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 . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
DETAILED ACTION
This Final Office Action is in response Applicant communication filled on 10/23/2025.
I. Status of Claims
Claims 1,6,10 are independent and have been amended by Applicant.
Claims 5,9,13 are dependent and have been canceled by Applicant.
Claims 18,19,20 are dependent and have been newly added by Applicant.
Claims 1-4, 6-8, 10-12, and 14-20 are currently pending of which:
Claim 3 remains withdrawn from consideration as directed to a non-elected invention.
Claims 1,2,4,6-8,10-12,14-20 are currently under examination and rejected as follows.
Response to Applicant’s amendments / arguments
Applicant’s 10/23/2025 amendment necessitated new grounds of rejection in this action.
II. Response to Applicant’s rebuttal arguments on 35 USC 103 rejection.
Prior art argument #1: Remarks 10/23/2025 p.12 ¶2 -¶3 argues that while Lee et al, US 20230294722 A1 by Applicants Hyundai and Kia teaches at ¶ [0071] "the controller 150 may be configured to capture the exterior and interior of the eco-friendly vehicle with at least one or more cameras disposed in the eco-friendly vehicle, and store the captured image”, it is argued that Lee does not, disclose or suggest the controller detects an act of the service staff turning off camera.
Examiner fully considered the prior art argument #1, but said argument is rendered moot in view of new grounds of rejection as necessitated by the Applicant’s amendment. First, the Examiner follows the broadest reusable interpretation test, per MPEP 2111, and submits that here the above amended and contested limitation of independent Claims 1,6,10, uses conjunction “or”, as in “detecting”, “an act or omission of the service staff”. The act and omission are distinct as corroborated by the non-limiting examples of Original Specification ¶ [0054] 3rd-4th sentences. While the amended independent Claims 1,6,10, further narrow down “the act” to include “turning off the camera”, said Claims 1,6,10 are mute regarding what the distinct “omission” entails. Based on said claim construction and interpretation, the Examiner respectfully submits that the contested limitation can still be met by a prior art teaching or suggesting “omission of the service staff”, regardless of “the act” of “turning off the camera” as claimed by the alternative introduced by the conjunction “or”. Thus, “turning off the camera” does not need to be taught by a prior art that teaches an example of “omission”. Should the Applicant desire a different claim interpretation, Applicant may amend the claims as supported by the Original Disclosure.
Prior art argument #2: Remarks 10/23/2025 p.12 ¶4 further argues that Lee also does not disclose or suggest that “the controller is further configured to: automatically select one of the charging service or the battery replacement service according to a positional relationship between the service staff and the parking location” as amended at independent Claims 1,6,10.
Examiner fully considered the argument which is moot in view of new grounds of rejection as necessitated by the Applicant’s amendment. First, the Examiner also investigates the claim construction of the contested limitation above, and submits that given the lack of grammatical comma [,] between the expression “battery replacement service” and the expression “according to”, the claim interpretation could be argued as selection, in the alternative, [as introduced by conjunction “or”], of “charging service” [regardless of positional relationship between the service staff and the parking location] or “the battery replacement service according to a positional relationship between the service staff and the parking location”. Simply put, given the lack of the grammatical comma, an argument can be made that the prepositional phrase “according to” only applies to “the battery replacement service”, but does not necessarily apply to the select[ion] [of] “one of the charging service”. Thus, an argument can be made that, a prior art that would teach or suggest selection of charging service at any broad level of automation would meet the contested limitation regardless of positional relationship between the service staff and the parking location. Based on such claim construction and ensuing claim interpretation, the Examiner submits that Anand et al, US 20230394389 A1, by Honda Ltd, teaches or suggests “automatically select one of the charging service” at Anand ¶ [0021] 1st sentence: electronic device 102 include logic, circuitry, interfaces, and/or code to manage assignment [or selection]…of tasks related to a service request for a vehicle (vehicle 106). For example, at ¶ [0033] 1st sentence electronic device 102 determine an operation to recharge battery unit of vehicle 106. ¶ [0052] 2nd sentence noting a different example where electronic device 102 determine current SOC [state of charge] is less than a defined threshold level and controls selection of the charging service request
However, in an abundance of caution, the Examiner submits, in the arguendo, without conceding, that even a claim interpretation where the expression “according to a positional relationship between the service staff and the parking location” would also pertain to “select one of the charging service” would still be taught or suggested by Anand as follows: “the controller is further configured to automatically select one of the charging service” (Anand ¶ [0021] 1st sentence: electronic device 102 [or controller] include logic, circuitry, interfaces, and/or code to manage assignment [or selection] … of tasks related to a service request for a vehicle (such as vehicle 106. For example, at ¶ [0033] 1st sentence electronic device 102 determine an operation to recharge battery unit of the vehicle 106. For example, at ¶ [0052] 2nd sentence electronic device 102 determine current SOC [state of charge] is less than a defined threshold level and controls selection of the charging service request. Most importantly per ¶ [0061] 1st-2nd sentences: Throughout a duration of the fulfilment of service request [i.e. charging mapped above], availability and location of workers may change with time. Therefore, electronic device 102 may update the pool of workers dynamically within the duration of the fulfilment of the service request, based on the availability of workers in locations that are within a defined distance from the initial location (i.e. second location) of the vehicle 106 or the determined location (i.e., first location) for the primary task. For example, at ¶ [0059] 5th sentence: The selection of the store within the threshold distance may minimize at least one of: time required for a worker to reach the third location from a present location of the worker, a time required for the worker to reach the first location from the third location, a charge/fuel required for the worker to travel to third location from present location, and charge/fuel required for the worker to travel to the first location from the third location. Other examples at ¶ [0062]) “or the battery replacement service”; (Anand ¶ [0021] 1st sentence: electronic device 102 [or controller] include suitable logic, circuitry, interfaces, and/or code to manage assignment [or selection] and fulfilment of tasks related to a service request for a vehicle (such as the vehicle 106). For example, at ¶ [0055] 2nd sentence electronic device 102 determine that a primary task includes an operation to replace first component of vehicle 106 and an operation to procure a second component as a replacement. ¶ [0056] 1st sentence: the first component to be replaced may be a discharged battery unit of vehicle 106 and the second component to replace the first component may be a fully or partially charged battery unit. Most importantly per ¶ [0061] 1st–2nd sentences: Throughout a duration of the fulfilment of service request [i.e. battery replacement mapped above], availability and location of workers may change with time. Therefore, electronic device 102 may update the pool of workers dynamically within the duration of the fulfilment of the service request, based on the availability of workers in locations that are within a defined distance from the initial location (i.e. second location) of the vehicle 106 or the determined location (i.e., first location) for the primary task. For example at ¶ [0059] 5th sentence: The selection of the store within the threshold distance may minimize at least one of: time required for a worker to reach the third location from a present location of the worker, a time required for the worker to reach the first location from the third location, a charge/fuel required for the worker to travel to the third location from the present location, and charge/fuel required for the worker to travel to the first location from the third location. Other examples, at ¶ [0062]) “according to a positional relationship between the service staff and the parking location” (Anand ¶ [0061] 1st–2nd sentences: Throughout a duration of the fulfilment of service request [i.e. charging or battery replacement mapped above], availability and location of workers may change with time. Therefore, electronic device 102 may update the pool of workers dynamically within the duration of the fulfilment of the service request, based on the availability of workers in locations that are within a defined distance from the initial location (i.e. second location) of the vehicle 106 or the determined location (i.e., first location) for the primary task. For example at ¶ [0059] 5th sentence: The selection of the store within the threshold distance may minimize at least one of: time required for a worker to reach the third location from a present location of the worker, a time required for the worker to reach the first location from the third location, a charge/fuel required for the worker to travel to the third location from the present location, and charge/fuel required for the worker to travel to the first location from the third location. Other examples at ¶ [0062]).
Thus, the prior art teaches or at least suggests the amended and contested limitation.
Accordingly, the Prior art argument #2 is found unpersuasive.
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III. Response to Applicant’s rebuttal arguments on 35 USC 101 rejection.
A. The Claims Are Not "Directed to" Judicial Exception
SME Argument #1: Remarks 10/23/2025 p.14 last ¶-p.15 ¶1, p.15 ¶4 argues the claims
recite tangible devices and specific operations to solve a technical problem in mobility as service industry, such as vehicle charging/battery replacement for users. In particular, Applicant argues that the amended independent claims recite tangible devices (e.g. camera or a sensor, a vehicle, a battery installed in a user vehicle, mobile device, etc.) and specific operations (e.g. turning off the camera, charging a battery installed in the user vehicle, replacing the battery installed in the user vehicle with another battery, transmitting instruction data to a mobile device of the service staff, etc.) performed in a specific order to solve technical problems. Also Remarks 10/23/2025 p.15 last ¶-p.16 ¶1 argue that the claims are not directed to an abstract idea because they do not monopolize or "preempt" any abstract idea. Further, Remarks 10/23/2025 p.16 ¶4 argues that the operations in amended independent claims (charging a battery installed in the user vehicle, replacing the battery installed in the user vehicle with another battery, transmitting instruction data to a mobile device, etc.) have nothing to do methods of organizing human activities and cannot be performed by people in their minds. Finally, Remarks 10/23/2025 p.17 ¶1 argues that the Office fails to point to specific claim limitation(s) that recites (sets forth or describes) the judicial exception [and] explain why those claim limitations set forth or describe a judicial exception.
Examiner considered the SME#1 argument but respectfully disagrees fining it unpersuasive.
Examiner starts from Applicant’s admission at Remarks 10/23/2025 p.14 last ¶ to p.15 ¶ that the claims seek to solve a problem in mobility as a service industry. Also as later admitted by Applicant at Remarks 10/23/2025 p.20 ¶7 and corroborated by Original Specification ¶ [0005]-¶ [0006]: “In a service to charge vehicles on behalf of users, the users are likely to feel uneasy about having other people enter the vehicles. It would be helpful to improve the sense of security in agent-type services such as a service to charge vehicles on behalf of users”. [bolded emphasis added]. Also, Original Specification ¶ [0024] “According to the present embodiment, the user can be notified if the service staff 11 behaves suspiciously or neglects to perform works that should be performed during the provision of the service. Thus, the sense of security in agent-type services is improved”. Based on the Applicant’s own admission, it can be seen that solving an “uneasy”, thus behavioral feeling, of customers, in a “service” oriented business, where workers are contacted and supervised to provide a service, has more to do with the entrepreneurial or abstract organizing of human activities and/or computer-aided mental processes, and nothing to do with an actual improvement in actual technology. At most, such alleged improvement would correspond to an improvement in the abstract exception itself, namely addressing the unease of customers having other users (i.e. agent, valet, contractor, station attendant or any other worker etc.) servicing their vehicle as part of an attempt at improving the organizing of human activities. Yet, MPEP 2106.05(a) II ¶2 is clear that an improvement in the abstract idea is not improvement in actual technology. Similarly, MPEP 2106.04 I cites Myriad, 569 U.S. at 591, 106 USPQ2d at 1979 to stress that even a “groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry”. Also, the “Myriad” rationale, as cited by MPEP 2106.04 I above, was further corroborated by SAP Am, Inc v InvestPic as also cited by MPEP 2106.04(a)(2) I. C (i). Specifically, in SAP Am Inc v InvestPic, LLC, 898 F.3d 1161, 127 U.S.P.Q.2d 1597 (Fed. Cir. 2018), the Federal Circuit clarified that “even if one assumes that the techniques claimed are groundbreaking, innovative, or even brilliant those features are not enough for eligibility because their innovation is innovation in ineligible subject matter. An advance of that nature is ineligible for patenting”. “no matter how much of an advance in the field the claims [would] recite, the advance [would still] lie entirely in the realm of abstract ideas with no plausibly alleged innovation in non-abstract application realm”. Here too, no matter how much of an advance in the dispatching, monitoring and notification of service workers in the mobility service field, the claims would provide, said advance would still lie entirely in the realm of the abstract organizing human activities [MPEP 2106.04(a)(2) II] and/or the observation, evaluation and judgment of computer-aided mental processes [MPEP 2106.04(a)(2) III C #1,#2,#3] with no plausibly of the Applicant’s alleged innovation entering the non-abstract realm. Based on such case law and MPEP tests, the Examiner submits, in the arguendo, without conceding, that even a groundbreaking, innovative or brilliant system, method and product that allows dispatching, monitoring, and notification of, or about, a mobile worker to provide a service at a vehicle, would similarly not render the claims eligible, no matter if such service is “charging a battery installed in the user vehicle”, akin to refueling, or “replacing the battery installed in the user vehicle”, akin to services performed by a station attendant or worker at a full service gas station, or services performed by contractor or valet at a vehicle valet service business. Said differently, said dispatching, monitoring or detecting, and subsequent notification, would still represent, under MPEP 2106.04(a)(2) II A, fundamental practices, with the term fundamental being further explained by MPEP 2106.04(a)(2) II A as not used in the sense of necessarily being "old" or "well-known" but rather as building block of modern economy. Here, said “dispatching” and “instruction” of a mobile worker to provide a service at a vehicle and its subsequent best business practice of supervising or monitoring for “omission” of the abstract service or “an act” of “turning off the camera” do constitute such building blocks of modern economy, with the use of “camera or a sensor”, “mobile device”, etc. and the specific instructions of the worker in “turning off the camera, charging a battery installed in the user vehicle, replacing the battery installed in the user vehicle with another battery, transmitting instruction data to a mobile device of the service staff” being still associated with the fundamental constituents of dispatching, detecting, and notification, not used in the sense of necessarily being "old" or "well-known", but rather as building blocks of modern economy. At most such “camera or a sensor”, “mobile device” etc. would represent computer-aids [MPEP 2106.04(a)(2) III C#1,2,3] or additional computer-based elements that would apply the abstract idea [MPEP 2106.05(f)(2)] and/or narrow it to a filed of use or etchnoglical environment [MPEP 2106.05(h)], none of which would render the claims patent eligible. The Examiner’s rationale was also echoed in In re Bilski, where judge Mayer, J. remarked that: “Patents granted in the wake of State Street have ranged from the somewhat ridiculous to the truly absurd. See, e.g., U.S. Patent No. 5,851,117 (method of training janitors to dust and vacuum using video displays”. Here, similar to judge Mayer’s remark in In re Bilski, the current independent Claims 1,6,10 and dependent Claims 4,8,12 analogously use “video” to audit how a “service is provided”, with the parent independent Claims 1,6,10 referring to “an act” of turning “off the camera” “or omission of the service staff”, “while the service is provided”, “that is different from” [what is being expected]. This audit practice also bears resemblance to visually monitoring and alerting of a law enforcement on duty to obscure or tamper a body worn surveillance camera. Similar best business practices of monitoring of camera tampering by employees commonly occurs in other industries such as: banking, retail, casino operations etc. Here, detecting the act of “turning off the camera” at independent Claims 1,6,10 constitutes, along with the other aforementioned acts, such a best business practice, as a building block of modern economy tested per MPEP 2106.04(a)(2) II A ¶2. Additionally or alternatively such monitoring or detecting could be also agued as a computer-aided observation as tested per MPEP 2106.04(a)(2) III C, #1,#2,#3 and MPEP 2106.04(a)(2) III ¶2, followed by subsequent evaluation and judgment as also tested per MPEP 2106.04(a)(2) III ¶2.
With respect to the preemption or monopolizing argument, as raised by Remarks 10/23/2025 p.15 ¶3-p.16 ¶1, the Examiner points to MPEP 2106.04 “Eligibility Step 2: Whether a Claim is Directed to a Judicial Exception I” & “MPEP 2106.07(b) Evaluating Applicant’s Response” and submits that Courts do not use the narrowing argument as stand-alone test for eligibility. This is often referred to as the preemption argument. For example, even though the claims in “Flook” did not wholly preempt mathematical formula, and the claims in “Mayo” were directed to narrow laws that may have limited applications [as argued here at Remarks 10/23/2025 p.15 ¶3-p.16 ¶1], the Supreme Court nonetheless held them ineligible because they failed to amount to significantly more than the recited exceptions (Flook at 589-590; Mayo at 1302 cited at July 2015 Update: Subject Matter Eligibility p.8 Section VI, p.11 footnotes 26 to 29). Examiner also submits that the Federal Circuit followed the Supreme Court’s lead in rejecting arguments that a lack of total preemption equates with eligibility (buySafe 765 F.3d at 1355; Ultramercial, 772 F.3d at 716. Also “Fairwarning Page IP, LLC v. Iatric Sys., Inc. U.S. Court of Appeals Federal Circuit, No. 2015-1985 October 11, 2016, 2016 BL 337879, 120 USPQ2d 1293” citing “Ariosa”. Also “McRO Inc. v. Bandai Namco Games Am. Inc. U.S. Court of Appeals Federal Circuit, Nos. 2015-1080-1081,-1082,-1083,-1084,-1086,-1087,-1088,-1089,-1090,-1092,-1093,-1094,-1095,-1096,-1097,-1098,-1099,-1100,-1101, September 13, 2016, 2016 BL 297537, 837 F.3d 1299, 120 USPQ2d 1091” at p.1102 last ¶ 1st sentence, and Synopsys, Inc. v Mentor Graphics Corp, U.S. Court of Appeals Federal Circuit, No 2015-1599, October 17,2016,2016 BL 344522,839 F3d 1138” citing Ariosa.
Instead, the questions of preemption are inherent in the two-part framework from “Alice Corp” and “Mayo” and are resolved by using this framework to distinguish between preemptive claims, and “those that integrate the building blocks into something more. Yet, it is important to note that while a preemptive claim may be ineligible, absence of complete preemption does not guarantee that the claim is eligible. Even arguing that there are other ways to practice not to preempt an abstract idea, does not make the claim “less abstract” and eligible (“OIP Technologies, Inc. v. Amazon.com, 115 USPQ2d 1090 at page 1092 2nd to last ¶ citing buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)” and “Accenture Global Servs., GmbH v. Guidewire Software, 728 F.3dast 1345”), or said differently “the availability of other possible computer-implemented methods […] does not assuage fears of blocking further innovation” (The Money Suite Co. v 21st Century Ins. & Fin. Co. v 21st Century Ins. & Fin again citing OIP Techs, Inc. v. Amazon.com, Inc., No. C-12-1233 EMC, 2012 WL 3985118, at *12 N.D. Cal. Sept 11, 2012. Also “[w]here a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.” “Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)”. “OIP Tech., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed Cir. 2015)” further corroborated by “MPEP 2106.05(h)”. Said differently, mere restatement of what was already determined as abstract idea by narrowing or reformulating the abstract idea is not enough to save the claims from ineligibility (“BSG Tech LLC v. BuySeasons, Inc., U.S. Court of Appeals, Federal Circuit, No. 2017-1980, August 15, 2018, 2018 BL 291291, 899 F.3d 1281”, p.1695 citing “SAP Am Inc. v. InvestPic LLC, No. 2017-2081, at*14, Fed. Cir May 15, 2018”). Indeed, limiting or narrowing of the abstract idea does not render the claims any less abstract. For example, MPEP 2106.04 I ¶3 cites Mayo, 566 U.S. at 79-80, 86-87, 101 USPQ2d at 1968-69, 1971 to state claims directed to "narrow laws that may have limited applications" [were still] held ineligible. Similarly, MPEP 2106.04 I cites “Flook, 437 U.S. at 589-90, 198 USPQ at 197” to state that claims that did not "wholly preempt the mathematical formula" held ineligible.
As per Applicant’s criticism at Remarks 10/23/2025 p.16 ¶2 that the Office fails to identify any specific claim element that recites a mathematical algorithm or formula, the Applicant does not appear to have indicated anywhere where the Non-Final Act 10/07/2025 found the claims reciting, describing or setting forth the mathematical algorithm or formula.
As per the Applicant’s criticism at Remarks 10/23/2025 p.17 ¶1 that the Office fails to point to specific claim limitation(s) that recites (sets forth or describes) the judicial exception [and] explain why those claim limitations set forth or describe a judicial exception, the Examiner directs the Applicant to Non-Final Act 10/07/2025 p.3 ¶3-p.6 reincorporated herein that clearly shows
specific claim limitations that recite, describe or set forth the judicial exception along with many explanations of why those claim limitations set forth or describe a judicial exception.
Based on the preponderance of legal evidence demonstrated above, the Examiner submits that the SME Argument #1 is unpersuasive.
SME Argument #2: Remarks 10/23/2025 p.17 ¶3-p.18 argues that since the Office does not argue that the claims recite any other judicial exception and does not identify a tentative abstract idea the claims are therefore eligible under prong one.
Examiner fully considered the SME Argument # 2 but respectfully disagrees reincorporating herein all the findings and rationales at Non-Final Act 10/07/2025 p.3 ¶3-p.6. Thus, the Applicant’s SME Argument # 2 is found unpersuasive.
SME argument #3: Remarks 10/23/2025 p.19 ¶2-p.20 again argues that the above subject matter of amended claim 1 integrates any purported judicial exception into a practical application of improving the sense of security in mobility-as-a-service industry through the recited operations citing Original Specification ¶ [0008], ¶ [0024].
Examiner fully considered the SME argument # 3 but respectfully disagrees reincorporating herein all the findings and rationales at SME argument #1 reincorporated herein.
In summary the alleged improvement in mobility-as-a-service industry would at most represent an improvement in the abstract exception itself but not an improvement in actual technology. For example, as corroborated by the current Original Specification ¶ [0024], as cited by Remarks 10/23/2025 mid-p.20, the user can be notified if service staff 11 behaves suspiciously or neglects to perform works that should be performed during the provision of the service. Thus, the alleged improvement would at best be entrepreneurial and abstract in supervising employees as opposed to an actual improvement in actual technology technological. Based on the preponderance of legal and factual evidence above, it is clear that the alleged improvement remains integral to the abstract exception identified above, and, as such, cannot integrate said abstract exception into a practical appclaition. Thus, the SME argument #3 is unpersuasive.
B. The Claims Amount to "Significantly More" than Any Abstract Idea
Remarks 10/23/2025 p.21 ¶3 argues that claim 1 provides a notification apparatus that performs specific operations that are not well-understood, routine, or conventional.
Examiner fully considered the Applicant’s argument B but respectfully disagrees, because as identified above the claims still recite, describe or set forth the abstract exception, with the recited level of automation possibly representing computer-aids to said abstract exception (MPEP 2106.04(a)(2) III C#1,#2,#3), or at most, representing additional, computer-based elements invoked as tools or machinery to apply the abstract exception [MPEP 2106.05(f)] and/or representing additional computer-based elements that narrows the abstract exception to a field of use or technological environment [MPEP 2106.05(h)] related to the vehicle, none of which provide significantly more than what was already identified as the abstract exception.
For example, with respect to “using a camera or a sensor” for “detecting”, “an act or omission of the service staff against the user vehicle” at independent Claims 1,6,10, the Examiner points to MPEP 2106.05(f)(2) iii which states that a process for monitoring audit log data executed on a computer represents a mere invocation of computers or machinery as a tool to perform an existing process, which does not provide significantly more according to MPEP 2106.05(f).
Similarly, with respect to the recitation of “via the communication interface” “transmit instruction data to a mobile device of the service staff, the instruction data instructing the service staff to be dispatched to the parking location and provide the selected one of the charging service or the battery replacement service”, the Examiner points to MPEP 2106.05(f)(2) v which states that requiring use of software to tailor information and provide it to the user on a generic computer also represents a mere invocation of computers or machinery as a tool to perform an existing process, which again does not provide significantly more when tested per MPEP 2106.05(f).
As per recitation of “the controller is further configured to: automatically select one of the charging service or the battery replacement service according to a positional relationship between the service staff and the parking location”, it appears that here “the controller” performs what would otherwise be location-aware supervising functions of a manger in cognitively or manually choosing and dispatching field workers according to their proximity to the worksite or parking location. Yet, as stated by MPEP 2106.05(a) I, the automation or acceleration of manual processes, does not represent a technological improvement but rather, as tested per MPEP 2106.05(f)(2) iii., represent attempts to apply the abstract exception which, does not render the claims less abstract and eligible. Therefore, the Applicant’s argument B is found unpersuasive.
In conclusion, Examiner finds that even as amended, the claims still recite, describe or set forth the abstract idea, with their additional, computer-based elements merely applying the abstract idea and/or narrowing it to a field of use or technological environment, thus not integrating it into a practical application or providing significantly more. Thus, the claims are ineligible.
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Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2,7,11,14-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 2,7,11 recite “wherein the act” [singular grammatically] includes opening a door other than a door of a driver seat of the user vehicle, sitting in a seat other than the driver seat of the user vehicle, looking into a rear seat of the user vehicle, or opening a trunk of the user vehicle”.
Yet, independent Claims 1,6,10 have been already amended to recite “the act includes turning off the camera” and the Specification does not provide support for the newly added matter of “an” [single] “act” that comprises both “opening a door other than a door of a driver seat of the user vehicle, sitting in a seat other than the driver seat of the user vehicle, looking into a rear seat of the user vehicle, or opening a trunk of the user vehicle” and “turning off the camera” at dependent Claims 2,7,11 that include the subject matter and further narrow parent Claims 1,6,10.
Claims 14-17 are dependent and rejected based on rejected parent dependent Claim 12.
Clarification and/or correction is/are required.
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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 2,7,11,14-17 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 pre-AIA the applicant regards as the invention.
Claims 2,7,11 recite “wherein the act” [singular grammatically] includes opening a door other than a door of a driver seat of the user vehicle, sitting in a seat other than the driver seat of the user vehicle, looking into a rear seat of the user vehicle, or opening a trunk of the user vehicle”.
Yet, independent Claims 1,6,10 have been already amended to recite “the act includes turning off the camera” thus rendering Claims 2,7,11 vague and indefinite because it is unclear how a single “act” comprises both “opening a door other than a door of a driver seat of the user vehicle, sitting in a seat other than the driver seat of the user vehicle, looking into a rear seat of the user vehicle, or opening a trunk of the user vehicle” and “turning off the camera” at dependent Claims 2,7,11 that include the subject matter and further narrow parent Claims 1,6,10.
Claims 14-17 are dependent and rejected based on rejected parent dependent Claim 12.
Clarification and/or correction is/are required.
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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 1,2,4,6-8,10-12,14-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea, here abstract idea) without significantly more. The claim(s) recite(s) set forth or describe1 the abstract “instructing the service staff to be dispatched to the parking location and provide” a fundamental or commercial service such as “charging service or the battery replacement service” (independent Claims 1,6,10) akin to services performed by an attendant or worker at a full service gas station, or agent, contractor or valet at a vehicle valet service business. Such “service” “request” represents a “dispatch” [of] “a service staff to a parking location in which a user vehicle used by the user is parked, cause the dispatched service staff to move the user vehicle to another location, and supply an energy source to the user vehicle” as recited at each of independent Claims 1,6,10, in a manner not meaningfully different than optimizing visits by a business representative to a client which is listed as abstract by MPEP 2106.04(a)(2) II B citing In re Maucorps 609 F.2d 481,485, 203 USPQ 812,816 (CCPA 1979). Such dispatch, move or visit by the “service staff” as recited at each of independent Claims 1,6,10 refers to a “service” [that] “includes a charging service to supply the energy source to the user vehicle by charging a battery installed in the user vehicle, or a battery replacement service to supply the energy source to the user vehicle by replacing the battery installed in the user vehicle with another battery” as example of fundamental or commercial services exemplified by independent Claims 1,6,10.
Further, dependent Claims 18-20 corroborate such commercial or fundamental economic character by includ[ing] behavioral or desirable “information regarding details of the parking location and data indicating a desired dispatch time and a desired return time, the desired dispatch time corresponding to a desired time when the service staff picks up the user vehicle, and the desired return time corresponding to a desired time when the service staff returns the user vehicle after charging or replacing the battery installed in the user vehicle”.
Next, the claims also recite, set forth or describe the abstract best business practice of “detecting” or auditing an “act or omission” of a dispatch[ed] “a service staff”, associated with a “service” “request[ed] by “a user” recited at each of independent Claims 1,6,10, and narrowed at each of their respective Claims 2,4,14-17, Claims 7,8 and Claims 11,12.
Examiner also points to MPEP 2106.07(a) III citing, among others, In re Bilski, 545 F.3d 943, 951, 88 USPQ2d 1385, 1388 (Fed. Cir. 2008) (en banc), aff’d by Bilski v. Kappos, 561 U.S. 593, 95 USPQ2d 1001 (2010) to submit that identifying whether an exception such as an abstract idea is being claimed remains a question of law. For example, In re Bilski, judge Mayer, J. remarked that: “Patents granted in the wake of State Street have ranged from the somewhat ridiculous to the truly absurd. See, e.g., U.S. Patent No. 5,851,117 (method of training janitors to dust and vacuum using video displays”. Here, similar to judge Mayer’s remark in In re Bilski,
the current dependent Claims 4,8,12 analogously use “video” to audit how a “service is provided”, with the parent independent Claims 1,6,10 referring to “an act or omission of the service staff”, “while the service is provided”, “that is different from” [what is being excepted].
Also here, the two parties of service staff and service request[ing] “user of the vehicle” clearly participate in commercial services which are deemed as abstract sub-grouping within the main grouping of Certain Methods of Organizing Human activities [MPEP 2106.04(a)(2) II]. This finding is important because per MPEP 2106.04(a)(2) II B last ¶, section i citation of Dealertrack v. Huber 674 F.3d 1315,1331,101 USPQ2d 1325,1339 (Fed Cir. 2012) and its similar reliance on Alice, the processing of information [akin here to processing of “service” “request” ] where the processed information relates to a relationship between multiple parties [akin here to “service staff”, “user of the vehicle”] does recite, describe or set forth the abstract certain methods of organizing human activities grouping. Here, just because the claims narrow the “service” “request” to “supply an energy source to the user vehicle” and “charging service to supply the energy source to the user vehicle by charging a battery installed in the user vehicle, or a battery replacement service to supply the energy source to the user vehicle by replacing the battery installed in the user vehicle with another battery” at independent Claims 1,6,10 does not necessarily preclude the claims from reciting, describing to setting forth the abstract idea, because the claims still refer to fundamental economic or commercial concepts of supply or replacement service, and because,
as instructed by MPEP 2106.04 I ¶5: The Supreme Court’s decisions ma[de] it clear that judicial exceptions need not be old or long-prevalent, and that even newly discovered or novel judicial exceptions are still exceptions. Thus here, the Examiner submits in the arguendo, that any alleged improvement to the mobile service as read in light of Original Specification ¶ [0002] ¶ [0016], and reflected in independent Claims 1,6,10 as “dispatched service staff to move the user vehicle to another location, and supply an energy source to the user vehicle” would at most represent a newly discovered improvement in the abstract exception, which as tested per MPEP 2106.04 I ¶5 would not preclude the claims from reciting, describing to setting forth the abstract idea.
In fact, MPEP 2106.04 I stresses that even a “groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the 101 inquiry” citing Myriad,569 U.S at 591, 106 USPQ2d at 1979. The “Myriad” rationale was corroborated by “SAP Am Inc v InvestPic” which is also cited by MPEP 2106.04(a)(2) I.C(i). Digging deeper into the Court’s rationale in SAP supra, the Examiner finds that the Court ruled that, “even if one assumes that the techniques claimed are groundbreaking, innovative, or even brilliant those features are not enough for eligibility because their innovation is innovation in ineligible subject matter. An advance of that nature is ineligible for patenting”. That is, “no matter how much of an advance in the field the claims” [would] “recite the advance” [would still] “lie entirely in the realm of abstract ideas” with no plausibly alleged innovation in non-abstract application realm. Here, as in the rationale of SAP Am Inc v. InvestPic, LLC 890 F.3d 1016,126 USPQ.2d 1638 (Fed. Cir. 2018), no matter how much improvement or advance to the service the claims would provide, said advance in the service would still lie entirely within the abstract realm of Certain Methods of Organizing Human Activities, with no plausibly of the alleged innovation entering the non-abstract realm. The “SAP” findings were corroborated by Versata Dev Grp Inc v SAP Am, Inc 115 USPQ2d 1681 Fed Cir 2015 again undelaying the difference between improvement to entrepreneurial goal objective and actual improvement to actual technology. MPEP 2106.04. Examiner also stresses that building blocks of the modern economy remain ineligible, with the term “fundamental” not used in the sense of necessarily being "old" or "well-known" citing a OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364, 115 U.S.P.Q.2d 1090, 1092 (Fed Cir. 2015) from MPEP 2106.04(a)(2) II A ¶2. Thus here, any alleged
improvement or advance to the service would remain entrepreneurial, abstract and thus ineligible even if it would not be old or well-known.
Here, the Examiner follows the MPEP 2106.04(a)(2) II A ¶2 test and submits that no matter its field in which it is being use, such fundamental economic practices or principles of “service” “request” to supply of a commodity, audited or detect[ed] for “omission” or “an act” “of the service staff” “that is different from boarding the user vehicle in order to drive the user vehicle” are abstract as recited at independent Claims 1,6,10, with the “act” exemplified to include “turning off the camera” (independent Claims 1,6,10), “opening a door other than a door of a driver seat of the user vehicle”(dependent Claims 2,7,11,14), “sitting in a seat other than the driver seat of the user vehicle” (dependent Claims 2,7,11,15), “looking into a rear seat of the user vehicle” (dependent Claims 2,7,11,16), or “opening a trunk of the user vehicle” (dependent Claims 2,7,11,17”, as apparent improper or risky behaviors or business practices, representative of behaviors and/or activities associated with building blocks of modern economy2. Additionally or alternatively to their fundamental or commercial character, their detect[ion] can also be argued as a form of computer-aided observation of cognitive capabilities of a supervisor or observer which according to MPEP 2106.04(a)(2) III ¶2 and MPEP 2106.04(a)(2) III C #3,#1 and/or #2 would represent a tool, generic computer and/or computer environment equivalent to the “controller” of Claims 1,4, and the “processor” of Claims 6,10, which, as tested per MPEP 2106.04(a)(2) III #3,#1, and/or #2 would not preclude the claims from reciting, describing or setting forth the abstract exception. The same tool, generic computer and/or computer environment test of the computer aided mental processes of MPEP 2106.04(a)(2) III C #3,#1 and/or #2 applies to notification of observations or display of certain results3 of collection and analysis [MPEP 2106.04(a)(2) III A, 5th bullet point] which are set forth there by recitation of “upon receiving demand data demanding to view a video of an inside of or an area around the user vehicle that is captured while the service is provided from the terminal apparatus via the communication interface, transmit the video to the terminal apparatus via the communication interface” at dependent Claim 4. Similarly, the use of “communication interface” to allow communicat[ion] of the service request from “a user” to “to” [a] dispatch[ed] “service staff” [informed] or cause[d] “to move the user vehicle to another location, and supply an energy source to the user vehicle” at independent Claim 1, does not preclude the claims from reciting, describing or setting forth the abstract idea because, per MPEP 2106.04(a)(2) ¶6, even considering interactions between multiple entities [akin here to requesting user and “service staff”] and requiring that said interactions between such entities be done with respective computer [“terminal apparatus” at Claims 1,4,6,8,10,12, “communication interface to communicate with a terminal apparatus used by a user” at Claims 1,4) do not preclude the claims from reciting, describing or setting forth the abstract idea. Examiner follows the same MPEP 2106.04 I ¶5 guidelines to reason that no matter of its computerized implementation, the claims’ character as a whole remains undeniably abstract as represented by commercial and/or fundamental economic practices or principles of “service” “request” to supply a commodity, audited or detect[ed] for “omission” or “act” “of the service staff” “that is different from boarding the user vehicle in order to drive the user vehicle” as recited at independent Claims 1,6,10, with such auditing further exemplified to include[.] “opening a door other than a door of a driver seat of the user vehicle” (dependent Claims 2,7,11,14), “sitting in a seat other than the driver seat of the user vehicle” (dependent Claims 2,7,11,15), “looking into a rear seat of the user vehicle” (dependent Claims 2,7,11,16), or “opening a trunk of the user vehicle” (dependent Claims 2,7,11,17), observed by commuter-aids, as apparent risky or improper behaviors or business practices, associated with business practices or building blocks of the modern economy4.
Next, in an abundance of caution, the computerized implementation, as identified above as relating to “service” “request”, will be more granularly investigated at the subsequent steps.
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This judicial exception is not integrated into a practical application because per Step 2A prong two, any asserted individual or combination of additional, computer-based elements would at most merely apply the above abstract exception and/or narrow it to a field of use or technological environment. Examiner first notes that “communication interface” and “controller” of Claims 1,4, and similarly the “processor” of Claims 6,19, and “terminal apparatus” of Claims 1,4,6, 8,10,12, “camera or sensor” and “mobile device” of Claims 1,6,10 can be argued as computer aids as part of the abstract exception identified above.
Yet, even if now considered as additional computer-based elements, they would still merely apply the abstract processes identified above, which as tested per MPEP 2106.05(f) ¶15 do not render the abstract exception less abstract and eligible. Also, according to MPEP 2106.05(f)(2) ¶1, even claiming an alleged improved speed or an efficiency inherent with applying the abstract idea on a computer does not integrate a judicial exception into a practical application6.
It then follows that here any alleged benefit that the abstract auditing of omission or act of the “service staff” would provide, it would be the result of applying the above abstract idea on a “communication interface”, “controller” (Claims 1,4), “processor” of (Claims 6,19), and “terminal apparatus” (Claims 1,4,6, 8,10,12), “camera or sensor” (Claims 1,6,10) that would not integrate said abstract exception into a practical application. For example MPEP 2