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 the Application
This action is in response to the Amendment filed on 6/1/2026, and is a Final Office Action. Claims 1, 3, 5-7, 9, 11-12, 15-17, 19-24, 26, 27 are pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 5-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the confidence measure”. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction and/or clarification 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, 3, 5-7, 9, 11-12, 15-17, 19-24, 26-27 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1 is directed towards a system, thus meeting the Step 1 eligibility criterion. Claim 1 does recite the abstract concept of a commercial interaction – i.e. advertising/marketing activities or behaviors, business relations/sales activities, which has been identified as an abstract idea by the MPEP. The relevant claimed limitations include: analyze one or more of a physical characteristic of a detected scene captured from at least one of the each of the one or more cameras, a behavior of a detected vehicle in the detected scene, and a number of occupants in the detected vehicle/ analyze the retrieved historical data / retrieve historical data based on one or more of a GPS location, a date, a day of week, a time, a vehicle type, an occupant type, and an occupant number / select, based on the predictor model a display content / determine, based on the prediction, the confidence measure, and the motion data, whether the system transporting vehicle and the detected vehicle are fully stopped for at least a predicted stopping time interval, wherein the predicted stopping time interval is set to be greater than or equal to a safety threshold corresponding to a driver reaction-time margin and a braking distance margin for the system transporting vehicle and further wherein the predicted stopping time is dynamically computed as a function of at least (i) a measured current speed of the system transporting vehicle prior to stopping, (ii) a measured deceleration rate of the system transporting vehicle derived
from the motion data, and (iii) a predetermined driver reaction time parameter / in response to determining that the predicted stopping time interval is not satisfied, inhibit delivery of dynamic content and deliver a static image / in response to determining that the predicted stopping time interval is satisfied, select a media based on the prediction, wherein the media is a video segment or one or
more static images, and a length of the video segment or a display duration of the one or
more static images is based at least in part on the generated prediction and constrained by
the predicted stopping time interval and wherein, upon detecting renewed motion of the
system transporting vehicle from the motion data before expiration of the predicted stopping time interval, terminates display of the selected media and reverts to the safety message or the static image / deliver the media / display a received media. Applicant’s Spec. further describes the context of the claimed invention as pertaining to the commercial interaction realm: “When driving a vehicle, there are many advertisements placed where drivers/passengers can see them, e.g., billboards, buildings, storefronts, and other locations where businesses can be identified to a driver. Many of these locations are not directly in the driver's field of view, however, and require the driver to divert his/her attention to the billboard, storefront, etc., and away from the traffic that is closest to their vehicle. What is needed is predictive advertising systems and devices, with integrated
safety and privacy features, that are suitable for use in a mobile environment. “, “Disclosed are systems, methods and devices for presenting advertisements and content in a mobile environment.”, “Advertisements, data, messages, or entertainment are sent to the vehicle wirelessly, and exteriorly displayed at or from a rear, a side, a front or a top of the vehicle. Video content or other dynamic content is displayable when sensors indicate that the vehicle and at least one adjacent vehicle have come to a complete stop.”, “The software program or application facilitates the display of
interactive, targeted, location-based advertising, data, entertainment, messaging and/or
other content to the occupants of surrounding transportation devices wherein the location- based advertising, data, entertainment, messaging and/or other content is delivered after
analyzing input received from the surrounding area and predicting behavior of the
transportation devices, including whether the surrounding vehicles are fully stopped, and
if so, the predicted length of time that they will remain fully stopped. “ Claim 1 also recites the abstract concept of a mental concept – i.e. mental process that can be performed in the human mind or using pen/paper, including an observation/evaluation/judgment, which has been identified as an abstract idea by the 2019 PEG: analyze one or more of a physical characteristic of a detected scene captured from at least one of the each of the one or more cameras, a behavior of a detected vehicle in the detected scene, and a number of occupants in the detected vehicle/ analyze the retrieved historical data. These claimed limitations, under their broadest reasonable interpretation, cover performance in the human mind but for the recitation of generic computing elements – see below-, thus still being in the mental process category.
This judicial exception is not integrated into a practical application. Claim 1 includes the additional elements of a first device as an electronic control unit / user device / One or more cameras in communication with the first device/one or more mountable second device wherein each of the one or more mountable second device includes a display device / a non-transitory computer readable medium having computer readable instructions thereon that, when executed by a computer, cause the computer to execute operations; they represent generic computing elements and are recited at a high level of generality. The additional elements of using a machine learning algorithm comprising regression or neural network to analyze/generate data (‘generate a predictor model, wherein the predictor model comprises a machine learning algorithm based on one or more of regression-based predictive learning or neural-network-based predictive learning trained on historical data indicative of stopping events of the system transporting vehicle and surrounding vehicles, the historical data comprising image data and sensor-derived motion data including at least vehicle speed and deceleration profiles and measured actual stopping durations at signal-controlled intersections and stop-and-go traffic’ ; ‘generate, using the predictor model, a prediction based on the analyzed physical characteristics of the detected scene and the analyzed retrieved historical data, wherein the prediction includes a predicted stopping time for the system transporting vehicle or for a detected surrounding vehicle during which the vehicle is likely to remain stopped’) do no more than apply or link the use of the recited judicial exception to a particular technological environment/field of use. The additional element of data gathering via a camera (the one or more cameras are operable to capture and transmit a scene for analysis) represents insignificant extra-solution activity – ie. Data gathering. The additional element of performing the claimed limitations within a vehicular environment (first device and the second device are located in a system transporting vehicle; the display device mounted on a surface of the system transporting vehicle;) does no more than apply or link the use of the recited judicial exception to a particular technological environment/field of use. The additional elements do not , alone or in combination, improve the functioning of the computing device or another technology/technical field, nor do they apply or use the judicial exception in some other meaningful way beyond generally linking its use to a particular technological environment. The claim is directed to an abstract idea.
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception, because as noted above, the claimed computing elements represent generic computing elements; they are recited at a high level of generality. The additional element of data gathering via a camera (the one or more cameras are operable to capture and transmit a scene for analysis) represents insignificant extra-solution activity – ie. It represents a well known and commonly used means of data gathering, as known to one of ordinary skill in the art at the effective filing date of the invention; Kardesler (20210350414) describes that collecting data within vehicular environments, data such as environmental and context data, is done using sensors, including “ including one or more of a particle sensor, an air pollution sensor, a humidity sensor, a microphone or noise meter, a gyroscope, a GPS, an accelerometer, a camera, a radar system, a light detection and ranging (LIDAR) system, or the like.” – para 123. The additional elements of using a machine learning algorithm comprising regression or neural network to analyze/generate data do no more than apply or link the use of the recited judicial exception to a particular technological environment/field of use . The additional element of performing the claimed limitations within a vehicular environment does no more than apply or link the use of the recited judicial exception to a particular technological environment/field of use. The additional elements do not, alone or in combination, improve the functioning of the computing device or another technology/technical field, nor do they apply or use the judicial exception in some other meaningful way beyond generally linking its use to a particular technological environment. Therefore, Claim 1 does not amount to significantly more than the abstract idea itself. The claim is not patent eligible.
Independent claims 9 and 12 are directed to a computer readable medium and device ,respectively, for performing similar claimed limitations to those of claim 1, thus meeting the Step 1 eligibility criterion; they recite the same abstract idea as Claim 1. Claims 9, 12 perform the method of claim 1 using only generic components of a networked computer system. Therefore, claims 9, 12 are directed to an abstract idea without significantly more for the reasons given in the discussion of claim 1.
Independent claim 21 is directed to a device, thus meeting the Step 1 eligibility criterion. It recites the same abstract idea as Claim 1. The additional claimed limitations of: generate an inquiry media with a response activity for display / detect whether a response has been received / if a response activity is received, select a media for delivery based on the response activity / if no response activity is received, select a generate a new inquiry with a response activity for display recite the same abstract idea of a commercial interaction – i.e. advertising/marketing activities or behaviors, business relations/sales activities, which has been identified as an abstract idea by the MPEP. Claim 21 performs the claimed limitations using only generic components of a networked computer system. Therefore, claim 21 is directed to an abstract idea without significantly more for the reasons given in the discussion of claim 1.
Remaining dependent claims 3, 5-7, 11, 15-17, 19-20, 22-24, 26-27 further recite and narrow the abstract ideas of the independent claims themselves. The claims further include the additional element of data gathering via a camera (detect a presence of an adjacent vehicle/ the one or more second cameras are operable to capture and transmit a second device scene for analysis/receive an input message from a first device for display on the first device ), a second device having cameras in communication with the second device/projection system, camera/sensor/first device. Data gathering via a camera represents insignificant extra-solution activity; it represents a well known and commonly used means of gathering data, as known to one of ordinary skill in the art at the effective filing date of the invention; Kardesler (20210350414) describes that collecting data within vehicular environments, data such as environmental and context data, is done using sensors, including “ including one or more of a particle sensor, an air pollution sensor, a humidity sensor, a microphone or noise meter, a gyroscope, a GPS, an accelerometer, a camera, a radar system, a light detection and ranging (LIDAR) system, or the like.” – para 123. The second device having cameras in communication with the second device/camera/sensor/projection system/first device represent generic computing elements; they are recited at a high level of generality. The additional elements do not, alone or in combination with the other additional elements, improve the functioning of the computing device or another technology/technical field, nor do they apply or use the judicial exception in some other meaningful way beyond generally linking its use to a particular technological environment. Therefore, the claims do not amount to significantly more than the abstract idea itself. The claims are not patent eligible.
Relevant prior art: The prior art of record does not teach neither singly nor in combination the limitations of claims 1, 3, 5-7, 9, 11-12, 15-17, 19-24, 26-27. The most relevant prior art of record identified, Kardesler (20210350414), teaches: a first device; one or more cameras in communication with the first device, wherein the one or more cameras are operable to capture and transmit a scene for analysis to a user device; one or more mountable second device wherein each of the one or more mountable second device includes a display device; and a non-transitory computer readable medium having computer readable instructions thereon that, when executed by a computer, cause the computer to execute operations comprising analyze one or more of a physical characteristic of a detected scene captured from at least one of the each of the one or more cameras, a behavior of a detected vehicle in the detected scene from at least one of the each of the one or more cameras, and a number of occupants in the detected vehicle, retrieve an historical data based on one or more of a GPS location, a date, a day of week, a time, a vehicle type, an occupant type, and an occupant number, analyze the retrieved historical data, generate… a prediction based on the analyzed physical characteristics of the detected scene and the analyzed retrieved historical data, select a media based on the prediction, deliver the media to the display device, and display a received media on at least one of the display device, wherein the first device and the second device are located in a system transporting vehicle. However, it lacks the combination of claimed elements of the pending independent claims.
Cabrera (20190251600) teaches a vehicle-mounted directed advertisement system and method
enables a marketing user to configure an advertisement campaign, and display the advertisement, in the
form of audio-visual digital content, from a vehicle-mounted electronic display that is driven by a driving
user, and directed towards a targeted consumer in a target geographic marketing area. However, it lacks
the combination of claimed elements of the pending independent claims.
When taken as a whole, the pending independent claims and thus their respective dependent claims are not rendered obvious as the available prior art does not suggest or otherwise render obvious the noted features nor does the available prior art suggest or otherwise render obvious further modification of the evidence at hand. Such modifications would require substantial reconstruction relying solely on improper hindsight bias, and thus would not be obvious.
Response to Arguments
Applicant’s arguments have been fully considered; Applicant argues with substance:
Applicant has amended the claims to remove the recitation of associated confidence measure and non-color changing safety indicia. Accordingly, the rejection under 112 is moot and should be withdrawn.
The 35 USC 112 rejections of the previous Office Action have been overcome and have been withdrawn.
Independent claims 1, 9, 12, and 21 stand rejected under 35 U.S.C. § 101 as allegedly directed to an abstract idea (advertising/marketing activities or commercial interaction) without significantly more. Applicant respectfully traverses and submits that, as amended, the claims are directed to a specific, sensor-driven control system for a vehicle-mounted display that improves the safety and technical operation of that display in real-world traffic, and are therefore patent-eligible.
Step 2A, Prong One - limited abstract concept, if any The Office characterizes the claims as directed to the abstract idea of commercial interaction / advertising and marketing. Applicant does not concede that characterization, but even assuming arguendo that certain limitations (e.g., selecting media based on analyzed data) can be grouped with abstract "advertising/marketing activities," the amended claims recite much more than ad selection. Each independent claim now centers on an ECU-implemented control loop that governs when and how a physical display mounted on a moving vehicle is permitted to present dynamic content, based on real-time sensor data and predicted stopping behavior of surrounding vehicles. The analysis therefore properly proceeds to Step 2A, Prong Two, and Step 2B.
Step 2A, Prong Two - integration into a practical application Under MPEP § 2106.04(d), a claim that recites a judicial exception is not "directed to" that exception when the additional elements integrate it into a practical application. When viewed as a whole, the additional elements of the independent claims do exactly that. Concrete use of sensor-derived motion data As amended, each independent claim now
recites that the ECU obtains motion data indicative of motion of the system transporting
vehicle from at least one sensor comprising one or more of an accelerometer, a GPS sensor,
or a speed sensor, and uses this motion data to determine whether the system transporting
vehicle and at least one detected surrounding vehicle are moving or fully stopped. The Specification describes system 200 as including sensors 230, such as camera 308, accelerometers, GPS, and other sensors, which are used to detect whether vehicle 100 and surrounding vehicles are moving, standing still, accelerating or decelerating, and to measure rates of acceleration/deceleration. This is a specific use of physical vehicle-mounted sensors, not generic "data gathering" divorced from any technological context. Predictive model for stopping behavior tied to vehicle dynamics The independent claims
further recite generation and use of a predictor model trained on historical stopping-event
data (image and motion data) including at least vehicle speed and deceleration profiles and measured stopping durations, and using that model to generate a prediction that includes a predicted stopping time for the system transporting vehicle or a detected surrounding vehicle. The Specification explains that the system uses historical timing at particular signal-controlled intersections, combined with real-time speed, deceleration, and GPS location, to predict when vehicle 100 will stop and "the predicted length of time that they will remain fully stopped." In stop-and-go traffic, sensors record average stopping times of recent stops and use those, together with speed/deceleration and geolocation, to "make an assessment of probable future stopping times" for vehicle 100. The claimed predictor model
is thus not a generic "black box," but a specific implementation used to forecast physical
vehicle stop durations. Safety-gating logic governing a physical vehicle-mounted display Most importantly, the claims now recite that the ECU uses the motion data and the predicted stopping time to
control the operation of the display hardware in a safety-focused manner: The ECU determines, based on the motion data and the predicted stopping time, whether the system transporting vehicle and at least one detected surrounding vehicle are fully stopped and are predicted to remain fully stopped for at least a display duration of candidate dynamic media. In response to determining that either vehicle is moving, or that the predicted
stopping time is less than the display duration of the candidate dynamic media, the
ECU prohibits display of dynamic media and causes the display to present static
media comprising one or more static images or messages. In response to determining that the vehicles are fully stopped and that the predicted stopping time is at least as long as the display duration of selected dynamic media, the ECU selects media comprising a video segment having a length based at least in part on the predicted stopping time and delivers that media for display while the
vehicles remain fully stopped. While the dynamic media is being displayed, the ECU monitors motion data and, upon detecting renewed motion of the system transporting vehicle or the surrounding
vehicle, automatically terminates display of the dynamic media and reverts the
display to static media. While the system is usable for advertising, the claimed improvements lie in how the ECU controls the vehicle-mounted display so that dynamic content is only presented under sensor-verified full-stop conditions and is automatically terminated upon renewed motion. These safety-oriented controls apply equally to non-commercial dynamic content (e.g., emergency alerts) and therefore represent an improvement to the technical field of vehicle display safety, not merely an optimization of a business practice. These limitations directly reflect the Specification, which teaches that video or other
dynamic content is displayable only when sensors indicate that the vehicle and at least one adjacent vehicle have come to a complete stop, that "System 200 may prohibit the display of video at any time when vehicle 100 is moving, or when a vehicle behind or adjacent to vehicle 100 is moving," that static images are displayable when any relevant vehicle is in motion, and that as the vehicle transitions from a stopped position to a moving state, "system 200 can switch from dynamic content ... to a display of static content to reduce driver distraction." In other words, any advertising logic is used only as part of a specific safety-gating control scheme for a vehicle-mounted display: dynamic content is allowed only during sensor-verified full-stop intervals of sufficient predicted duration, and the system must revert to static content upon renewed motion. That is a concrete improvement in the operation and safety of a physical display system mounted on a vehicle, not simply "displaying ads on a generic computer."
Application to interactive inquiry/response media (claim 21) Amended claim 21 applies the same safety-gating control loop to "inquiry media with a response activity" and response-based media. The Specification describes inquiry prompts (e.g., "Flash your lights if you love Peach Pie") and displaying follow-on content based on detected responses. By requiring that dynamic inquiry and response media be displayed only during predicted full-stop intervals and be automatically terminated upon renewed motion, claim 21 likewise recites a technical control scheme for an interactive vehicle-mounted display, not a generic survey or polling activity. Taken as a whole, the additional elements recited in the independent claims integrate any abstract advertising concept into a practical application that improves the functioning of a vehicle-mounted display in a safety-critical environment. They do not merely instruct that an abstract idea be performed "on a computer," nor do they amount to insignificant extra-solution activity. See MPEP § 2106.05(a), (e). Step 2B - the claims recite "significantly more" than any alleged abstract idea Even assuming the claims were considered "directed to" an abstract idea after Step 2A, they still recite an inventive concept under Step 2B. 1. Non-conventional, non-routine ordered combination The Examiner has already conducted a prior art search and applied multiple references (including Kardesler, Burckhart, Zenoff, and Bird) against earlier versions of the claims. After Applicant's February 2026 amendments, the Examiner withdrew all rejections under §§ 102 and 103 and expressly
stated that the prior art of record "does not teach, either alone or in combination, the limitations of claims 1, 3, 5-7, 9, 11-12, 15-17, 19-24, and 26-27." In particular, none of the cited art discloses:
o A predictor model that estimates a vehicle stopping time using historical
stopping-event data and real-time sensor data;
o A control loop that fuses that predicted stopping time with real-time motion sensor
readings for both the screen vehicle and surrounding vehicles; and
o Safety-gating logic that permits dynamic media only during predicted full-stop
intervals of sufficient length and otherwise enforces display of static content, with
automatic termination/reversion upon renewed motion.
Because the Office has already acknowledged that this combination is not taught or suggested by the art, it cannot reasonably be characterized as "well-understood, routine, conventional activity" in the field of vehicle-mounted advertising displays. The additional ECU- and sensor-based control limitations, taken together, therefore supply an "inventive concept" under Step 2B.
2. Technical improvement to another technology / technical field The Federal Circuit and
the USPTO recognize that improving the functioning of a particular technology or technical field can provide an inventive concept. Here, the claimed inventions improve the technical
operation of vehicle-mounted exterior displays in the context of moving traffic:
o The system reduces driver distraction and collision risk by prohibiting video
whenever the host vehicle or an adjacent vehicle is moving and by ensuring that
dynamic content is only shown when the screen vehicle and at least one surrounding
vehicle are fully stopped.
o It further ensures that dynamic video is sized to a predicted stop interval, reducing
partial, abruptly-cut advertisements, which is both a safety and technical usability
improvement. o The automatic reversion from dynamic to static upon renewed motion is
implemented via real-time monitoring of physical sensor signals, not by human
intervention. These improvements would apply equally if the dynamic content were non-commercial
safety announcements or emergency warnings; the improvement lies in how the display hardware is controlled in response to vehicle dynamics, not in any particular business model. The claims therefore recite significantly more than an abstract "advertising" idea. 3. More than generic computer implementation The March 9 Office Action suggests that the recited computer and sensors are "generic computing elements" performing "insignificant extra-solution activity." As amended, that characterization is no longer accurate:
o The sensors (camera, accelerometer, GPS, speed sensors) are not merely collecting
data; they supply the core real-time state information (moving vs. stopped, speed profiles, deceleration) that determines whether dynamic content is allowed at all.
o The ECU is not merely executing generic instructions; it enforces specific,
mandatory safety behaviors of the display subsystem tied to vehicle kinematics (e.g.,
disabling dynamic content upon motion, selecting dynamic content only when the
predicted stop duration meets a threshold, and forcing reversion to static upon
renewed motion).
o The predictor model is not invoked for abstract analytics; it is used to compute a
physical stopping-time window that constrains the duration and timing of display of
dynamic media.
These are specific, technical uses of the computer and sensors that go beyond merely "implementing an abstract idea on a generic computer." For at least the reasons above, claims 1, 3, 5-7, 9, 11-12, 15-17, 19-24, 26-27, as amended, are directed to patent-eligible subject matter. They recite a specific ECU- and sensor-implemented control system that improves the safety and operation of vehicle-mounted displays in moving traffic, integrating any advertising concept into a practical application and providing an inventive concept beyond any alleged abstract idea. Applicant respectfully requests that the rejection under 35 U.S.C. § 101 be withdrawn.
As noted above, the pending claims do recite an abstract idea, and the additional elements do not, alone or in combination, integrate the recited abstract idea into a practical application nor do they represent significantly more than the abstract idea itself. Applicant’s Spec. further describes the context of the claimed invention as pertaining to the commercial interaction realm and describes the claimed invention as seeking to, when implemented, at best optimize a business practice/goal: “When driving a vehicle, there are many advertisements placed where drivers/passengers can see them, e.g., billboards, buildings, storefronts, and other locations where businesses can be identified to a driver. Many of these locations are not directly in the driver's field of view, however, and require the driver to divert his/her attention to the billboard, storefront, etc., and away from the traffic that is closest to their vehicle. What is needed is predictive advertising systems and devices, with integrated safety and privacy features, that are suitable for use in a mobile environment. “, “Disclosed are systems, methods and devices for presenting advertisements and content in a mobile environment.”, “Advertisements, data, messages, or entertainment are sent to the vehicle wirelessly, and exteriorly displayed at or from a rear, a side, a front or a top of the vehicle. Video content or other dynamic content is displayable when sensors indicate that the vehicle and at least one adjacent vehicle have come to a complete stop.”, “The software program or application facilitates the display of interactive, targeted, location-based advertising, data, entertainment, messaging and/or other content to the occupants of surrounding transportation devices wherein the location- based advertising, data, entertainment, messaging and/or other content is delivered after analyzing input received from the surrounding area and predicting behavior of the transportation devices, including whether the surrounding vehicles are fully stopped, and if so, the predicted length of time that they will remain fully stopped. “ Selecting and presenting targeted advertising content, and preventing display of dynamic advertising content when it would be unsafe or distracting represents a business practice/goal, not other technology/technical field; thus, improving this practice pertains to a business practice optimization, not to an improvement to other technology/technical field. The pending claims, when implemented, do not improve the functioning of the device itself, or other technology/technical field.
Examiner notes that the 35 USC 101 analysis and the prior art analysis represent distinct and separate analyses. As per MPEP 2106: “The Supreme Court’s decisions make it clear that judicial exceptions need not be old or long-prevalent, and that even newly discovered or novel judicial exceptions are still exceptions. For example, the mathematical formula in Flook, the laws of nature in Mayo, and the isolated DNA in Myriad were all novel or newly discovered, but nonetheless were considered by the Supreme Court to be judicial exceptions because they were “‘basic tools of scientific and technological work’ that lie beyond the domain of patent protection.” Myriad, 569 U.S. 576, 589, 106 USPQ2d at 1976, 1978 (noting that Myriad discovered the BRCA1 and BRCA1 genes and quoting Mayo, 566 U.S. 71, 101 USPQ2d at 1965); Flook, 437 U.S. at 591-92, 198 USPQ2d at 198 (“the novelty of the mathematical algorithm is not a determining factor at all”); Mayo, 566 U.S. 73-74, 78, 101 USPQ2d 1966, 1968 (noting that the claims embody the researcher's discoveries of laws of nature). The Supreme Court’s cited rationale for considering even “just discovered” judicial exceptions as exceptions stems from the concern that “without this exception, there would be considerable danger that the grant of patents would ‘tie up’ the use of such tools and thereby ‘inhibit future innovation premised upon them.’” Myriad, 569 U.S. at 589, 106 USPQ2d at 1978-79 (quoting Mayo, 566 U.S. at 86, 101 USPQ2d at 1971). See also Myriad, 569 U.S. at 591, 106 USPQ2d at 1979 (“Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry.”). The Federal Circuit has also applied this principle, for example, when holding a concept of using advertising as an exchange or currency to be an abstract idea, despite the patentee’s arguments that the concept was “new”. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15, 112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014). Cf. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) (“a new abstract idea is still an abstract idea”) (emphasis in original).” See Office Action above for the detailed, reasoned 35 USC 101 analysis.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee 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 ALEXANDRU CIRNU whose telephone number is (571)272-7775. The examiner can normally be reached on M-F 9:00am-5pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Ilana Spar can be reached on (571) 270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571- 273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Sincerely,
/Alexandru Cirnu/
Primary Patent Examiner, Art Unit 3622
6/5/2026
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