DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
This action is in reply to the communication filed on . The disposition of claims is as follows:
Pending:
Rejected:
Information Disclosure Statement
Acknowledgement is hereby made of receipt of the Information Disclosure Statement filed by the Applicant listed below:
May 1, 2024
Drawings
Figures are objected to for failing to comply with 37 C.F.R. § 1.84(a)(1) and 37 § C.F.R. 1.84(l), which requires the drawings be in black, and that all drawings be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, solid black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. The replacement drawings are pixelated because applicant did not use black (RGB = 000 or Hex = 000000). When black is not used, the dithering used to convert applicant's grayscale image to black and white will add white pixels to try to estimate applicant's "gray" color. Therefore, applicant must be sure to use only black and white.
Claim Rejections - 35 USC § 112(a)
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 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) contain(s) 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.
Regarding Claim ,
The claim recites “.”
The specification does not provide adequate written description of how to . There is no written content as to how or what specific algorithms are performed (i.e. formulas, algorithms, sequence of mathematical steps, process of determination, for example)
To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, to have “possession,” the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Id. This can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. Additionally, it is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019).
At best, the Specification vaguely and generically describes the following:
[0065] Returning to FIG. 4, the respective flags set by the gap-based evaluation 410 and the rate-based evaluation 412 may be used to determine a rationality flag 414. In some embodiments, the rationality flag 414 is used as a final and comprehensive indication (based on weighing both the gap-based evaluation 410 and the rate-based evaluation 412) of whether steering functionality is healthy and whether the steering command can be passed to the vehicle's steering subsystem. In some embodiments, the gap flag 504 set by the gap-based evaluation 410 may be weighed more than the rate flag 604 set by the rate-based evaluation 412. Accordingly, in an example in which the gap flag 504 indicates an error and the rate flag 604 indicates no error, the rationality flag 414 is set to an error value. In some other embodiments, the rate flag 604 may be weighed more than the gap flag 504. In some embodiments, if at least one of the gap flag 504 or the rate flag 604 indicates an error, the rationality flag 414 is automatically set to the error value. In some embodiments, the rationality flag 414 is only set to the error value if both of the gap flag 504 and the rate flag 604 each indicate an error. In some embodiments, the weighing of the gap flag 504 and the rate flag 604 to determine the rationality flag 414 is based on a current operation mode of the vehicle. For example, the gap flag 504 may be weighed more than the rate flag 604 when the vehicle is in a manual operation mode, as steering command consistency is less important when the steering commands are not being applied for vehicle operation. In some embodiments, the gap flag 504 is weighed more than the rate flag 604 when the vehicle is in the manual operation mode, and when the vehicle is in the autonomous operation mode, the gap flag 504 and the rate flag 604 are weighed equally (e.g., either flag indicating an error results in the rationality flag 414 being set to the error value).
[0073] At 806, the devices determines whether the steering command is valid or not according to respective flags set by the gap-based evaluation and the rate-based evaluation. In some embodiments, the determination of whether the steering command is valid or not may be based on one or both of the gap-based evaluation and the rate-based evaluation. In some embodiments, the determination of whether the steering command is valid or not is based on whether the vehicle is currently in a manual operation mode or an autonomous operation mode.
[0074] As illustrated in FIG. 8, the device may arbitrate the determined validity (or invalidity) of the steering command differently according to the operation mode or state of the vehicle. In the manual operation mode, steering commands from the remote server are not necessarily applied in vehicle operation, but the determined validity of the steering commands is indication of a health of autonomous steering functionality of the vehicle.
[0075] Accordingly, at 808, the device permits engagement of the autonomous mode in response to the steering command being valid. For example, based on the steering command being valid, the device determines that autonomous steering functionality is healthy, and may permit engagement of the autonomous mode. To permit the engagement of the autonomous mode, the device may transmit instructions to or operate an in-vehicle user interface (e.g., a touch screen, a button, a lever) to allow engagement of the autonomous mode via the in-vehicle user interface. For example, a touch screen interface feature for engaging the autonomous mode is enabled by the device at 808. Alternatively, at 810, the device prevents engagement of the autonomous mode in response to the steering command being invalid. Similarly, the device may transmit instructions or operate the in-vehicle user interface to prevent an operator from engaging the autonomous mode of the vehicle. For example, the device may transmit instructions to cause a touch screen interface feature for engaging the autonomous mode to be greyed out.
See at least: Instant PgPub ¶¶
There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs ( according to a current operation mode of the autonomous vehicle) and output a . As noted in the MPEP, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved” (See MPEP § 2161.01 I). In particular, the MPEP requires description of “an algorithm or steps/procedure taken to perform the function."
Claimed subject matter should be described in the specification in such a manner as to enable one of ordinary skill in the art to make and use the invention. The specification does not at all describe the steps / procedure involved in which would necessarily involve some calculations or steps that have not been described.
It is noted that this is not an enablement rejection. Applicant’s failure to disclose any meaningful structure/algorithm as to how this value is generated raises questions whether applicant truly had possession of this feature at the time of filing.
Regarding Claim ,
The claim recites “.”
The specification does not provide adequate written description of how to . There is no written content as to how or what specific algorithms are performed (i.e. formulas, algorithms, sequence of mathematical steps, process of determination, for example)
To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, to have “possession,” the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Id. This can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. Additionally, it is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019).
At best, the Specification vaguely and generically describes the following:
[0065] Returning to FIG. 4, the respective flags set by the gap-based evaluation 410 and the rate-based evaluation 412 may be used to determine a rationality flag 414. In some embodiments, the rationality flag 414 is used as a final and comprehensive indication (based on weighing both the gap-based evaluation 410 and the rate-based evaluation 412) of whether steering functionality is healthy and whether the steering command can be passed to the vehicle's steering subsystem. In some embodiments, the gap flag 504 set by the gap-based evaluation 410 may be weighed more than the rate flag 604 set by the rate-based evaluation 412. Accordingly, in an example in which the gap flag 504 indicates an error and the rate flag 604 indicates no error, the rationality flag 414 is set to an error value. In some other embodiments, the rate flag 604 may be weighed more than the gap flag 504. In some embodiments, if at least one of the gap flag 504 or the rate flag 604 indicates an error, the rationality flag 414 is automatically set to the error value. In some embodiments, the rationality flag 414 is only set to the error value if both of the gap flag 504 and the rate flag 604 each indicate an error. In some embodiments, the weighing of the gap flag 504 and the rate flag 604 to determine the rationality flag 414 is based on a current operation mode of the vehicle. For example, the gap flag 504 may be weighed more than the rate flag 604 when the vehicle is in a manual operation mode, as steering command consistency is less important when the steering commands are not being applied for vehicle operation. In some embodiments, the gap flag 504 is weighed more than the rate flag 604 when the vehicle is in the manual operation mode, and when the vehicle is in the autonomous operation mode, the gap flag 504 and the rate flag 604 are weighed equally (e.g., either flag indicating an error results in the rationality flag 414 being set to the error value).
[0073] At 806, the devices determines whether the steering command is valid or not according to respective flags set by the gap-based evaluation and the rate-based evaluation. In some embodiments, the determination of whether the steering command is valid or not may be based on one or both of the gap-based evaluation and the rate-based evaluation. In some embodiments, the determination of whether the steering command is valid or not is based on whether the vehicle is currently in a manual operation mode or an autonomous operation mode.
[0074] As illustrated in FIG. 8, the device may arbitrate the determined validity (or invalidity) of the steering command differently according to the operation mode or state of the vehicle. In the manual operation mode, steering commands from the remote server are not necessarily applied in vehicle operation, but the determined validity of the steering commands is indication of a health of autonomous steering functionality of the vehicle.
[0075] Accordingly, at 808, the device permits engagement of the autonomous mode in response to the steering command being valid. For example, based on the steering command being valid, the device determines that autonomous steering functionality is healthy, and may permit engagement of the autonomous mode. To permit the engagement of the autonomous mode, the device may transmit instructions to or operate an in-vehicle user interface (e.g., a touch screen, a button, a lever) to allow engagement of the autonomous mode via the in-vehicle user interface. For example, a touch screen interface feature for engaging the autonomous mode is enabled by the device at 808. Alternatively, at 810, the device prevents engagement of the autonomous mode in response to the steering command being invalid. Similarly, the device may transmit instructions or operate the in-vehicle user interface to prevent an operator from engaging the autonomous mode of the vehicle. For example, the device may transmit instructions to cause a touch screen interface feature for engaging the autonomous mode to be greyed out.
See at least: Instant PgPub ¶¶
There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs ( according to a current operation mode of the autonomous vehicle) and output a . As noted in the MPEP, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved” (See MPEP § 2161.01 I). In particular, the MPEP requires description of “an algorithm or steps/procedure taken to perform the function."
Claimed subject matter should be described in the specification in such a manner as to enable one of ordinary skill in the art to make and use the invention. The specification does not at all describe the steps / procedure involved in which would necessarily involve some calculations or steps that have not been described.
It is noted that this is not an enablement rejection. Applicant’s failure to disclose any meaningful structure/algorithm as to how this value is generated raises questions whether applicant truly had possession of this feature at the time of filing.
Regarding Claim ,
The claim recites “.”
The specification does not provide adequate written description of how to . There is no written content as to how or what specific algorithms are performed (i.e. formulas, algorithms, sequence of mathematical steps, process of determination, for example)
To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, to have “possession,” the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Id. This can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. Additionally, it is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019).
At best, the Specification vaguely and generically describes the following:
[0065] Returning to FIG. 4, the respective flags set by the gap-based evaluation 410 and the rate-based evaluation 412 may be used to determine a rationality flag 414. In some embodiments, the rationality flag 414 is used as a final and comprehensive indication (based on weighing both the gap-based evaluation 410 and the rate-based evaluation 412) of whether steering functionality is healthy and whether the steering command can be passed to the vehicle's steering subsystem. In some embodiments, the gap flag 504 set by the gap-based evaluation 410 may be weighed more than the rate flag 604 set by the rate-based evaluation 412. Accordingly, in an example in which the gap flag 504 indicates an error and the rate flag 604 indicates no error, the rationality flag 414 is set to an error value. In some other embodiments, the rate flag 604 may be weighed more than the gap flag 504. In some embodiments, if at least one of the gap flag 504 or the rate flag 604 indicates an error, the rationality flag 414 is automatically set to the error value. In some embodiments, the rationality flag 414 is only set to the error value if both of the gap flag 504 and the rate flag 604 each indicate an error. In some embodiments, the weighing of the gap flag 504 and the rate flag 604 to determine the rationality flag 414 is based on a current operation mode of the vehicle. For example, the gap flag 504 may be weighed more than the rate flag 604 when the vehicle is in a manual operation mode, as steering command consistency is less important when the steering commands are not being applied for vehicle operation. In some embodiments, the gap flag 504 is weighed more than the rate flag 604 when the vehicle is in the manual operation mode, and when the vehicle is in the autonomous operation mode, the gap flag 504 and the rate flag 604 are weighed equally (e.g., either flag indicating an error results in the rationality flag 414 being set to the error value).
[0073] At 806, the devices determines whether the steering command is valid or not according to respective flags set by the gap-based evaluation and the rate-based evaluation. In some embodiments, the determination of whether the steering command is valid or not may be based on one or both of the gap-based evaluation and the rate-based evaluation. In some embodiments, the determination of whether the steering command is valid or not is based on whether the vehicle is currently in a manual operation mode or an autonomous operation mode.
[0074] As illustrated in FIG. 8, the device may arbitrate the determined validity (or invalidity) of the steering command differently according to the operation mode or state of the vehicle. In the manual operation mode, steering commands from the remote server are not necessarily applied in vehicle operation, but the determined validity of the steering commands is indication of a health of autonomous steering functionality of the vehicle.
[0075] Accordingly, at 808, the device permits engagement of the autonomous mode in response to the steering command being valid. For example, based on the steering command being valid, the device determines that autonomous steering functionality is healthy, and may permit engagement of the autonomous mode. To permit the engagement of the autonomous mode, the device may transmit instructions to or operate an in-vehicle user interface (e.g., a touch screen, a button, a lever) to allow engagement of the autonomous mode via the in-vehicle user interface. For example, a touch screen interface feature for engaging the autonomous mode is enabled by the device at 808. Alternatively, at 810, the device prevents engagement of the autonomous mode in response to the steering command being invalid. Similarly, the device may transmit instructions or operate the in-vehicle user interface to prevent an operator from engaging the autonomous mode of the vehicle. For example, the device may transmit instructions to cause a touch screen interface feature for engaging the autonomous mode to be greyed out.
See at least: Instant PgPub ¶¶
There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs ( according to a current operation mode of the autonomous vehicle) and output a . As noted in the MPEP, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved” (See MPEP § 2161.01 I). In particular, the MPEP requires description of “an algorithm or steps/procedure taken to perform the function."
Claimed subject matter should be described in the specification in such a manner as to enable one of ordinary skill in the art to make and use the invention. The specification does not at all describe the steps / procedure involved in which would necessarily involve some calculations or steps that have not been described.
It is noted that this is not an enablement rejection. Applicant’s failure to disclose any meaningful structure/algorithm as to how this value is generated raises questions whether applicant truly had possession of this feature at the time of filing.
Dependence from Claim(s) Failing to Comply with the Written Description Requirement
Regarding Claim(s) ,
The claim(s) ultimately depend(s) from a claim that fails to comply with the written description requirement and is/are rejected for depending therefrom.
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 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
In sum, claims are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception to patentability (i.e., a law of nature, a natural phenomenon, or an abstract idea) and do not include an inventive concept that is something “significantly more” than the judicial exception under the analysis which follows.
For purposes of compact prosecution and clarity, designations have been assigned to limitations of Claim for purposes of evaluation under 35 USC § 101 as follows:
(A) “”
(B) “”
(C) “”
(D) “”
(E) “”
Step 1 – Statutory Category Determination - MPEP § 2106.03
Under Eligibility Step 1 analysis, it must first be determined whether the claims are directed to one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of matter). Applying Eligibility Step 1 of the analysis for patentable subject matter to the claims, it is determined that the claims are directed to the statutory category of a . Therefore, we proceed to Step 2A, Prong One.
Step 2A, Prong One – Does the claim recite an abstract idea? - MPEP § 2106.04:
Under the Step 2A, Prong One analysis, it must be determined whether the claims recite an abstract idea that falls within one or more designated categories of patent ineligible subject matter (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability.
Abstract Ideas:
With respect to Independent Claim , claim limitations ()-() recite abstract ideas that fall within at least one of the three enumerated groupings of abstract ideas set forth in MPEP § 2106.04(a).
Mental Processes – MPEP § 2106.04(a)(2)(III):
Claim limitations ()-() fall within the mental process grouping of patent ineligible subject matter. Each limitation relates to functions that could be performed alternatively as mental processes, i.e., concepts performed in the human mind or using pen and paper (including an observation, evaluation, judgment, and opinion).
Specifically, a mental process, that can be performed in the human mind since each of the above steps could alternatively be performed in the human mind or with the aid of pen and paper. This conclusion follows from CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) where our reviewing court held that 35 U.S.C. § 101 did not embrace a process defined simply as using a computer to perform a series of mental steps that people, aware of each step, can and regularly do perform in their heads. See also In re Grams, 888 F.2d 835, 840–41 (Fed. Cir. 1989); In re Meyer, 688 F.2d 789, 794–95 (CCPA 1982); Elec. Power Group, LLC v. Alstom S.A., 830 F. 3d 1350, 1354–1354 (Fed. Cir. 2016) (“we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category”).
Claim limitations ()-() encompass concepts within the mental process abstract idea grouping in that that capable of being performed in the human mind, by a human using a pen and paper. Limitations ()-() include concepts that exemplify processes performed in the human mind including observations, evaluations, judgments, and/or opinions.
Furthermore, mental processes remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. See CyberSource, 654 F.3d at 1375 (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.”).
Step 2A, Prong Two - Does the claim recite additional elements that integrate the judicial exception into a practical application? - MPEP § 2106.04:
Under the Step 2A, Prong Two analysis, the identified abstract idea to which the claim is directed does not include limitations that integrate the abstract idea into a practical application, since the recited features of the abstract idea are being applied on a computer or computing device or via software programming that is simply being used as a tool (“apply it”) to implement the abstract idea. See MPEP §2106.05(f). This conclusion follows from the claim limitations which only recite a generic outside of the abstract idea.
In addition, merely “[u]sing a computer to accelerate an ineligible mental process does not make that process patent-eligible.” Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012); see also CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) (“simply appending generic computer functionality to lend speed or efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility.”), aff’d, 573 U.S. 208 (2014). Accordingly, the additional elements of a do not transform the abstract idea into a practical application of the abstract idea.
A plain reading of the figures and associated descriptions in the specification reveals that generic processors may be used to execute the claimed steps. The additional elements are recited at a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to no more than mere instructions to apply the exception using generic computer components (See MPEP 2106.05(f)) and limits the judicial exception to a particular environment (See MPEP 2106.05(h)). Mere instructions to apply an exception using a generic computer component and limiting the judicial exception to a particular environment doesn’t integrate the abstract idea into a practical application in Step 2A. Accordingly, these 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. Hence, independent claim is directed to an abstract idea.
Step 2B – Whether a Claim Amounts to Significantly More – See MPEP § 2106.05:
Under the Step 2B analysis, the additional elements are evaluated to determine whether they amount to something “significantly more” than the recited abstract idea. (i.e., an innovative concept). Here, the additional elements, such as an ” do not amount to an innovative concept since, as stated above in the Step 2A, Prong Two analysis, the claims are simply using the additional elements as a tool to carry out the abstract idea (i.e., “apply it”) on a computer or computing device and/or via software programming. See, e.g., MPEP §2106.05(f). The additional elements are specified at a high level of generality to simply implement the abstract idea and are not themselves being technologically improved. See, e.g., MPEP §2106.05 I.A; Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”). Thus, these elements, taken individually or together, do not amount to “significantly more” than the abstract ideas themselves.
The additional elements of the rejected dependent claims merely refine and further limit the abstract idea of the independent claims and do not add any feature that is an “inventive concept” which cures the deficiencies of their respective parent claim. None of the rejected dependent claims considered individually, including their respective limitations, include an “inventive concept” of some additional element or combination of elements sufficient to ensure that the claims in practice amount to something “significantly more” than patent-ineligible subject matter to which the claims are directed.
The elements of the instant process steps when taken in combination do not offer substantially more than the sum of the functions of the elements when each is taken alone. The claims as a whole, do not amount to significantly more than the abstract idea itself because the claims do not effect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of an electronic device itself which implements the abstract idea (e.g., the general purpose computer and/or the computer system which implements the process are not made more efficient or technologically improved); the claims do not perform a transformation or reduction of a particular article to a different state or thing (i.e., the claims do not use the abstract idea in the claimed process to bring about a physical change. See, e.g., Diamond v. Diehr, 450 U.S. 175 (1981), where a physical change, and thus patentability, was imparted by the claimed process; contrast, Parker v. Flook, 437 U.S. 584 (1978), where a physical change, and thus patentability, was not imparted by the claimed process); and the claims do not move beyond a general link of the use of the abstract idea to a particular technological environment (e.g., “” in Claim ).
Regarding Claims : These claims depend from Claim and only add further details to the steps in that independent claim and do not recite any further limitations that cause the claims to be patent eligible. Rather, the limitations of dependent claims are directed toward additional aspects of the judicial exception and/or well-understood, routine and conventional additional elements that do not integrate the judicial exception into a practical application. Therefore, dependent claims are not patent eligible and are also rejected on the same grounds provided for in the rejection of Claim .
Claims are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
In sum, claims are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception to patentability (i.e., a law of nature, a natural phenomenon, or an abstract idea) and do not include an inventive concept that is something “significantly more” than the judicial exception under the analysis which follows.
For purposes of compact prosecution and clarity, designations have been assigned to limitations of Claim for purposes of evaluation under 35 USC § 101 as follows:
(A) “”
(B) “”
(C) “”
(D) “”
(E) “”
Step 1 – Statutory Category Determination - MPEP § 2106.03
Under Eligibility Step 1 analysis, it must first be determined whether the claims are directed to one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of matter). Applying Eligibility Step 1 of the analysis for patentable subject matter to the claims, it is determined that the claims are directed to the statutory category of a . Therefore, we proceed to Step 2A, Prong One.
Step 2A, Prong One – Does the claim recite an abstract idea? - MPEP § 2106.04:
Under the Step 2A, Prong One analysis, it must be determined whether the claims recite an abstract idea that falls within one or more designated categories of patent ineligible subject matter (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability.
Abstract Ideas:
With respect to Independent Claim , claim limitations ()-() recite abstract ideas that fall within at least one of the three enumerated groupings of abstract ideas set forth in MPEP § 2106.04(a).
Mental Processes – MPEP § 2106.04(a)(2)(III):
Claim limitations ()-() fall within the mental process grouping of patent ineligible subject matter. Each limitation relates to functions that could be performed alternatively as mental processes, i.e., concepts performed in the human mind or using pen and paper (including an observation, evaluation, judgment, and opinion).
Specifically, a mental process, that can be performed in the human mind since each of the above steps could alternatively be performed in the human mind or with the aid of pen and paper. This conclusion follows from CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) where our reviewing court held that 35 U.S.C. § 101 did not embrace a process defined simply as using a computer to perform a series of mental steps that people, aware of each step, can and regularly do perform in their heads. See also In re Grams, 888 F.2d 835, 840–41 (Fed. Cir. 1989); In re Meyer, 688 F.2d 789, 794–95 (CCPA 1982); Elec. Power Group, LLC v. Alstom S.A., 830 F. 3d 1350, 1354–1354 (Fed. Cir. 2016) (“we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category”).
Claim limitations ()-() encompass concepts within the mental process abstract idea grouping in that that capable of being performed in the human mind, by a human using a pen and paper. Limitations ()-() include concepts that exemplify processes performed in the human mind including observations, evaluations, judgments, and/or opinions.
Furthermore, mental processes remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. See CyberSource, 654 F.3d at 1375 (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.”).
Step 2A, Prong Two - Does the claim recite additional elements that integrate the judicial exception into a practical application? - MPEP § 2106.04:
Under the Step 2A, Prong Two analysis, the identified abstract idea to which the claim is directed does not include limitations that integrate the abstract idea into a practical application, since the recited features of the abstract idea are being applied on a computer or computing device or via software programming that is simply being used as a tool (“apply it”) to implement the abstract idea. See MPEP §2106.05(f). This conclusion follows from the claim limitations which only recite a generic outside of the abstract idea.
In addition, merely “[u]sing a computer to accelerate an ineligible mental process does not make that process patent-eligible.” Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012); see also CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) (“simply appending generic computer functionality to lend speed or efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility.”), aff’d, 573 U.S. 208 (2014). Accordingly, the additional elements of an do not transform the abstract idea into a practical application of the abstract idea.
A plain reading of the figures and associated descriptions in the specification reveals that generic processors may be used to execute the claimed steps. The additional elements are recited at a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to no more than mere instructions to apply the exception using generic computer components (See MPEP 2106.05(f)) and limits the judicial exception to a particular environment (See MPEP 2106.05(h)). Mere instructions to apply an exception using a generic computer component and limiting the judicial exception to a particular environment doesn’t integrate the abstract idea into a practical application in Step 2A. Accordingly, these 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. Hence, independent claim is directed to an abstract idea.
Step 2B – Whether a Claim Amounts to Significantly More – See MPEP § 2106.05:
Under the Step 2B analysis, the additional elements are evaluated to determine whether they amount to something “significantly more” than the recited abstract idea. (i.e., an innovative concept). Here, the additional elements, such as an ” does/do not amount to an innovative concept since, as stated above in the Step 2A, Prong Two analysis, the claims are simply using the additional elements as a tool to carry out the abstract idea (i.e., “apply it”) on a computer or computing device and/or via software programming. See, e.g., MPEP §2106.05(f). The additional elements are specified at a high level of generality to simply implement the abstract idea and are not themselves being technologically improved. See, e.g., MPEP §2106.05 I.A; Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”). Thus, these elements, taken individually or together, do not amount to “significantly more” than the abstract ideas themselves.
The additional elements of the rejected dependent claims merely refine and further limit the abstract idea of the independent claims and do not add any feature that is an “inventive concept” which cures the deficiencies of their respective parent claim. None of the rejected dependent claims considered individually, including their respective limitations, include an “inventive concept” of some additional element or combination of elements sufficient to ensure that the claims in practice amount to something “significantly more” than patent-ineligible subject matter to which the claims are directed.
The elements of the instant process steps when taken in combination do not offer substantially more than the sum of the functions of the elements when each is taken alone. The claims as a whole, do not amount to significantly more than the abstract idea itself because the claims do not effect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of an electronic device itself which implements the abstract idea (e.g., the general purpose computer and/or the computer system which implements the process are not made more efficient or technologically improved); the claims do not perform a transformation or reduction of a particular article to a different state or thing (i.e., the claims do not use the abstract idea in the claimed process to bring about a physical change. See, e.g., Diamond v. Diehr, 450 U.S. 175 (1981), where a physical change, and thus patentability, was imparted by the claimed process; contrast, Parker v. Flook, 437 U.S. 584 (1978), where a physical change, and thus patentability, was not imparted by the claimed process); and the claims do not move beyond a general link of the use of the abstract idea to a particular technological environment (e.g., “” in Claim ).
Regarding Claims : These claims depend from Claim and only add further details to the steps in that independent claim and do not recite any further limitations that cause the claim(s) to be patent eligible. Rather, the limitations of dependent claims are directed toward additional aspects of the judicial exception and/or well-understood, routine and conventional additional elements that do not integrate the judicial exception into a practical application. Therefore, dependent claims are not patent eligible and are also rejected on the same grounds provided for in the rejection of Claim .
Claims are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
In sum, claims are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception to patentability (i.e., a law of nature, a natural phenomenon, or an abstract idea) and do not include an inventive concept that is something “significantly more” than the judicial exception under the analysis which follows.
For purposes of compact prosecution and clarity, designations have been assigned to limitations of Claim for purposes of evaluation under 35 USC § 101 as follows:
(A) “”
(B) “”
(C) “”
(D) “”
(E) “”
Step 1 – Statutory Category Determination - MPEP § 2106.03
Under Eligibility Step 1 analysis, it must first be determined whether the claims are directed to one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of matter). Applying Eligibility Step 1 of the analysis for patentable subject matter to the claims, it is determined that the claims are directed to the statutory category of a . Therefore, we proceed to Step 2A, Prong One.
Step 2A, Prong One – Does the claim recite an abstract idea? - MPEP § 2106.04:
Under the Step 2A, Prong One analysis, it must be determined whether the claims recite an abstract idea that falls within one or more designated categories of patent ineligible subject matter (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability.
Abstract Ideas:
With respect to Independent Claim , claim limitations ()-() recite abstract ideas that fall within at least one of the three enumerated groupings of abstract ideas set forth in MPEP § 2106.04(a).
Mental Processes – MPEP § 2106.04(a)(2)(III):
Claim limitations ()-() fall within the mental process grouping of patent ineligible subject matter. Each limitation relates to functions that could be performed alternatively as mental processes, i.e., concepts performed in the human mind or using pen and paper (including an observation, evaluation, judgment, and opinion).
Specifically, a mental process, that can be performed in the human mind since each of the above steps could alternatively be performed in the human mind or with the aid of pen and paper. This conclusion follows from CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) where our reviewing court held that 35 U.S.C. § 101 did not embrace a process defined simply as using a computer to perform a series of mental steps that people, aware of each step, can and regularly do perform in their heads. See also In re Grams, 888 F.2d 835, 840–41 (Fed. Cir. 1989); In re Meyer, 688 F.2d 789, 794–95 (CCPA 1982); Elec. Power Group, LLC v. Alstom S.A., 830 F. 3d 1350, 1354–1354 (Fed. Cir. 2016) (“we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category”).
Claim limitations ()-() encompass concepts within the mental process abstract idea grouping in that that capable of being performed in the human mind, by a human using a pen and paper. Limitations ()-() include concepts that exemplify processes performed in the human mind including observations, evaluations, judgments, and/or opinions.
Furthermore, mental processes remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. See CyberSource, 654 F.3d at 1375 (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.”).
Step 2A, Prong Two - Does the claim recite additional elements that integrate the judicial exception into a practical application? - MPEP § 2106.04:
Under the Step 2A, Prong Two analysis, the identified abstract idea to which the claim is directed does not include limitations that integrate the abstract idea into a practical application, since the recited features of the abstract idea are being applied on a computer or computing device or via software programming that is simply being used as a tool (“apply it”) to implement the abstract idea. See MPEP §2106.05(f). This conclusion follows from the claim limitations which only recite a generic outside of the abstract idea.
In addition, merely “[u]sing a computer to accelerate an ineligible mental process does not make that process patent-eligible.” Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012); see also CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) (“simply appending generic computer functionality to lend speed or efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility.”), aff’d, 573 U.S. 208 (2014). Accordingly, the additional elements of an do(es) not transform the abstract idea into a practical application of the abstract idea.
A plain reading of the figures and associated descriptions in the specification reveals that generic processors may be used to execute the claimed steps. The additional elements are recited at a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to no more than mere instructions to apply the exception us