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 .
Response to Arguments
Applicant’s arguments and amendments filed on 06/16/2025 with respect to the previous 35 U.S.C. 101 rejection has been fully considered and is unpersuasive.
With respect to the previous 35 U.S.C. 101 rejection of claim 1, The limitations of claim 1 do not overcome the 35 U.S.C. 101 rejection. Applicant claim 1 recites “…calculating a difference between i) a branch point of the first route set in the navigation system of the trailing device and a second route set in the navigation system of the leading device and ii) a current location of the trailing device,", "comparing the calculated difference with a reference value," and "controlling the navigation system of the trailing device based on a result of the comparison of the calculated difference with the reference value.", “including controlling the navigation system of the trailing device such that, based on the calculated difference being less than or equal to the reference value, information regarding the first route and the second route is simultaneously displayed in the navigation system of the trailing device” and “controlling the navigation system of the trailing device such that, in accordance with a selection input by a user of the trailing device to the displayed information, a selected one of the first route and the second route is set in the navigation system of the trailing device…” under its broadest reasonable interpretation, the above limitations are directed to evaluating route information, comparing values, and recommending or selecting a route based on the comparison, which constitutes a mental process as enumerated in Section I of the 2018 patent Eligibility Guidance (PEG). The claimed “difference”, “comparison” and “selection” steps amount to analyzing information and making a decision based on the analysis, which can practically be performed in the human mind. The recitation of a “leading device”, “trailing device” or “navigation system” does not alter the fundamental nature of the claimed concept as these elements merely provide a technological environment in which the abstract idea is performed.
If a claim limitation, under its broadest reasonable interpretation, covers concepts performed in the human mind, then it falls within the “mental processes” grouping of abstract ideas in the 2019 PEG regardless of whether a computer is used to perform the steps more efficiently. Accordingly, these claims recite an abstract idea and in addition to outputting on display are additional elements as they amount to necessary mere data gathering or a tool to receive the data being gathered to perform the abstract idea, which is an insignificant extra- solution activity to the judicial exception.
The same updated analysis based on the new 2019 Patent Eligibility Guidance (2019 PEG) applies to the newly added claimed limitations as discussed in the previous office action.
As a result, Step 2A Prong 1 determines if a claim is directed to those grouping and subgroupings along with an explanation of why it is directed to such.
“First, the rejection should identify the judicial exception (i.e., abstract idea enumerated in Section I of the 2019 PEG, laws of nature, or a natural phenomenon) by referring to what is recited (i.e., set forth or described) in the claim and explaining why it is considered to be an exception (Step 2A Prong One). There is no requirement for the examiner to provide further support, such as publications or an affidavit or declaration under 37 CFR 1.104(d)(2), for the conclusion that a claim recites a judicial exception.”
“For abstract ideas, the rejection should explain why a specific limitation(s) recited in the claim falls within one of the enumerated groupings of abstract ideas (i.e., mathematical concepts, mental processes, or certain methods of organizing human activity) or provide a justification for why a specific limitation(s) recited in the claim is being treated as an abstract idea if it does not fall within the enumerated groupings of abstract ideas in accordance with the “tentative abstract idea” procedure in the 2019 PEG.”
In the Non-Final mailed 06/16/2025 examiner performs the analysis and clarifies that “the abstract idea noted in the independent claims…are directed to a “Mental Processes.” Hence, examiner has indicated that these identified limitations are directed to “…calculating a difference between i) a branch point of the first route set in the navigation system of the trailing device and a second route set in the navigation system of the leading device and ii) a current location of the trailing device,", "comparing the calculated difference with a reference value," and "controlling the navigation system of the trailing device based on a result of the comparison of the calculated difference with the reference value.", “including controlling the navigation system of the trailing device such that, based on the calculated difference being less than or equal to the reference value, information regarding the first route and the second route is simultaneously displayed in the navigation system of the trailing device” and “controlling the navigation system of the trailing device such that, in accordance with a selection input by a user of the trailing device to the displayed information, a selected one of the first route and the second route is set in the navigation system of the trailing device…” and has provided a justification for why these limitations fall within one of the enumerated groupings of abstract ideas (i.e. concepts performed in the human mind). This is sufficient under the guidelines of the 2019 PEG and October 2019 Update as cited above. Also, the claims do not provide any control step to control the leading vehicle or the trailing vehicle to change lanes or to stay on the same lane following the leading vehicle and in addition to the claim limitations only provide a lane recommendation/selection which can be done mentally. Accordingly, it seems reasonable for the examiner to group the abstract idea under “Mental processes.” as enumerated in Section I of the 2019 PEG.
Prong Two:
With respect to Step 2A, prong two, Integration into a practical application requires an additional element(s) 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 exception.
Applicant argues that the claimed limitations integrate the abstract idea into a practical application by controlling a navigation system and displaying route information. However, the additional elements merely amount to instructions to implement the abstract idea on a computer.
The recited acts of transmitting route information, displaying routes and receiving user selection input constitute insignificant extra-solution activity, such as data gathering and output, which do not integrate the judicial exception into practical application. See MPEP 2106.05(f).
Further the claims do not recite any limitation that controls the vehicle itself, alters vehicle operation, or change physical driving behavior. Instead, the claims merely recommend or present route information, leaving the final decision to the user. Such route recommendation can be performed mentally and does not amount a technological improvement.
Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.-see MPEP 2106.05(f). Claiming improved displaying results efficiency inherent with applying any improvement to the judicial exception itself on a computer does not provide an inventive concept. The claims do not integrate the judicial exception into a practical application. The courts found that “… if a patent’s recitation of a computer amounts to a mere instruction to ‘implement[t]’ an abstract idea ‘on . . . a computer,’ that addition cannot impart patent eligibility.” Alice Corp., 134 S.Ct. at 2358. The claimed invention does not indicate that specialized computer hardware is necessary to implement the claimed systems, similar to the claims at issue in Alice Corp. See Alice Corp., 134 S.Ct. at 2360 (determining that the hardware recited in the claims was “purely functional and generic,” and did not “offer a meaningful limitation beyond generally linking the use of the [method] to a particular technological environment, that is, implementation via computers”). The claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem. Also, limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology and so cannot be “significantly more.” Examiner notes Applicant’s citing to Enfish, LLC v Microsoft corp, 822 F.3d 1327, 1336, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016). Like the improved systems claimed in Enfish, these claims recite a specific improvement over prior systems, resulting in an improved determination of the priority evacuation area and controlling the vehicle to perform the evacuation plan” The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. The claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem. Also, limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology and so cannot be “significantly more.” Therefore, Enfish does not apply here. The Court gave examples, which included an improvement to another technology or technical field; improvement to the function of the computer itself; or some other meaningful limitation beyond generally linking the use of an abstract idea to a particular technological environment. Such as in Diamond v. Diehr, the claims were found statutory in which the Arrhenius equation is used to improve a process of controlling the operation of a mold in curing rubber parts. Examiner submits that under the current 35 U.S.C. 101 examining practice, the existence of such novel features would still not cure the deficiencies with respect to the abstract idea. See for example: Ultramercial, Inc. v. Hulu, LLC, 112 USPQ2d 1750, U.S. Court of Appeals Federal Circuit, No. 2010-1544, Decided November 14, 2014, 2014 BL 320546, 772 F.3d 709, Page 1754 last two ¶: “We do not agree with Ultramercial that the addition of merely novel or non-routine components to the claimed idea necessarily turns an abstraction into something concrete.” The instant claims are different, the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. The claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem. Lastly, dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic processor to merely carry out the abstract idea itself.
With respect to Step 2B the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a processor (using the processor as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the processor at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept.
For these reasons the rejection under 35 U.S.C. § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Applicant’s amendments and remarks filed on 09/16/2025 with respect to previous claim rejections under 35 U.S.C. 102 have been fully considered and persuasive and thus withdraw of the previous 102 and 103 rejections.
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 1-6, 8-14 and 16-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
In particular, claims are directed to a judicial exception (abstract idea) without significantly more.
Re Claim 1:
Claim 1 recites:
A method performed by a computing system for driving in a group, the method comprising:
determining a plurality of mobility devices included in a first group for group driving;
identifying a leading device among the plurality of mobility devices included in the first group;
transmitting first route information set in a navigation system of the leading device to a trailing device included in the first group together with the leading device;
setting a first route based on the first route information in a navigation system of the trailing device;
transmitting second route information set in the navigation system of the leading device to the trailing device in response to the leading device deviating from the first route;
calculating a difference between i) a branch point of the first route set in the navigation system of the trailing device and a second route set in the navigation system of the leading device and ii) a current location of the trailing device comparing the calculated difference with a reference value:
and controlling the navigation system of the trailing device based on a result of the comparison of the calculated difference with the reference value, including controlling the navigation system of the trailing device such that, based on the calculated difference being less than or equal to the reference value, information regarding the first route and the second route is simultaneously displayed in the navigation system of the trailing device,
and controlling the navigation system of the trailing device such that, in accordance with a selection input by a user of the trailing device to the displayed information, a selected one of the first route and the second route is set in the navigation system of the trailing device.
Under Step 1 Claim 1 is a system claim same as claims 2-6 and 8.
Under Step 2A -Prong 1:
The identified claim limitations that recite an abstract idea fall within the enumerated groupings of abstract ideas in Section 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance published in the Federal Register (84 FR 50) on January 7, 2019. These fall under mental process.
Claim 1 recites “a method performed by [e.g., the operations are insignificant extra-solution activity]”. These limitations, under their broadest reasonable interpretation, cover performance of the limitation as mental processes. As a person/passenger, can determine after turning the lever to the right or left in order to alert the vehicles in the adjacent lane that a possible lane change may occur and to determine whether to change lane to the adjacent lane and determine whether it is possible to perform the lane change according to the surrounding vehicles in the adjacent. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a concept performed in the human mind, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. Claims 2-6 and 8 are also abstract for similar reasons.
Under Step 2A - Prong 2; the claims recite the additional elements of “computing system”, “navigation system” and “controlling the navigation system” steps. The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea without a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, claim 1 is directed to an abstract idea without a practical application.
Under Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more that the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, claims 1-6, 8-14 and 16-17 are not patent eligible.
The independent system claim 9 recites similar limitations performed by the method of claim 1. Therefore, the non-transitory storage medium claim 17 is rejected under the same rationales used in the rejections of claim 1 outlined above.
Dependent claims 2-6, 8, 10-14 and 16 Dependent claims further define the abstract idea that is present in their respective independent claim 1 and thus correspond to Mental Processes and hence are abstract for the reasons presented above. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the dependent claims are directed to an abstract idea. Thus, the claims 1-6, 8-14 and 16-17 are not patent-eligible.
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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOSSAM M ABDELLATIF whose telephone number is (571)272-5869. The examiner can normally be reached on M-F 8 am-5 pm EST.
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/HOSSAM M ABD EL LATIF/Examiner, Art Unit 3664