DETAILED ACTION
This communication is a Final Rejection Office Action in response to the 10/1/2025 filling of Application 18/683,516. Claims 1-4, 9-10 are now presented.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments files 10/1/2025, regarding the prior art rejections have been fully considered and are persuasive. The prior art rejections have been withdrawn.
Based on the amendments, claim 1 will no longer be interpreted under 112(f).
Based on the amendments claim 10 is no longer rejected for being directed to a storage medium.
Applicant's remaining arguments filed have been fully considered but they are not persuasive.
Regarding the rejection under 101, the Applicant argues “independent claims 1, 9, and 10, as amended, recite: "... based on the future demand for the component, cause the vehicle to travel to a predetermined facility." These acts require action by a processor and cannot be practicably applied in the mind.”
The amendments that are directed to causing the vehicle travel to a predetermined facility do not save the claim. The claims do not recite how the vehicle travels to the location under the broadest reasonable interpretation a human can cause the vehicle to travel to a predetermined facility. As such, this remains directed to an abstract method of organizing human activity.
Regarding the rejection under 101, the Applicant argues “Further, the claims do not recite any method of organizing human activity, such as a fundamental economic concept or managing interactions between people. Additionally, the claims do not recite a mathematical relationship, formula, or calculation. Thus, contrary to the Office's contention, the claims are eligible because they do not recite a judicial exception.”
The Examiner has not asserted that the claims are directed to mathematical relationship. However, the steps of predict a future demand for a component; estimate a central point of a plurality of position information; predict a future demand for the component in a predetermined area;
estimate a location distribution of the plurality of vehicles in a second predetermined period of time; predict a future demand for the component for each predetermined area; predict the future demand for the component for each predetermined area; predict the demand at a third time point that is later than a first time point; based on a shift between the operation value at the first time point and the operation value at a second time point that is earlier than the first time point; set the predicted value of the demand at the third time point to be lower than an existing predicted value calculated in advance when the operation value at the first timepoint is increasing with respect to the operation value at the second time point and set the predicted value at the third time point to be higher than the existing predicted value calculated in advance when the operation value at the first time point is decreasing with respect to the operation value at the second time point and based on the future demand for the component cause the vehicle travel to a predetermined facility are directed to demand prediction in an area which is a fundamental business practice and sales activities or behaviors. Further, the amendments that are directed to causing the vehicle travel to a predetermined facility do not save the claim. The claims do not recite how the vehicle travels to the location under the broadest reasonable interpretation a human can cause the vehicle to travel to a predetermined facility. As such, the claims are directed to abstract ideas.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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 the first paragraph of pre-AIA 35 U.S.C. 112:
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 1-4, 9-10 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 1, 9, 10 have been amended to recite based on the future demand for the component cause the vehicle to travel to a predetermined facility. The Examiner fails to find support for this in the originally filed specification. The claims that depend from claim 1 fails cure the deficiencies of the parent claim and are also rejection.
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 1-4, 9-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
When considering subject matter eligibility under 35 U.S.C. 101, in step 1 it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, in step 2A prong 1 it must then be determined whether the claim is recite a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). If the claim recites a judicial exception, under step 2A prong 2 it must additionally be determined whether the recites additional elements that integrate the judicial exception into a practical application. If a claim does not integrate the Abstract idea into a practical application, under step 2B it must then be determined if the claim provides an inventive concept.
In the Instant case, Claims 1-8 are directed toward a device that predicts a future demand for a component of a vehicle in preparation for replacement or repair of the component. Claim 9 is directed toward method that predicts a future demand for a component of a vehicle in preparation for replacement or repair of the component. Claim 10 is directed toward a computer program product that predicts a future demand for a component of a vehicle in preparation for replacement or repair of the component. As such, each of the Claims is directed to one of the four statutory categories of invention.
MPEP 2106.04 II. A. explains that in step 2A prong 1 Examiners are to determine whether a claim recites a judicial exception. MPEP 2106.04(a) explains that:
To facilitate examination, the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent, as is explained in MPEP § 2106.04(a)(2). This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types.
The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);
2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
As per step 2A prong 1 of the eligibility analysis, claim 1 recites the abstract idea of hat predicts a future demand for a component of a vehicle in preparation for replacement or repair of the component which falls into the abstract idea categories of certain methods of organizing human activity and mental processes. The elements of Claim 1 that represent the Abstract idea include:
predict a future demand for a component of a vehicle in preparation for replacement or repair of the component, the demand prediction device comprising:
estimate a central point of a plurality of position information acquired in a first predetermined period of time as a location of the vehicle based on the position information;
predict a future demand for the component in a predetermined area including the location of the vehicle;
estimate a location distribution of the plurality of vehicles in a second predetermined period of time based on the position information of the plurality of vehicles;
predict a future demand for the component for each predetermined area based on the location distribution estimated:
predict the future demand for the component for each predetermined area based on an increase or a decrease and fluctuation of a value based on the operation information in a time series and an increase or a decrease and fluctuation of a result value based on the demand result information;
predict the demand at a third time point that is later than a first time point based on the result value based on the demand result information for every predetermined period in the time series and an operation value based on the operation information and based on a shift between the operation value at the first time point and the operation value at a second time point that is earlier than the first time point;
set the predicted value of the demand at the third time point to be lower than an existing predicted value calculated in advance when the operation value at the first timepoint is increasing with respect to the operation value at the second time point and set the predicted value at the third time point to be higher than the existing predicted value calculated in advance when the operation value at the first time point is decreasing with respect to the operation value at the second time point and
based on the future demand for the component cause the vehicle travel to a predetermined facility.
MPEP 2106.04(a)(2) II. states:
The phrase "methods of organizing human activity" is used to describe concepts relating to:
fundamental economic principles or practices (including hedging, insurance, mitigating risk);
commercial or legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations); and
managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions).
The Supreme Court has identified a number of concepts falling within the "certain methods of organizing human activity" grouping as abstract ideas. In particular, in Alice, the Court concluded that the use of a third party to mediate settlement risk is a ‘‘fundamental economic practice’’ and thus an abstract idea. 573 U.S. at 219–20, 110 USPQ2d at 1982. In addition, the Court in Alice described the concept of risk hedging identified as an abstract idea in Bilski as ‘‘a method of organizing human activity’’. Id. Previously, in Bilski, the Court concluded that hedging is a ‘‘fundamental economic practice’’ and therefore an abstract idea. 561 U.S. at 611–612, 95 USPQ2d at 1010.
In the instant case the steps of predict a future demand for a component; estimate a central point of a plurality of position information; predict a future demand for the component in a predetermined area;
estimate a location distribution of the plurality of vehicles in a second predetermined period of time; predict a future demand for the component for each predetermined area; predict the future demand for the component for each predetermined area;predict the demand at a third time point that is later than a first time point; based on a shift between the operation value at the first time point and the operation value at a second time point that is earlier than the first time point; set the predicted value of the demand at the third time point to be lower than an existing predicted value calculated in advance when the operation value at the first timepoint is increasing with respect to the operation value at the second time point and set the predicted value at the third time point to be higher than the existing predicted value calculated in advance when the operation value at the first time point is decreasing with respect to the operation value at the second time point and based on the future demand for the component; cause the vehicle travel to a predetermined facility are directed to demand prediction in an area which is a fundamental business practice and sales activities or behaviors. Further, the amendments that are directed to causing the vehicle travel to a predetermined facility do not save the claim. The claims do not recite how the vehicle travels to the location under the broadest reasonable interpretation a human can cause the vehicle to travel to a predetermined facility.
MPEP 2106.04(a)(2) states:
The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012) ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same).
Accordingly, the "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions
The instant claims recite mental processes including observation, evaluation, judgment, opinion. For example, the steps directed to predict a future demand for a component; estimate a central point of a plurality of position information; predict a future demand for the component in a predetermined area;
estimate a location distribution of the plurality of vehicles in a second predetermined period of time; predict a future demand for the component for each predetermined area; predict the future demand for the component for each predetermined area; predict the demand at a third time point that is later than a first time point; based on a shift between the operation value at the first time point and the operation value at a second time point that is earlier than the first time point; set the predicted value of the demand at the third time point to be lower than an existing predicted value calculated in advance when the operation value at the first timepoint is increasing with respect to the operation value at the second time point and set the predicted value at the third time point to be higher than the existing predicted value calculated in advance when the operation value at the first time point is decreasing with respect to the operation value at the second time point and based on the future demand for the component are directed to mental processes. There is nothing is nothing the claims that preclude these steps from being performed mentally. As such, the claims recite abstract ideas.
Under step 2A prong 2 the examiner must then determine if the recited abstract idea is integrated into a practical application. MPEP 2106.04 states:
Limitations the courts have found indicative that an additional element (or combination of elements) may have integrated the exception into a practical application include:
• An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
• Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
• Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
• Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
• Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e)
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
• Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
• Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
• Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
In the instant case, this judicial exception is not integrated into a practical application. In particular, Claim 1 recites the additional elements of:
A demand prediction device comprising:
a processor that executes instructions to perform the recited steps:
acquire position information, from the vehicle, at an operation start time of the vehicle or at an operation end time of the vehicle;
acquire the position information from each of a plurality of vehicles;
acquire demand result information of the component for each predetermined area;
acquire vehicle operation information from vehicles included in the predetermined area;
However, the computer elements are recited at a high-level of generality (i.e., a processor that executes instructions to perform the recited steps) such that it amounts no more than mere instructions to apply the exception using a generic computer component.
Further MPEP 2105.05(g) explains that data gathering and data output can be considered pre-solution activity and post-solution activity. See MPEP 2106.05(g) that states:
An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent. An example of post-solution activity is an element that is not integrated into the claim as a whole, e.g., a printer that is used to output a report of fraudulent transactions, which is recited in a claim to a computer programmed to analyze and manipulate information about credit card transactions in order to detect whether the transactions were fraudulent.
In the instant case, the acquiring of position information and demand information are directed to mere data gathering which amounts to insignificant pre-solution activity.
Viewing the generic data gathering in combination with the generic computer does not add more than when viewing the elements individually. Accordingly, the additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
In step 2B, the examiner must be determine whether the claim adds a specific limitation other than what is well-understood, routine, conventional activity in the field - see MPEP 2106.05(d). As discussed with respect to Step 2A Prong Two, the processing circuitry in the claim amount to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception on a generic computer cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Viewing the generic data gathering in combination with the generic computer does not add more than when viewing the elements individually. Accordingly, the additional elements do provide and inventive concept.
Further Claims 2-4 further limit the mental processes and business practices recited in the parent claim, but fail to remedy the deficiencies of the parent claim as they do not impose any additional elements that amount to significantly more than the abstract idea itself.
Accordingly, the Examiner concludes that there are no meaningful limitations in claims 2-4 that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The analysis above applies to all statutory categories of invention. The presentment of claim 1 otherwise styled as a computer program product, or method, for example, would be subject to the same analysis. As such, claims 9, 10 are also rejected.
Claim 10 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/DEIRDRE D HATCHER/Primary Examiner, Art Unit 3625