presents the following arguments in comparing Claim to BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016):
“ Moreover, the mere possibility that any one limitation can be performed as a mental step is insufficient to establish that a claim as a whole is directed to an abstract idea. As set forth above, various features of claim 1 do not recite a mental process because they are not recited at "a high level of generality such that they could practically be performed in the human mind."(MPEP 2106.04(a)(2)(III)(A)). Accordingly, the claim as whole is not directed to an abstract idea.”
Applicant concludes that these limitations constitute an improvement upon a technology that would make the abstract idea patentable.
The Examiner is not persuaded by Applicant’s citation to BASCOM to demonstrate that the present claims set forth an improvement in technology (i.e. inventive concept may be found in the non-conventional and non-generic arrangement of components that are individually well-known and conventional). In BASCOM, the claims were directed to “a filter implementation versatile enough that it could be adapted to many different users’ preferences while also installed remotely in a single location.” BASCOM, 827 F.3d at 1348–51. The inventive concept was “the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user” that “gives the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server.” Id. at 1350. Thus, when considered as an ordered combination, the court concluded the claims provided “an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”
Here, the present claims recite an abstract idea using additional elements that are at best, improving an abstract idea—not an inventive concept. Applicant’s arguments fail to identify any additional element or particular combination of elements that allegedly are unconventional, nonroutine, or not well-understood. Claim 1 does not have an inventive concept because the claim, in essence, merely recites various computer-based elements directed to mapping a setpoint position of the actuating mechanism along with no more than mere instructions to implement the identified abstract idea using the computer-based elements. The claim as a whole is directed to mapping of a setpoint of a position of the actuating mechanism, not on controlling the vehicle. Because the Specification describes the additional elements in general terms, without describing the particulars, the claim limitations may be broadly but reasonably construed as reciting conventional computer components and techniques. See MPEP § 2106.07(a)(III)(D) (explaining that a specification that describes additional elements in a manner that indicates that the additional elements are so well-known that they do not need to be described in detail to satisfy 35 U.S.C. §112(a) can show that the elements are well understood, routine, and conventional). The Examiner cites a case in support of the finding that the generic computer components were well-understood, routine, and conventional components performing conventional computer operations. Final Act. 9–10 (citing Alice, 573 U.S. at 225–26). Furthermore, the present claims recite an abstract idea using additional elements that are generic computer components as discussed supra, or at best, improving an abstract idea—not an inventive concept.
Applicant asserts that, in comparing Instant Claims to Enfish, LLC v. Microsoft Corp. and McRO, Inc. v. Bandai Namco Games America Inc “”.
Applicant advances the argument that, “... The claims thus recite an improvement in the field of steer-by-wire system and should be deemed patent eligible for, at least, providing a practical application under Prong two. Thus, these elements further ground claim 1 into a practical application such that claim 1 is not directed to a judicial exception and independent claim 1 is patent eligible.
The Examiner respectfully disagrees. The Examiner is not persuaded by Applicant’s citation to Enfish to demonstrate that the present claims set forth an improvement in technology.
In Enfish, the claims were directed to a “specific improvement to the way computers operate,” i.e., an improved database configuration that permitted faster and more efficient searching. Enfish, 822 F.3d at 1330–33, 1336. The Federal Circuit has, thus, explained that the claims in Enfish “did more than allow computers to perform familiar tasks with greater speed and efficiency.” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018). Applicant has not identified any analogous improvement here that is attributable to the claimed invention.
The difficulty with Applicant’s argument is that it, at best, establishes that the claimed invention provides improved vehicle control and responsiveness of vehicle control unit operation with respect to physical components, i.e., an improved abstract idea. Applicant does not adequately explain how, the claimed invention improves “computer functionality” in a manner comparable to the situation in Enfish. Applicant argues that claim 1 is not directed to an abstract idea, and is patent eligible because the claimed method improves “an existing technological process”. That argument is not persuasive at least because there is no evidence of record that the claimed method uses a data structure, like the self-referential table in Enfish, to improve a computer’s functionality or efficiency, or to otherwise change the way the computer operates. In contrast to Enfish, Applicant does not describe an advance in hardware or software that causes the recited computer processor to operate faster or more efficiently by, for example, expanding or improving the capabilities of the processor itself.
Examiner is not persuaded that Instant Claim represents any technological improvement. Independent Claim , unlike the claims found non-abstract in prior cases, use generic computer technology to control a steer by wire system for a vehicle. Therefore, the Examiner is not persuaded by Applicant’s reliance Enfish, LLC v. Microsoft Corp as the case does not offer an analogous set of facts to the instant claims.
The Examiner is not persuaded by Applicant’s citation to McRO to demonstrate that the present claims set forth an improvement in technology. The subject claim considered by the McRO court concerned a method for automatically animating lip synchronization and facial expressions. McRO, 837 F.3d at 1303. The McRO court concluded the subject claims did not recite an abstract idea because the computer animation used a structure of limited rules that reflected a specific implementation which an animator would not likely have utilized. Id. at 1316. Thus, the claimed invention in McRO used “limited rules in a process specifically designed to achieve an improved technological result” over “existing, manual 3-D animation techniques.” Id.
In McRO, the Federal Circuit concluded that the claim, when considered as a whole, was directed to a "technological improvement over the existing, manual 3-D animation techniques" through the "use[] [of] the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice." McRO, 837 F.3d at 1316. Specifically, the Federal Circuit determined that the claimed rules allowed computers to produce accurate and realistic lip synchronization and facial expressions in animated characters that previously could only be produced by human animators; and that the rules were limiting because they defined morph weight sets as a function of phoneme sub-sequences. Id. at 1313. Appellants have not identified any analogous improvement here that is attributable to the claimed invention.
Appellants assert, as described above, that the present claims " " Again, Examiner is not persuaded that Instant Claim represents any technological improvement. Independent Claim , unlike the claims found non-abstract in prior cases, uses generic computer technology to evaluate improve vehicle control and responsiveness of vehicle control unit operation with respect to physical components and does not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims not abstract because they “focused on a specific asserted improvement in computer animation”). Therefore, the Examiner is not persuaded by Applicant’s reliance McRO, Inc. v. Bandai Namco Games America Inc as McRo does not offer an analogous set of facts for the instant claims.
For the reasons discussed, supra, the rejections of Claims 1-9 and 11-16 have been maintained.
Regarding Claims rejected under 35 U.S.C. § :
Applicant's arguments have been fully considered and are persuasive.
Therefore, the rejection of Claim 1 has been withdrawn. (Examiner notes that Claim 10 has been canceled by Applicant)
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 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
In sum, claims is/are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception to patentability (i.e., a law of nature, a natural phenomenon, or an abstract idea) and do not include an inventive concept that is something “significantly more” than the judicial exception under the analysis which follows.
For purposes of compact prosecution and clarity, designations have been assigned to limitations of Claim for purposes of evaluation under 35 USC § 101 as follows:
(A) “”
(B) “”
(C) “”
(D) “”
(E) “”
Step 1 – Statutory Category Determination - MPEP § 2106.03
Under Eligibility Step 1 analysis, it must first be determined whether the claims are directed to one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of matter). Applying Eligibility Step 1 of the analysis for patentable subject matter to the claims, it is determined that the claims are directed to the statutory category of a . Therefore, we proceed to Step 2A, Prong One.
Step 2A, Prong One – Does the claim recite an abstract idea? - MPEP § 2106.04:
Under the Step 2A, Prong One analysis, it must be determined whether the claims recite an abstract idea that falls within one or more designated categories of patent ineligible subject matter (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability.
Abstract Ideas:
With respect to Independent Claim , claim limitations ()-() recite abstract ideas that fall within at least one of the three enumerated groupings of abstract ideas set forth in MPEP § 2106.04(a).
Mental Processes – MPEP § 2106.04(a)(2)(III):
Claim limitations ()-() fall within the mental process grouping of patent ineligible subject matter. Each limitation relates to functions that could be performed alternatively as mental processes, i.e., concepts performed in the human mind or using pen and paper (including an observation, evaluation, judgment, and opinion).
Specifically, a mental process, that can be performed in the human mind since each of the above steps could alternatively be performed in the human mind or with the aid of pen and paper. This conclusion follows from CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) where our reviewing court held that 35 U.S.C. § 101 did not embrace a process defined simply as using a computer to perform a series of mental steps that people, aware of each step, can and regularly do perform in their heads. See also In re Grams, 888 F.2d 835, 840–41 (Fed. Cir. 1989); In re Meyer, 688 F.2d 789, 794–95 (CCPA 1982); Elec. Power Group, LLC v. Alstom S.A., 830 F. 3d 1350, 1354–1354 (Fed. Cir. 2016) (“we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category”).
Claim limitations ()-() encompass concepts within the mental process abstract idea grouping in that that capable of being performed in the human mind, by a human using a pen and paper. Limitations ()-() include concepts that exemplify processes performed in the human mind including observations, evaluations, judgments, and/or opinions.
Furthermore, mental processes remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. See CyberSource, 654 F.3d at 1375 (“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.”).
Step 2A, Prong Two - Does the claim recite additional elements that integrate the judicial exception into a practical application? - MPEP § 2106.04:
Under the Step 2A, Prong Two analysis, the identified abstract idea to which the claim is directed does not include limitations that integrate the abstract idea into a practical application, since the recited features of the abstract idea are being applied on a computer or computing device or via software programming that is simply being used as a tool (“apply it”) to implement the abstract idea. See MPEP §2106.05(f). This conclusion follows from the claim limitations which only recite a generic outside of the abstract idea.
In addition, merely “[u]sing a computer to accelerate an ineligible mental process does not make that process patent-eligible.” Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012); see also CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) (“simply appending generic computer functionality to lend speed or efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility.”), aff’d, 573 U.S. 208 (2014). Accordingly, the additional elements of a do not transform the abstract idea into a practical application of the abstract idea.
A plain reading of the figures and associated descriptions in the specification reveals that generic processors may be used to execute the claimed steps. The additional elements are recited at a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to no more than mere instructions to apply the exception using generic computer components (See MPEP 2106.05(f)) and limits the judicial exception to a particular environment (See MPEP 2106.05(h)). Mere instructions to apply an exception using a generic computer component and limiting the judicial exception to a particular environment doesn’t integrate the abstract idea into a practical application in Step 2A. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Hence, independent claim is directed to an abstract idea.
Step 2B – Whether a Claim Amounts to Significantly More – See MPEP § 2106.05:
Under the Step 2B analysis, the additional elements are evaluated to determine whether they amount to something “significantly more” than the recited abstract idea. (i.e., an innovative concept). Here, the additional elements, such as an do not amount to an innovative concept since, as stated above in the Step 2A, Prong Two analysis, the claims are simply using the additional elements as a tool to carry out the abstract idea (i.e., “apply it”) on a computer or computing device and/or via software programming. See, e.g., MPEP §2106.05(f). The additional elements are specified at a high level of generality to simply implement the abstract idea and are not themselves being technologically improved. See, e.g., MPEP §2106.05 I.A; Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”). Thus, these elements, taken individually or together, do not amount to “significantly more” than the abstract ideas themselves.
The additional elements of the rejected dependent claims merely refine and further limit the abstract idea of the independent claims and do not add any feature that is an “inventive concept” which cures the deficiencies of their respective parent claim. None of the rejected dependent claims considered individually, including their respective limitations, include an “inventive concept” of some additional element or combination of elements sufficient to ensure that the claims in practice amount to something “significantly more” than patent-ineligible subject matter to which the claims are directed.
The elements of the instant process steps when taken in combination do not offer substantially more than the sum of the functions of the elements when each is taken alone. The claims as a whole, do not amount to significantly more than the abstract idea itself because the claims do not effect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of an electronic device itself which implements the abstract idea (e.g., the general purpose computer and/or the computer system which implements the process are not made more efficient or technologically improved); the claims do not perform a transformation or reduction of a particular article to a different state or thing (i.e., the claims do not use the abstract idea in the claimed process to bring about a physical change. See, e.g., Diamond v. Diehr, 450 U.S. 175 (1981), where a physical change, and thus patentability, was imparted by the claimed process; contrast, Parker v. Flook, 437 U.S. 584 (1978), where a physical change, and thus patentability, was not imparted by the claimed process); and the claims do not move beyond a general link of the use of the abstract idea to a particular technological environment (e.g., “” in Claim ).
Regarding Claims : These claims depend from Claim and only add further details to the steps in that independent claim and do not recite any further limitations that cause the claim(s) to be patent eligible. Rather, the limitations of dependent claims are directed toward additional aspects of the judicial exception and/or well-understood, routine and conventional additional elements that do not integrate the judicial exception into a practical application. Therefore, dependent claims are not patent eligible and are also rejected on the same grounds provided for in the rejection of Claim .
Special Definitions for Claim Language - MPEP § 2111.01(III)-(IV)
No special definitions are seen as present in the specification regarding the language used in the claims. Consequently, the words and phrases of the claims are given the plain meaning to a person of ordinary skill in the art. (See MPEP §§ 2173.01, 2173.05(a), and 2111.01).
If special definitions are present, Applicant should bring them to the attention of the Examiner and the prosecution history in the next response.
To date, Applicant has provided no indication of special definitions.
Terminology
The Examiner notes that the following terms are utilized in Applicant’s specification as follows:
:
See Instant PgPub: ¶0030
:
See Instant PgPub: ¶0040
References Cited
R1: ()
Conclusion
THIS ACTION IS MADE FINAL. 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 SCOTT A REINBOLD whose telephone number is (313)446-6607. The examiner can normally be reached on MON - FRI: 8AM - 5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Logan Kraft, can be reached on (571)270-5065. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT A REINBOLD/Primary Examiner, Art Unit 3747