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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
Acknowledgement is made of Applicant’s Information Disclosure Statement (IDS) form PTO-1149 filed 12/07/2023. This IDS has been considered.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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.
Claim 10 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The claim does not fall within at least one of the four categories of patent eligible subject matter because it is drawn specifically to a computer program. Non-limiting examples of claims that are not directed to any of the statutory categories include: products that do not have a physical or tangible form, such as information (often referred to as "data per se") or a computer program per se (often referred to as "software per se") when claimed as a product without any structural recitations. See MPEP §2106.03(I).
Claims 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Legal Framework
An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, the Office is guided by the Court’s two-part framework, described in Mayo and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, Examiners first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, Examiners turn to the second part of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (“USPTO”) published revised guidance on the application of § 101 and further updated this guidance in October 2019. This guidance is now found in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure (MPEP), and particularly Sections 2103 through 2106.07(c). See MPEP §§ 2103–2106.07(c) (9th ed., Rev. 10.2019, June 2020).
Under the 2019 Revised Guidance and the October 2019 Update, Examiners first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. 2018)) (“Step 2A, Prong Two”). 2019 Revised Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do Examiners then look, under Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Analysis
Examiners consider the claim as a whole giving it the broadest reasonable construction as one of ordinary skill in the art would have interpreted it in light of the Specification at the time of filing.
The Examiner finds, under Step 1 of the 2019 Revised Guidance, that claims 1, 9, 11, and 12 are directed to an apparatus and claims 2-8 are a method and, therefore, these claims recite a statutory category of invention.
As noted above, claim 10 is not drawn to a statutory category and fails the 101 analysis at step 1. Applicant is advised that since this claim incorporates the method of claim 2, merely amending the claim such that it recites a statutory category without additional limitations to render claim 2 claim eligible will not cure the deficiencies of this claim since it also inherits the limitations that cause claim 2 to fail the rest of the eligibility test set forth in the guidance.
Revised Step 2A, Prong One –recites a judicial exception
According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S. at 218 (emphasis added). The Memorandum instructs Examiners first to determine whether each claim recites any judicial exception to patent eligibility. 84 Fed. Reg. at 54. The Memorandum identifies three judicially-excepted groupings: (1) mathematical concepts, (2) certain methods of organizing human activity such as fundamental economic practices, and (3) mental processes. Id. at 52. Examiners primarily focus here on the first and third groupings - mathematical concepts and mental processes.
Independent claim 1 recites the limitation determine that a vehicle is approaching or is located on a weighing device which under broadest reasonable interpretation fails under the “mental process” category. Examiner notes that according to the specification, it is contemplated that a user can make the claimed determination (see ¶ [0030], a user manually indicates when approaching the scale).
Similarly, independent claim 2 recites the limitation determining, by a processor device of the computer system, that a vehicle is approaching or is located on a weighing device which also under broadest reasonable interpretation fails under the “mental process” category. Despite the step being carried out by a processor device, the step is able to be performed by a human mind. Being performed by a processor is not enough to render the limitation patent eligible. The Supreme Court has ruled that “merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention”. Alice Corporation Pty. Ltd. v. CLS Bank International 573 U.S. __, 134 S. Ct. 2347 (2014).
Revised Step 2A, Prong Two – Practical Application
Having determined that claims 1 and 2 recite abstract ideas, Examiners next look to determine whether the claims recite “additional elements that integrate the judicial exception into a practical application.” MPEP § 2106.05(a)–(c), (e)–(h); 2019 Revised 101 Guidance, 84 Reg. at 53–54. Integration into a practical application requires an additional element or a combination of additional elements in the claim to “apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” 2019 Revised 101 Guidance, 84 Fed. Reg. at 53–54; see also id. at 55 (setting forth exemplary considerations indicative that an additional element or combination of elements may have integrated the judicial exception into a practical application).
In the current instance, there are no limitations integrating the abstract ideas of claims 1 and 2 into a practical application as there is no improvement to the functioning of a computer or to any other technology or technical field, it is not used by a particular machine or to effect a particular transformation.
Step 2B–Inventive Concept
Because the Examiner has determined that claims 1 and 2 are directed to an abstract idea and they do not include additional elements that integrate the abstract idea into a practical application, the Examiner looks to whether each claim provides an inventive concept, i.e., adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field. 2019 Revised 101 Guidance, 84 Fed. Reg. at 56. That is not the case here. See Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (holding that “the ‘inventive concept’ cannot be the abstract idea itself”).
Claim 1 contains the additional limitation “when it has been determined that the vehicle is approaching or is located on the weighing device, provide, to the vehicle, information indicating that the vehicle should activate weigh mode.” Merely providing information without it resulting in any further action to be taken is considered insignificant post solution activity. See Alice pg. 15, first paragraph: “The same is true with respect to the use of a computer to obtain data, adjust account balances, and issue automated instructions; all of these computer functions are “well-understood, routine, conventional activit[ies]” previously known to the industry. Mayo, 566 U. S., at ___ (slip op., at 4). In short, each step does no more than require a generic computer to perform generic computer functions.”
Examiner further notes that the limitation “wherein the weigh mode comprises locking of a suspension system of the vehicle such that a current suspension of the vehicle is maintained when the vehicle is being weighed by the weighing device” is merely a description of the weigh mode that the vehicle that is instructed to activate, i.e. a description of the instructions provided to the vehicle.
Therefore, because there are no additional elements that can provide an inventive concept, Examiner concludes that claim 1 does not recite patent eligible subject matter.
Similarly, Claim 2 contains the additional limitation “when it has been determined that the vehicle is approaching or is located on the weighing device, providing, by the processor device and to the vehicle, information indicating that the vehicle should activate weigh mode.” Merely providing information without it resulting in any further action to be taken is considered insignificant post solution activity and as noted before that it is done using a computer is invoking a generic computer to issue automated instructions. See Alice pg. 15, first paragraph: “The same is true with respect to the use of a computer to obtain data, adjust account balances, and issue automated instructions; all of these computer functions are “well-understood, routine, conventional activit[ies]” previously known to the industry. Mayo, 566 U. S., at ___ (slip op., at 4). In short, each step does no more than require a generic computer to perform generic computer functions.”
Examiner further notes that the limitation “wherein the weigh mode comprises locking of a suspension system of the vehicle such that a current suspension of the vehicle is maintained when the vehicle is being weighed by the weighing device” is merely a description of the weigh mode that the vehicle that is instructed to activate, i.e. a description of the instructions provided to the vehicle.
Therefore, because there are no additional elements that can provide an inventive concept, Examiner concludes that claim 2 does not recite patent eligible subject matter.
Because there are no additional elements that can provide an inventive concept, the Examiner concludes that independent claims 1 and 2 do not recite patent eligible subject matter.
Claim 3 further defines the “weigh mode” which is merely a description of the weigh mode that the vehicle that is instructed to activate, i.e. a description of the instructions provided to the vehicle and therefore does not provide an inventive concept for the claim.
Claim 4 includes “obtaining, by the processor device, a weigh mode request” is also considered insignificant extra solution activity as it is automating a manual activity and considered routine and conventional generic computer functionality for the reasons given in the rejection of claims 1 and 2.
Claim 5 includes “obtaining, by the processor device, user input indicating that the vehicle is approaching or is located on the weighing device” is similar to the “obtaining information” limitation and is considered insignificant extra solution activity as it is automating a manual activity and considered routine and conventional generic computer functionality for the reasons given in the rejection of claims 1 and 2.
Claim 6 includes the steps of obtaining information indicating duration of the weighing of the vehicle and providing the information to the vehicle and providing the information to the vehicle. Merely providing information without it resulting in any further action to be taken is considered insignificant post solution activity and as noted before that it is done using a computer is invoking a generic computer to issue automated instructions. See Alice pg. 15, first paragraph: “The same is true with respect to the use of a computer to obtain data, adjust account balances, and issue automated instructions; all of these computer functions are “well-understood, routine, conventional activit[ies]” previously known to the industry. Mayo, 566 U. S., at ___ (slip op., at 4). In short, each step does no more than require a generic computer to perform generic computer functions.”
Claim 7 further recites determining that the weighing of the vehicle has been completed, which is considered and abstract idea and can be categorized as a mental process as described in the rejection of claims 1 and 2. The claim further recites providing information indicating the vehicle should deactivate weigh mode. Merely providing information without it resulting in any further action to be taken is considered insignificant post solution activity and as noted before that it is done using a computer is invoking a generic computer to issue automated instructions. See Alice pg. 15, first paragraph: “The same is true with respect to the use of a computer to obtain data, adjust account balances, and issue automated instructions; all of these computer functions are “well-understood, routine, conventional activit[ies]” previously known to the industry. Mayo, 566 U. S., at ___ (slip op., at 4). In short, each step does no more than require a generic computer to perform generic computer functions.”
Claim 8 describes the weighing device which is considered a generic field of use type limitation and imposes no meaningful limitation on the abstract idea. See MPEP §2106.05(h).
Claims 9-12 are drawn to generic components such as generically recited vehicle, control system and media that perform the method of claim 2. They are considered field of use limitations and do not impose any meaningful limitation on the abstract ideas of claim 2.
Applying the guidance set forth in the Memorandum, the Examiner concludes that claims 1-12 do not recite patent-eligible subject matter.
Allowable Subject Matter
There are no prior art rejections for claims 1-12. However, the Examiner cannot comment on the allowability of the claims until the §101 rejections are adequately addressed.
The closest prior art to the claimed invention is CN 204870428 which discloses a measuring system for determining the center of gravity for a vehicle in which the system also locks the vehicle’s suspension while the measurement is made.
US 2006/0052980 and US 2020/0082643 both generally disclose in-motion weighing systems for vehicles where the system senses the approach of a vehicle and sends and receives information with the vehicle.
However, nothing in the prior art suggests an in-motion weighing system that instructs the vehicle to lock its own suspension.
USPN 11,560,031 and USPN 5,478,974 are examples of measuring systems that use the vehicle’s own suspension system for taking weight measurements and represent the general state of the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATALIE HULS whose telephone number is (571)270-5914. The examiner can normally be reached M-F 8-5 EST.
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/NATALIE HULS/Primary Examiner, Art Unit 2855