DETAILED ACTION
Introduction
Claims 1-20 have been examined in this application. This is the First Action On the Merits (FAOM). The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Office Action Formatting
The following is an explanation of the formatting used in the instant Office Action:
• [0001] – Indicates a paragraph number in the most recent, previously cited source;
• [0001, 0010] – Indicates multiple paragraphs (in example: paragraphs 1 and 10) in the most recent, previously cited source;
• [0001-0010] – Indicates a range of paragraphs (in example: paragraphs 1 through 10) in the most recent, previously cited source;
• 1:1 – Indicates a column number and a line number (in example: column 1, line 1) in the most recent, previously cited source;
• 1:1, 2:1 – Indicates multiple column and line numbers (in example, column 1, line 1 and column 2, line 2) in the most recent, previously cited source;
• 1:1-10 – Indicates a range of lines within one column (in example: all lines spanning, and including, lines 1 and 10 in column 1) in the most recent, previously cited source;
• 1:1-2:1 – Indicates a range of lines spanning several columns (in example: column 1, line 1 to column 2, line 1 and including all intervening lines) in the most recent, previously cited source;
• p. 1, ln. 1 – Indicates a page and line number in the most recent, previously cited source;
• ¶1 – The paragraph symbol is used solely to refer to Applicant's own specification (further example: p. 1, ¶1 indicates first paragraph of page 1); and
• BRI – the broadest reasonable interpretation.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/20/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Such claim limitations are:
(a) “a computing system” performing the determinations and providing in Claim 1 and its dependents,
(b) “a position device” performing the determining of the location, in Claim 13,
The limitation(s) invoke 112(f) because the claim limitation(s) use the generic placeholder “system” or “device” that is coupled with the above functional language, without reciting sufficient structure to perform the recited function and without the generic placeholder being preceded by a structural modifier.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: (a)
(a) specification ¶0071 states that the computing system corresponds to one or more processors and memory/algorithms for performing the functions,
(b) the specification is unclear regarding the corresponding structure of the position device, see 112(b).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 12 and 13 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.
Regarding Claim 12, the limitation “a type of the one or more facilities being within a predetermined distance of at least one of the plurality of routes” renders the claim indefinite. The limitation appears to require a distance between a route and a type of the one or more facilities. As best understood by the office, these types of data are not compatible to be compared for distance, as the route is a set of positions in space but the “type” is merely a category. It is not clear how it is determined that a type of the one or more facilities being within a predetermined distance, and whether this refers to facilities of a specific type being within a predetermined distance of at least one of the plurality of routes, or something else. The scope of the claim is therefore indefinite. For the purposes of examination, the limitation is interpreted as “facilities of a specific type being within a predetermined distance of at least one of the plurality of routes.”
Regarding Claim 13, claim limitation “a position device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Particularly, specification ¶0100 recites examples of a “location device,” but the disclosure as originally filed does not appear to recite a “position device.” It is not clear whether the position device should be understood as the location device of the specification, or something else. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For the purposes of examination, the position device is understood to be the same as the disclosed location device and therefore correspond to any of a satellite navigation positioning system (e.g. a GPS system, a Galileo positioning system, the GLObal Navigation satellite system (GLONASS), the BeiDou Satellite Navigation and Positioning system), an inertial navigation system, a dead reckoning system, positioning based on IP address, by using triangulation and/or proximity to cellular towers or Wi-Fi hotspots, or beacons.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Additionally, regarding Claim 13, the limitation “providing, by the computing system to the computing device, the one or more indications, wherein the one or more indications comprise at least one visual indication or audible indication” renders the claim indefinite. As best understood by the office, the computing system and computing device are computers coupled over a network. It is not clear whether the phrase “wherein the one or more indications comprise at least one visual indication or audible indication” means that the actual indication that is transmitted is visual or audible (i.e. the network having some visual or sound-based data transmission), or alternatively whether the phrase means that the computing system provides to the computing device some data that then results in the computing device outputting a visual indication or audible indication. The scope of the claim is therefore indefinite. For the purposes of examination, the limitation is interpreted as the computing system providing an instruction to the computing device that causes the computing device to output an indication which is visual or audible.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
(101 Analysis - Step 1 - Statutory Category) Regarding Claims 1-20, the claims are directed to one of the statutory categories of subject matter as the claims recite a process, machine, manufacture or composition of matter.
(101 Analysis - Step 2A, Prong I - Judicial Exception) Regarding Independent Claim 1, the claim recites a computer-implemented method, comprising:
determining, by a computing system for each of a plurality of routes that respectively connect a starting location to a destination, one or more travel costs associated with travelling from the starting location to the destination;
determining, by the computing system for each of the plurality of routes, one or more convenience costs associated with an availability of one or more facilities which are located away from the plurality of routes;
determining, by the computing system, based on the one or more travel costs and the one or more convenience costs, a first route from among the plurality of routes that is associated with a lowest combination of the one or more travel costs and the one or more convenience costs; and
providing, by the computing system to a computing device, route data associated with the first route for controlling one or more vehicle systems associated with navigating a vehicle.
The limitations indicated in BOLD above, under their broadest reasonable interpretation, are an abstract idea of a mental process, capable of being performed in a human mind or manually, using pen and paper (see MPEP 2106.04(a)(2)(III)).
Particularly, a person is capable of mentally or manually performing a method, comprising: determining, for each of a plurality of routes that respectively connect a starting location to a destination, one or more travel costs associated with travelling from the starting location to the destination (a person mentally thinking or manually drawing possible routes on a map (such as highway vs back roads) for a same origin/destination, and determining a travel cost such as a travel cost proportional to distance); determining, for each of the plurality of routes, one or more convenience costs associated with an availability of one or more facilities which are located away from the plurality of routes (the person mentally or manually evaluating availability of facilities, such as counting known fuel stations within a certain distance of the route, and determining a convenience cost such as a convenience cost inversely proportional to the number); determining, based on the one or more travel costs and the one or more convenience costs, a first route from among the plurality of routes that is associated with a lowest combination of the one or more travel costs and the one or more convenience costs (the person mentally or manually adding the travel and convenience costs and selecting the lowest cost route by evaluation); and providing, route data associated with the first route (the person mentally thinking of, or manually writing out the route or coordinates or directions) for controlling one or more vehicle systems associated with navigating a vehicle (the route/coordinate/directions being intended for controlling a vehicle system such as intended for output on a vehicle navigation screen or intended for autonomous driving (it is noted that the claim does not positively recite such control as part of the method and thus it is only a detail of the abstract idea of a mental process)).
Thus, the claims recite an abstract idea.
(101 Analysis - Step 2A, Prong II - Practical Application) This judicial exception is not integrated into a practical application. The limitations indicated with underlining above are additional elements in the claim. That is, the additional elements in the claim are the method being “computer-implemented,” the determining steps being “by a computing system”, and the providing being by the computing system to a computing device.
These additional elements are all recitations of generic computer components and their use, recited at a high level of generality. The claims do not provide an improvement in computer hardware or computing technology. Therefore, the claims act as mere instructions to “apply” the abstract idea using generic computer components as tools to perform the functions. The providing to a different computing device is the use of a computer in its ordinary capacity for basic tasks (e.g., to receive, store, or transmit data). This does not integrate the abstract idea into a practical application (see MPEP 2106.05(f)).
Additionally, the ordered combination of additional elements and claim as a whole are not determined to integrate the abstract idea into a practical application as the ordered combination does not add anything already present when the elements are considered separately and merely recites evaluation and output of data by a computer at a high level of generality.
(101 Analysis - Step 2B - Significantly More / Inventive Concept) The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As above, the additional elements in the claim are the method being “computer-implemented,” the determining steps being “by a computing system”, and the providing being by the computing system to a computing device.
For the same reasons as presented above, these elements are all recitations of generic computer components and their use, at a high level of generality, such that the claims act as mere instructions to “apply” the functions using a generic computer components as tools to perform the functions and instructions to use the computer for its basic tasks. This does not amount to significantly more than the abstract idea (see MPEP 2106.05(f)). Additionally, such elements are well-understood, routine, and conventional in the art (see MPEP 2106.05(d) computer functions which are recognized as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity include: ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199; Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012)).
Additionally, the ordered combination of additional elements and claim as a whole are not determined to amount to significantly more as the multiple determination steps and output are merely the application of generic computer components to an abstract idea and do not establish an inventive concept.
Thus, the claim is not patent eligible.
Regarding Independent Claim 17, the claim recites the same abstract idea as in Claim 1. The further additional elements of one or more non-transitory computer-readable media storing computer-readable instructions that when executed by one or more processors cause the one or more processors to perform the operations are the recitation of generic computer components and their use and therefore do not integrate the abstract idea into a practical application or amount to significantly more, for the same reasons presented above with respect to Claim 1.
Regarding Independent Claim 20, the claim recites the same abstract idea as in Claim 1. The further additional elements of a computing system, comprising: one or more processors and one or more non-transitory computer-readable media storing instructions that when executed by the one or more processors cause the one or more processors to perform operations are the recitation of generic computer components and their use and therefore do not integrate the abstract idea into a practical application or amount to significantly more, for the same reasons presented with respect to Claim 1.
Thus, the claims are not patent eligible.
Dependent Claims 2-16, 18, and 19 do not recite further limitations that integrate the judicial exception into a practical application or amount to significantly more.
Claim 2 recites the computer-implemented method of claim 1, wherein the first route is determined based on the one or more travel costs, the one or more convenience costs, and one or more travel criteria associated with a user, and the first route is associated with the lowest combination of the one or more travel costs and the one or more convenience costs and satisfies the one or more travel criteria. These are all further details of the abstract idea of a mental process, as a person can factor in user criteria as part of the cost factor or to filter candidate routes or the final selected route. The claim does not add any new additional elements.
Claim 3 recites the computer-implemented method of claim 2, wherein the one or more travel criteria are based on one or more preferences associated with the user relating to the one or more facilities. This is a further detail of the abstract idea of a mental process, as a person can evaluate user preferences relating to facilities, such as the user requiring a rest stop or preferring a route near charging stations. The claim does not add any new additional elements.
Claim 4 recites the computer-implemented method of claim 3, further comprising: adjusting, by the computing system, a weighting of the one or more travel costs or the one or more convenience costs based on the one or more preferences. This is a further detail of the abstract idea of a mental process, as a person can evaluate weightings of the travel cost or convenience cost, such as by mental consideration of manually by writing and solving a cost equation. The claim does not add any new additional elements.
Claim 5 recites the computer-implemented method of claim 1, wherein the one or more travel costs are based on a maximum travel time or a maximum travel distance associated with the plurality of routes. This is a further detail of the abstract idea of a mental process, as a person can base a cost on a maximum time or distance such as evaluation of a cost function of time or distance that is shaped based on some maximum amount, or assigning maximum cost to routes exceeding a maximum. The claim does not add any new additional elements.
Claim 6 recites the computer-implemented method of claim 1, wherein the one or more convenience costs are based on a priority established for each type of the one or more facilities, wherein a first facility having a priority higher than a second facility is weighted more heavily than the second facility. This is a further detail of the abstract idea of a mental process, as a person can evaluate priorities or weights for types of facilities as individual components in a cost function, mentally or manually in a written equation form. The claim does not add any new additional elements.
Claim 7 recites the computer-implemented method of claim 1, wherein the one or more travel costs are based on an estimated distance or an estimated travel time associated with each of the plurality of routes. This is a further detail of the abstract idea of a mental process, as a person can evaluate estimated distance or time to form a cost, mentally or manually in a written equation form. The claim does not add any new additional elements.
Claim 8 recites the computer-implemented method of claim 1, further comprising: generating, by the computing system, one or more indications associated with the first route, in response to determining, by the computing system, that a location of the vehicle corresponds to a distance greater than a threshold distance from a facility associated with the first route. This is a further detail of the abstract idea of a mental process, as a person can judge a location to be further than a threshold distance from a facility and generate an “indication” of such an event, such as a further mental thought or written notification. The claim does not add any new additional elements.
Claim 9 recites the computer-implemented method of claim 1, wherein the one or more facilities are prioritized based on a facility type, and the one or more facilities associated with a refueling facility type are of the highest priority. This is a further detail of the abstract idea of a mental process, as a person can weight or prioritize facilities by type and choose any weighting including refueling as highest priority. The claim does not add any new additional elements.
Claim 10 recites the computer-implemented method of claim 1, wherein each of the plurality of routes is respectively associated with a plurality of regions, and the one or more convenience costs are determined based on a number of facilities in each region. This is a further detail of the abstract idea of a mental process, as a person can draw regions on a map or mentally consider city blocks or areas associated with segments to count facilities to generate a convenience cost. The claim does not add any new additional elements.
Claim 11 recites the computer-implemented method of claim 10, wherein the one or more convenience costs are further determined based on a number of different types of facilities in each region. This is a further detail of the abstract idea of a mental process, as a person can draw regions on a map or mentally consider city blocks or areas associated with segments to count different types of facilities to generate a convenience cost. The claim does not add any new additional elements.
Claim 12 recites the computer-implemented method of claim 2, wherein the one or more travel criteria comprise the one or more facilities being within a predetermined distance of at least one of the plurality of routes, or a type of the one or more facilities being within a predetermined distance of at least one of the plurality of routes. This is a further detail of the abstract idea of a mental process, as a person can mentally or manually evaluate a criteria from a user specifying a distance to a route based on mentally known or manually drawn map data, such as by knowing locations of gas stations adjacent to a route. The claim does not add any new additional elements.
Claim 13 recites the computer-implemented method of claim 1, further comprising: determining, via a position device, a location of the computing device in relation to the first route; generating, by the computing system, one or more indications when a distance between the computing device and the first route exceeds a threshold distance, the distance being determined based on the location of the computing device via the position device; and providing, by the computing system to the computing device, the one or more indications, wherein the one or more indications comprise at least one visual indication or audible indication. The generating of one or more indications a providing of an indication are further detail of the abstract idea of a mental process, as a person can evaluate distance between a provided computing device location and route and decide when it exceeds a threshold, and think of or manually write an indication. The providing by the computing system to the computing device does not integrate the abstract idea into a practical application or amount to significantly more for the same reasons as presented above with respect to Claim 1. The position device represents an additional element in the Claim, but does not integrate the abstract idea into a practical application or amount to significantly more, as it is determined to be insignificant extra-solution activity as it is mere data collection that is necessary to perform the abstract idea, and furthermore is well-understood, routine, and conventional in the art (see e.g. US20090254254A1 at [0002]).
Claim 14 recites the computer-implemented method of claim 1, wherein the one or more facilities comprise one or more refueling stations, one or more eating establishments, one or more lavatories, or one or more recreation areas. This is a further detail of the abstract idea of a mental process, as a person can mentally or manually such facilities. The claim does not add any new additional elements.
Claim 15 recites the computer-implemented method of claim 1, wherein the one or more vehicle systems include a motor system, a steering system, or a braking system. This is a further detail of the abstract idea of a mental process, as a person can mentally or manually think of route data intended to control e.g. a steering system, such as thinking of a route with right and left turns that a vehicle should steer. The claim does not add any new additional elements.
Claim 16 recites the computer-implemented method of claim 1, wherein the computing device is integrated in the vehicle. This is an additional element in the claim but does not integrate the abstract idea into a practical application or amount to significantly more as it merely generally ties the computing device and abstract idea to the field of vehicles and furthermore is well-understood, routine, and conventional in the art (see e.g. US20130179070A1 at [0002]).
Claim 18 recites the one or more non-transitory computer-readable media of claim 17, wherein the first route is determined based on the one or more travel costs, the one or more convenience costs, and one or more travel criteria associated with a user, and the first route is associated with the lowest combination of the one or more travel costs and the one or more convenience costs and satisfies the one or more travel criteria. These are all further details of the abstract idea of a mental process, as a person can factor in user criteria as part of the cost factor or to filter candidate routes or the final selected route. The claim does not add any new additional elements.
Claim 19 recites the one or more non-transitory computer-readable media of claim 17, further comprising identifying the plurality of routes based on whether a route satisfies one or more route constraints, the one or more route constraints comprise a threshold route distance, a threshold route travel time, or a minimum distance to a refueling facility from any location along the route, the threshold route distance comprises a maximum route distance based on a distance between the starting location and the destination, and the threshold route travel time comprises a maximum travel time based on an estimated travel time between the starting location and the destination. These are all further details of the abstract idea of a mental process, as a person can factor in the stated constraints to evaluate whether a route satisfies any metric. The claim does not add any new additional elements.
Thus, the claims are not patent eligible.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-8, 11-13, 15, 17, and 18 of U.S. Patent No. 11,971,269 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the corresponding claim in the issued patent is narrower or otherwise reads on or renders obvious all features of the claims of the present invention. Below is a table showing the corresponding claims in the instant application and issued patent.
18/611,552(Instant Application)Claims: 3/20/2024
US 11,971,269 B2 Published (4/30/2024)
1, 10, 11, 15, 16
1
2-4
3
5
4
6
5
7
6
8
7
9
8
12
11
13
12
14
13
17
15
18
15
19
17
20
18
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4, 6, 7, 9, 14-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Publication US2017/0219368A1 (Meredith et al.) in view of Publication US2018/0342034A1 (Kislovskiy et al.).
Regarding Claim 1, Meredith et al. discloses a computer-implemented method (see Figure 3, [0033] functions of navigation system 325 including processor 302), comprising:
determining, by a computing system (see Figure 3, [0033] functions of navigation system 325 including processor 302) for each of a plurality of routes (see [0038] evaluation of candidate routes) that respectively connect a starting location to a destination (see [0036, 0038] current location to destination), one or more travel costs associated with travelling from the starting location to the destination (see [0042] a function (e.g. f1) associated with a planning criteria, such as [0037] route time);
determining, by the computing system for each of the plurality of routes, one or more convenience costs (see [0042] function (e.g. f2) for criteria [0037, 0041] such as point of interest criteria) associated with an availability of one or more facilities which are located away from the plurality of routes (see [0041] number of points of interest and distance from each candidate route);
determining, by the computing system, based on the one or more travel costs and the one or more convenience costs, a first route from among the plurality of routes that is associated with a lowest combination of the one or more travel costs and the one or more convenience costs (see [0042] total candidate score as weighted sum of functions, and [0043] particular candidate route that corresponds to the lowest total candidate score selected as final route).
Meredith et al. does not explicitly recite:
providing, by the computing system to a computing device, route data associated with the first route for controlling one or more vehicle systems associated with navigating a vehicle.
However, Kislovskiy et al. teaches a technique in navigation (see e.g. [0025]), including:
providing, by the computing system to a computing device (see Figure 2, [0062] components of AV Software Management System 200 (computing system) transmitting to a vehicle (see Figure 1B, [0046] having a computing device)), route data associated with the first route (see [0062] transmit transport instructions which can include routing information, for SDAV) for controlling one or more vehicle systems associated with navigating a vehicle (see [0062-0063] for SDAV to drive route, using acceleration, braking, steering in AV control system).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the route generation in a vehicle as disclosed in Meredith et al. to occur in a computing system and then be sent to a computing device as taught by Kislovskiy et al., with a reasonable expectation of success, with the motivation of enhancing the robustness and flexibility of the navigation method to be used in transportation service systems and improve safety by integration with autonomous driving technology (see Kislovskiy et al., [0001-0002]).
Regarding Claim 2, Meredith et al. discloses the computer-implemented method of claim 1, wherein
the first route is determined based on the one or more travel costs, the one or more convenience costs, and one or more travel criteria associated with a user (see [0042] first route based on total cost which is based on travel cost (f1) convenience cost (f2) and user selectable weight values (one or more travel criteria)), and
the first route is associated with the lowest combination of the one or more travel costs and the one or more convenience costs and satisfies the one or more travel criteria (see [0043] lowest total candidate score, which is [0042] based on the travel criteria, i.e. lowest score route therefore best satisfying the user’s preferences).
Regarding Claim 3, Meredith et al. discloses the computer-implemented method of claim 2, wherein
the one or more travel criteria are based on one or more preferences associated with the user (see [0046], Figure 4A, weights based on user input amounts) relating to the one or more facilities (see [0042] weight for each criteria, including [0041] point of interest criteria, or e.g. see also [0049] individual weighing of types of points of interest).
Regarding Claim 4, Meredith et al. discloses the computer-implemented method of claim 3, further comprising:
adjusting, by the computing system, a weighting of the one or more travel costs or the one or more convenience costs based on the one or more preferences (see [0042, 0046], weight value of function (travel cost or convenience cost) adjusted per user input amounts).
Regarding Claim 6, Meredith et al. discloses the computer-implemented method of claim 1, wherein the one or more convenience costs are based on a priority established for each type of the one or more facilities, wherein a first facility having a priority higher than a second facility is weighted more heavily than the second facility (see [0049] each type of POI can be separately weighted to affect the total route scoring, i.e. priority based on relative weights).
Regarding Claim 7, Meredith et al. discloses the computer-implemented method of claim 1, wherein the one or more travel costs are based on an estimated distance or an estimated travel time associated with each of the plurality of routes (see [0037, 0039] criteria for expected route time).
Regarding Claim 9, Meredith et al. discloses wherein
the one or more facilities are prioritized based on a facility type (see [0049]” each type of POI can be separately weighted,” set by the user directly or from user profile),
and further discloses one or more facilities associated with a refueling facility type (see [0037] service station, and see the Merriam Webster definition of “service station” which includes “1: gas station”).
Meredith et al. does not explicitly recite the computer-implemented method of claim 1, wherein:
the one or more facilities associated with a refueling facility type are of the highest priority.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, that the one or more facilities associated with a refueling facility type of Meredith et al. could be given the highest priority, because such priorities are set by the user, and therefore the configuration wherein the user selects the service station to be the highest priority is one possible configuration of the system of Meredith et al. One would be motivated to configure the system this way with a reasonable expectation of success, with the motivation of improving driver confidence by ensuring sufficient fuel is available as much as possible.
Regarding Claim 14, Meredith et al. discloses the computer-implemented method of claim 1, wherein the one or more facilities comprise one or more refueling stations (see [0037] service station –Merriam Webster definition of “service station” includes “1: gas station”), one or more eating establishments (see [0037] restaurant), one or more lavatories, or one or more recreation areas (see [0036] point of interest can be park).
Regarding Claim 15, Meredith et al. does not explicitly recite the computer-implemented method of claim 1, wherein the one or more vehicle systems include a motor system, a steering system, or a braking system.
However, Kislovskiy et al. teaches the technique as above,
wherein the one or more vehicle systems include a motor system, a steering system, or a braking system (see [0063]).
The motivation to combine Meredith et al. and Kislovskiy et al. was provided above in the rejection of Claim 1.
Regarding Claim 16, Meredith et al. does not explicitly recite the computer-implemented method of claim 1, wherein the computing device is integrated in the vehicle.
However, Kislovskiy et al. teaches the technique as above,
wherein the computing device is integrated in the vehicle (see [0045, 0046, 0049]).
The motivation to combine Meredith et al. and Kislovskiy et al. was provided above in the rejection of Claim 1.
Regarding Claims 17, 18 and 20, all limitations as recited have been analyzed with respect to Claims 1 and 2. Claim 20 pertains to an apparatus corresponding to the method of Claim 1. Claims 17 and 18 pertain to a non-transitory computer-readable storage medium having instructions corresponding to the method of Claims 1 and 2, respectively. Claims 17, 18, and 20 do not teach or define any new limitations beyond Claims 1 and 2, and therefore are rejected under the same rationale.
Claims 5 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Publication US2017/0219368A1 (Meredith et al.) in view of Publication US2018/0342034A1 (Kislovskiy et al.), further in view of Publication US2018/0128627A1 (Radburn).
Regarding Claim 5, Meredith et al. further discloses wherein the one or more travel costs are based on a travel time (see [0037] route time).
Meredith et al. does not explicitly recite the computer-implemented method of claim 1, wherein the one or more travel costs are based on a maximum travel time or a maximum travel distance associated with the plurality of routes.
However, Radburn teaches a technique to evaluate travel cost (see [0053] scoring of route),
wherein the one or more travel costs are based on a maximum travel time (see [0053] route over maximum length (time or distance) automatically scored with least desirable score) or a maximum travel distance associated with the plurality of routes (see [0053] route over maximum length (time or distance) automatically scored with least desirable score).
Examiner's note: since the claim uses the conjunction "or," only one of the recited alternatives is necessary in the prior art to read on this claim.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the cost component based on travel time in Meredith et al. to use maximum travel time or distance in the manner taught by Radburn, with a reasonable expectation of success, with the motivation of improving the return of routes with a reasonable time or distance by imposing a maximum and further enhancing the robustness and flexibility of the system to account for circular routes (see Radburn, [0003-0005]).
Regarding Claim 19, Meredith et al. further discloses wherein the one or more travel costs are based on a travel time (see [0037] route time).
Meredith et al. does not explicitly recite the one or more non-transitory computer-readable media of claim 17, further comprising identifying the plurality of routes based on whether a route satisfies one or more route constraints,
the one or more route constraints comprise a threshold route distance, a threshold route travel time, or a minimum distance to a refueling facility from any location along the route,
the threshold route distance comprises a maximum route distance based on a distance between the starting location and the destination, and
the threshold route travel time comprises a maximum travel time based on an estimated travel time between the starting location and the destination.
However, Radburn teaches a technique to evaluate travel cost (see [0053] scoring of route),
comprising identifying the plurality of routes based on whether a route satisfies one or more route constraints (see [0053] satisfying (i.e. within) maximum length or time constraint),
the one or more route constraints comprise a threshold route distance (see [0053]), a threshold route travel time (see [0053]), or a minimum distance to a refueling facility from any location along the route,
the threshold route distance comprises a maximum route distance based on a distance between the starting location and the destination (see [0053]), and
the threshold route travel time comprises a maximum travel time based on an estimated travel time between the starting location and the destination(see [0053]).
Examiner's note: since the claim uses the conjunction "or," only one of the recited alternatives is necessary in the prior art to read on this claim.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the constraints based on travel time in Meredith et al. to use maximum travel time or distance in the manner taught by Radburn, with a reasonable expectation of success, with the motivation of improving the return of routes with a reasonable time or distance by imposing a maxi