AIA
Status of claim Set 2
Examiner thanks attorney Jim O’Sullivan for the amendment to advance prosecution.
PNG
media_image1.png
387
227
media_image1.png
Greyscale
Claims 1-3, 6 examined. Dependents from rejected claims are necessarily rejected.
Publication number: US20240312269A1
18593998 filed 03/04/2024, claims priority to JP 2023-042107, filed 03/16/2023
Response to Remarks
Applicant amendment remarks fully considered but unfortunately not persuasive.
Double patenting resolved by amendment
103 resolved by amendment
101
Examiner thanks attorney Jim O’Sullivan for the amendment to advance prosecution. And yet we still have math, mental steps, and a claim about human “behavior” (remarks p7 top, last word in line 3).
Mr. O’Sullivan may revisit the Spec, ie. US PG PUB 20240312269 and file an RCE.
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
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. The Claim(s) is/are directed to one or more abstract idea(s). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the abstract idea(s).
Step 1
The claims and their dependents are directed to one of the statutory classes (1 machine 6 process). (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
Step 2a Prong 1
The claim(s) is/are directed to
CERTAIN METHODS OF ORGANIZING HUMAN BEHAVIOR,
And
Math
and
MENTAL STEPS.
Independent claims 1, 6 similar
PNG
media_image2.png
468
837
media_image2.png
Greyscale
1. A vehicle replacement simulation [ device ] comprising:
O [a memory configured to store]
O a map information including charge facility information having road information and a location of a charge facility;
O fueling facility information having road information and the location of the fueling facility
O an electric vehicle information [ storage ] that stores electric vehicle performance information regarding traveling performance of an electric vehicle including a motor to be driven with electricity;
O [and a processor configured to execute the program and control the vehicle replacement simulation device]
O acquire from the FCD [database] system daily traveling information co llected in a predetermined period and including at least location information on an internal combustion vehicle of a user which is transmitted from the vehicle to the FCD database system
O and acquires traveling distance information including at least departure location information, parking location information on the internal combustion vehicle of the user, clock time information, and a traveling distance in the predetermined period;
O that calculate a required power amount for the electronic vehicle to travel along the same route as the internal combustion vehicle of the user from the traveling distance information on the internal combustion vehicle in the predetermined period and the electric vehicle performance information, calculates a parking time at a home of the user,
O estimate an amount of charge allowed at the home of the user based on the parking time at the home of the user, and
O estimate, from the amount of charge allowed at the home, charge information including either an amount of charge or the number of times of charge required away from the home based on the map information; and
O output the charge information to an information terminal of the user
O wherein the [processor] excludes, from the traveling information on the internal combustion vehicle, traveling information indicated the fueling facility for fueling the internal combustion engine as a destination of the internal combustion vehicle, and calculates the charge information
EPG (CAFC 2016)
PNG
media_image3.png
842
568
media_image3.png
Greyscale
Abstract
Idea
of
Simulation
+
Collect info
Analyze it
Display results
Bold = abstract idea
Additional element beyond the idea [ generic limitation generally applied ]
The claim is simulating for targeted marketing
In light of the 7 January 2019 Patent Eligibility Guidance (PEG), the claims steps set forth
Math
Mental Processes such as
concepts performed in the human mind (including an observation, evaluation, judgement, opinion)
Certain Methods of Organizing Human Activity such as
fundamental economic principles or practices (including hedging, insurance, mitigating risk)
commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)
managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
In claims 1, 6 applicant is simulating which is
MENTAL PROCESS, Concepts Relating To Data Comparisons That Can Be Performed Mentally Or Are Analogous To Human Mental Work
LONG STANDING COMMERCIAL PRACTICE
ORGANIZING HUMAN ACTIVITY
This simulation is no different in principle than to, before you leave, to check whether you have enough provisions to take the trip. All throughout human history, such provisions have been taken stock of before leaving and include sufficient water, food, petrol, wind and weather in case of sailing, etc.
The claim is an abstract idea simulation plus acquiring for abstract idea (Collecting information, analyzing it, displaying certain results of collecting/analyzing (Electric Power Group V Alstom (CAFC 2016)).
Alice
clearinghouse
implemented by computer
Here
simulation
implemented by computer
Bilski
hedge
implemented by computer
The broadest reasonable interpretation of simulating is running through a trial of what might happen.
Simulating can be done without a device (Merriam-Webster 3a, below).
Or with a simulating device (Merriam-Webster (3b, below).
PNG
media_image4.png
436
759
media_image4.png
Greyscale
Dependent claims 2 3 (generic element memory generically applied)
Collecting information, analyzing it, displaying certain results of collecting/analyzing (Electric Power Group V Alstom (CAFC 2016)).
Thus, the claims is “recite” an abstract idea (i.e. “PEG” Revised Step 2A Prong 1=Yes).
Additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to: bracketed above. Other steps do not present significantly more or integrate the idea into a practical application.
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or 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)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims are directed to an abstract idea with additional generic computer elements do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation. The claims in ordered combination are just the abstract idea implemented on a computer, the ordered combination spelling out how to do computer implement. The specification has the computer as any machine that performs the functions (Applicant’s Spec). The additional elements are not sufficient to amount to significantly more than the judicial exception. The claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, and do not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. Additionally, the claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the industry. The limitations (those beyond the abstract idea) do not improve the technical field that the abstract idea limitations invoke. Moreover, these generic limitations do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers" (citing Bilski 561 US at 610).
Prong 1 answered “YES”, the next question in Prong 2 is whether there is an integrated practical application. This judicial exception is not integrated into a practical application. In particular, the claim recites additional element – bracketed above to perform the claim steps. The elements are recited at a high-level of generality (e.g. generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component, general linking of idea to generic element. Accordingly, these additional elements do not integrate the abstract idea into a practical application for lack of any meaningful limits on practicing the abstract idea.
Step 2b
Display (output) is generic and insignificant extra-solution activity. MPEP 2106.05g and Electric Power Group
The additional elements are not sufficient to amount to significantly more than the judicial exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, and do not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. Additionally, the claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the industry.
Moreover, these generic limitations do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers"(citing Bilski 561 US at 610).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements merely detail generic computer processors and software that implement the abstract idea. The generically recited computer elements do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation. The additional element merely instruct that the execution of the abreact idea occurs on other generic technology, but does not offer any disclosure of any additional technology beyond the abstract idea itself. Moreover, the claim steps as an ordered combination do not present significantly more. The claims are not directed to an improvement in computer functionality like in Enfish v Microsoft, but rather to an abstract idea. The claims "do nothing more than spell out what it means to 'apply it on a computer'”, Intellectual Ventures I 792 F.3d p1371 (citing Alice). Nowhere in the claims or specification is there any indication that the computer, processor, medium do something unconventional such that Applicant has improved computer functionality. Applicant presents an abstract idea for which computers are invoked merely as a tool.
Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claim limitations do not improve upon the technical field that the abstract idea is applied nor do they improve upon any other technical field. The claimed limitations do not improve upon the functioning of the computer itself. Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
The further elements of the claims are merely directed to further abstract ideas (a plurality of exceptions December 16, 2014 Interim Guidance p 74625, Fed Register Vol 79 No 241) and in ordered combination pose a list of abstract ideas, and invoke merely as a tool what is conventional (device, ad inventory, computer program product, medium). There is not improvement in these items, but rather they are invoked as a tool to solve a business problem (targeted marketing), not a technical problem.
The claim limitations alone or in ordered combination do not improve upon the technical field to which the abstract idea is applied nor do they improve upon any other technical field. The claimed limitations do not improve upon the functioning of any device itself.
The additional elements alone or in combination are not sufficient to amount to significantly more than the judicial exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, and do not provide meaningful limitations beyond generic linking use of an abstract idea to a particular technological environment. Additionally, the claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions that are generic activities previously known to the industry. Moreover, these generic limitations do not lead to an integrated practical application because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers"(citing Bilski 561 US at 610). Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to an integrated practical application. The claim limitations do not improve upon the technical field that the abstract idea is applied nor do they improve upon any other technical field. The claimed limitations do not improve upon the functioning of the computer itself.
Moreover, these generic limitations do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers"(citing Bilski 561 US at 610).
Moreover, mere recitation of a machine or medium in the preamble does not make a claim statutory under 35 U.S.C. 101, as seen in the Board of Patent Appeals Informative Opinion Ex Parte Langemyr (Appeal 2008-1495). Moreover, mere mention of a piece of a computer or processing device does not confer patentability. Alice Corporation Pty. Ltd. v CLS Bank International ("Alice Corp") 573 US __ (2014). Incorporating the two-step test espoused in its recent decision in Mayo v. Prometheus 566 U.S. ___ (2012), the Court describes a first inquiry as to whether the claims at issue are directed to a patent-ineligible concept. If so, the Court requires a second inquiry as to whether the elements, individually or in combination, “transform” the nature of the claims into a patent-eligible invention. The Court described this second step as a search for an inventive concept, “i.e., an element or combination sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements merely detail generic elements that implement the abstract idea. The generically recited computer elements do not add a meaningful limitation to the abstract idea. The additional element merely instruct that the execution of the abreact idea occurs on other generic technology, but does not offer any disclosure of any additional technology beyond the abstract idea itself. Moreover, the claim steps as an ordered combination do not present significantly more. The claims are not directed to an improvement in computer functionality like in Enfish v Microsoft, but rather to an abstract idea. The claims "do nothing more than spell out what it means to 'apply it on a computer'”, Intellectual Ventures I 792 F.3d p1371 (citing Alice). Nowhere in the claims or specification is there any indication that the computer, processor, medium do something to improved hardware functionality.
The further elements of the claims are merely directed to further abstract ideas and in ordered combination pose a list of abstract ideas, and invoke merely as a tool what is generic. There is no improvement in these items, but rather they are invoked as a tool to solve a business problem (targeted marketing), not a technical problem.
Here, the claims neither improve the technological infrastructure nor provide particular solutions to challenges. Rather, in ordered combination the claim limitations spell out the steps of calculating a number using generic technology
In addition to these indisputably generic features, Applicant did not invent any of those features, and the claims do not recite them in a manner that produces a result that overrides the generic use of these known features. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014). When viewed as an ordered combination, the proposed claims recite no more than the sort of “perfectly” generic computer components employed in a customary manner that we have held insufficient to transform the abstract idea into a patent-eligible invention. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016). We must thus conclude that the claims fail step two as well.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements merely detail generic computer processors and software that implement the abstract idea. The generically recited computer elements do not add a meaningful limitation to the abstract idea because they would be generic in any computer implementation. The additional element merely instruct that the execution of the abstract idea occurs on other generic technology, but does not offer any disclosure of any additional technology beyond the abstract idea itself. Moreover, the claim steps as an ordered combination do not present significantly more. The claims are not directed to an improvement in computer functionality like in Enfish v Microsoft, but rather to an abstract idea. The claims "do nothing more than spell out what it means to 'apply it on a computer'”, Intellectual Ventures I 792 F.3d p1371 (citing Alice). Nowhere in the claims or specification is there any indication that the computer, processor, storage do something nongeneric such that Applicant has improved computer functionality. Applicant presents an idea for which computers are invoked as a tool.
By way of example, in Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described "the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’" 850 F.3d at 1339-40 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340 121 USPQ2d at 1946. In addition to the abstract idea, the claims also recited the additional element of modifying the underlying XML document in response to modifications made in the dynamic document. 850 F.3d at 1342 121 USPQ2d at 1947-48. Examples that the courts have indicated may not be sufficient to show an improvement to technology include:
-Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48
-Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)
Here, the claims neither improve the technological infrastructure nor provide particular solutions to challenges. Rather, they spell out the steps of an algorithm for organizing human behavior implemented with generic technology. In addition to these indisputably conventional features, Applicant did not invent any of those features, and the claims do not recite them in a manner that produces “a result that overrides the routine and conventional” use of these known features. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014). When viewed as an ordered combination, the proposed claims recite no more than the sort of “perfectly conventional” generic computer components employed in a customary manner that we have held insufficient to transform the abstract idea into a patent-eligible invention. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016). We must thus conclude that the claims fail step two as well.
Dependent from rejected claims are necessarily rejected.
CLAIM REJECTIONS - 35 USC § 112, b
The following is a quotation of 35 U.S.C. 112, b:
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.
Claim 1 6 (and dependents) is rejected under 35 U.S.C. 112 (b) as indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
As per claim 1, 6 no antecedent basis for FCD.
As per claim 1, 6 no antecedent basis for the vehicle in the phrase transmitted from the vehicle.
Dependent from rejected claims are necessarily rejected.
Conclusion
Pertinent prior art cited but not relied upon US20240070572
During prosecution, applicant has an opportunity and a duty to amend ambiguous claims to clearly and precisely define the metes and bounds of the claimed invention The claim places the public on notice of the scope of the patentee’s right to exclude See, eg, Johnson & Johnston Assoc Inc v RE Serv Co, 285 F3d 1046, 1052, 62 USPQ2d 1225, 1228 (Fed Cir 2002) (en banc) As stated in Halliburton Energy Servs, Inc v M-I LLC, 514 F3d 1244, 1255, 85 USPQ2d 1654, 1663 (CAFC 2008):
“We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation”
bbaggot@uspto.gov
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 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 BREFFNI X BAGGOT whose telephone number is (571)272-7154. The examiner can normally be reached M-F 8a-10a, 12p-6p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Waseem Ashraf can be reached at 571-270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
BREFFNI BAGGOT
Primary Examiner
Art Unit 3621
/BREFFNI BAGGOT/Primary Examiner, Art Unit 3621
Prosecution Insights