DETAILED ACTION
Status of Claims
The status of the claims is as follows:
(a) Claims 1-20 remain pending.
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 .
Response to Amendments
The Examiner accepts the amendments received on 12/18/2025.
Response to Arguments
The Examiner has considered the Applicant’s submitted Remarks, filed on 12/18/2025. The Examiner below proceeds with a bona fide attempt to respond properly to each argument raised by the Applicant.
To begin, the Applicant asserts claim 1 should not be characterized as abstract, but rather characterized as a specific technical improvement in vehicle control systems and analogizes claim 1 to McRO. (Citation Omitted). The Examiner respectfully disagrees. Claim 1 recites receiving location data, determining one or more locations, comparing a risk map to driving profile safety scores, selecting a driving profile within a threshold range, causing download of the driving profile, and configuring vehicle operation logic in accordance with the driving profile. Claim 1 therefore remains focused on collecting information, analyzing information, comparing information, and selecting a result based on the analysis. Such operations fall within the category of mental processes. The Examiner finds a human could review location information, review risk information, compare available profile scores, and select a profile meeting a desired threshold. Moreover, the recitation of processors, memory, and locational sensors does not change the character of the recited operations. The recited processors, memory, and locational sensors merely perform the abstract process in a computerized environment. The Examiner therefore maintains that claim 1 recites an abstract idea under Step 2A, Prong One. Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016).
Moreover, Applicant argues claim 1 integrates any alleged abstract idea into a practical application through recitations of locational sensors, processors, memory, and vehicle operation logic. The Examiner respectfully disagrees. The recited locational sensors, processors, and memory are stated at a high level of generality and perform ordinary functions of receiving, processing, and storing information. The recited additional elements therefore do no more than apply the abstract idea using generic technological components.
Applicant further argues claim 1 improves vehicle safety technology by automatically configuring vehicle operation based on location and risk assessment. The claim language does not support Applicant’s position. Claim 1 recites “configure vehicle operation logic associated with the vehicle in accordance with the driving profile.” Claim 1 does not recite a specific braking adjustment. Claim 1 does not recite a specific steering adjustment, a specific throttle adjustment, or a specific traction adjustment. Simply put, claim 1 does not recite any concrete control parameter or technical mechanism by which vehicle operation is changed. Therefore, claim 1 does not integrate the judicial exception into a practical application.
Furthermore, Applicant argues the combination of comparing a risk map to driving profile safety scores, selecting a driving profile within a threshold range, causing download of the driving profile, and configuring vehicle operation logic presents an unconventional approach to vehicle safety. The Examiner respectfully disagrees. Applicant’s argument addresses alleged novelty or alleged desirability of the claimed concept. Alleged novelty alone does not establish an inventive concept under Step 2B. The relevant inquiry under Step 2B is whether claim 1 recites additional elements that amount to significantly more than the judicial exception.
As currently presented, claim 1 recites processors, memory, and locational sensors performing ordinary and well-understood functions. Claim 1 further recites receiving data, determining location information, comparing information, selecting a profile, downloading the selected profile, and configuring logic in accordance with the selected profile. The Examiner finds the recited operations amount to a conventional computer implementation of an abstract decision process. Claim 1 does not recite any unconventional hardware arrangement, any non-routine sensor configuration, and fails to recite any specific control algorithm that improves computer functionality or vehicle functionality. Claim 1 therefore does not add significantly more than the abstract idea itself.
Applicant also argues claim 1 improves vehicle safety by enabling adaptive vehicle operation and reducing human error. The Examiner finds Applicant’s argument unpersuasive. Any asserted improvement described in the remarks is stated at a high level of abstraction and is not tied to a specific technological mechanism recited in claim 1. Claim 1 recites the desired outcome of safer or adaptive vehicle operation, however claim 1 does not recite a specific technical implementation that produces such outcome in an unconventional manner.
Accordingly, Applicant’s remarks have been fully considered but are not persuasive. The rejection of claims 1, 8, and 15 under 35 U.S.C. § 101 is maintained.
The Arguments for claims 5, 12, and 19 have been reviewed. The Examiner continues to find that the limitation “actuate operation of the vehicle” is broad enough to encompass non-practical applications, including actions such as display output based on logic. The Examiner therefore recommends that Applicant further amend claims 5, 12, and 19 to recite a concrete practical application, such as controlling vehicle steering, braking, or speed in accordance with the driving profile.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of U.S. Patent No. 12,054,168.
The independent claims of the instant application (i.e., 18/779,874) are compared to the independent claims of U.S. Patent 12,054,168.
Instant Application 18/779,874
Parent Case
U.S. Patent 12,054,168
Examiner’s Analysis
(see detailed analysis below)
Claim 1 (Apparatus)Receive location data from locational sensors; determine one or more locations; compare a risk map to driving profile safety scores; select a driving profile within a threshold range of a risk score associated with the risk map; cause download of the driving profile; configure vehicle operation logic according to the profile.
Claim 7 (Apparatus)Receive vehicle performance and operational data of a first driver; generate a first driving profile; determine one or more locations; receive a risk map; compare the risk map to safety scores; select one or more second driving profiles associated with different drivers; output recommendation; receive user selection; cause download; configure operation logic; actuate operation of the vehicle.
The instant claim omits (1) generating a first profile, (2) outputting recommendations, (3) receiving user selection, and (4) actuating the vehicle. These are routine variations of configuring operation logic and are taught in the parent case. The subject matter is not patentably distinct.
Claim 8 (Method)Receive location data; determine a location; compare a risk map to safety scores; select a driving profile within a threshold range; cause download; configure vehicle operation logic.
Claim 1 (Method)Receive vehicle performance data of a first driver; generate a first driving profile; determine locations; receive a risk map; compare to safety scores; select one or more second driving profiles; output recommendation; receive user selection; cause download; configure operation logic; actuate operation of the vehicle.
Same distinctions as above. The omission of generating a profile, user selection, and actuation are obvious modifications to configuring vehicle operation logic.
Claim 15 (CRM)Storage media with instructions to: receive data associated with a vehicle; determine a location; compare a risk map to safety scores; select a profile within a threshold range; cause download; configure operation logic.
Claim 13 (CRM)Storage media with instructions to: receive vehicle performance data of a first driver; generate a first driving profile; determine locations; receive a risk map; compare to safety scores; select one or more second driving profiles; output recommendation; receive user selection; cause download; configure vehicle logic; actuate operation of the vehicle.
Same distinctions as above. The additional limitations in the parent claim are obvious variations and do not render the instant claims patentably distinct.
Examiner Analysis:
Claim 1 of the instant application recites an apparatus configured to receive location data from sensors, determine one or more locations of the vehicle, compare a risk map to driving profile safety scores, select a profile within a threshold range, download the profile, and configure vehicle operation logic in accordance with the profile. Claim 7 of the ’168 patent recites substantially the same limitations, but further requires receiving performance and operational data of a first driver, generating a first driving profile, outputting a recommendation of second profiles, receiving a user selection of a profile, and actuating the vehicle in accordance with the selected profile. The Examiner finds the differences in claim 1 of the instant application represent only the omission of these additional steps. Generating a driving profile, presenting recommendations for user selection, and actuating the vehicle based on the selected profile are conventional aspects of vehicle control and personalization, and would have been obvious modifications to configuring operation logic as already recited. Accordingly, claim 1 is not patentably distinct over claim 7 of the ’168 patent.
Claim 8 of the instant application recites a method for receiving location data, determining a location, comparing a risk map to driving profile safety scores, selecting a profile within a threshold range, downloading the profile, and configuring operation logic in accordance with the profile. Claim 1 of the ’168 patent recites a method that includes these same general concepts, but additionally requires receiving driver performance data, generating a first driving profile, outputting recommendations, receiving a user selection, and actuating the vehicle in accordance with the selected profile. As with claim 1 of the instant application, the Examiner finds the omission of these steps does not render the claim patentably distinct. The generation of a profile, recommendation, user selection, and actuation represent logical and expected extensions of configuring vehicle logic based on safety information. Therefore, claim 8 is not patentably distinct over claim 1 of the ’168 patent.
Claim 15 of the instant application recites a non-transitory computer-readable medium with instructions for receiving vehicle data, determining a location, comparing a risk map to safety scores, selecting a driving profile within a threshold range, downloading the profile, and configuring operation logic in accordance with the profile. Claim 13 of the ’168 patent similarly recites instructions for performing these operations, but further requires receiving performance and operational data, generating a first profile, outputting recommendations, receiving user selection, and actuating vehicle operation in accordance with the selected profile. The Examiner finds the instant claim omits these features, which would have been understood as obvious steps in the context of vehicle control and driver profile management, as evidenced by the ’168 patent itself. Therefore, claim 15 is not patentably distinct over claim 13 of the ’168 patent.
Accordingly, claims 1–20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 7, and 13 of U.S. Patent No. 12,054,168 B2.
This rejection may be overcome by the filing of a terminal disclaimer in accordance with 37 CFR 1.321(c), or by amending the claims to present patentably distinct subject matter.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is not directed to patent eligible subject matter. Specifically, the claimed invention is directed to a judicial exception without significantly more.
Analysis for Independent Claims 1, 8, and 15:
Step 1: Determining if claim(s) are directed a statutory class of invention (i.e., process, machine, manufacture, or composition of matter).
Independent claims 1, 8, and 15 are directed to statutory categories. (Step 1: yes)
Step 2A Prong One: Determining if the claim(s) recite a judicial exception (e.g., mathematical concepts, certain method of organizing human activity, or a mental processes (MPEP 2106.04).
Claim 1 is directed to an apparatus including processors and memory for executing instructions to receive vehicle location data, determine a location, compare the location and associated risk maps to driving profile scores, select a profile, download the profile, and configure vehicle logic accordingly. The claim as drafted describes the process of gathering, analyzing, and comparing data to make a selection or output data (i.e., logic), which falls within the category of abstract mental processes. In particular, the claim parallels the reasoning in Electric Power Group, LLC v. Alstom S.A., wherein claims directed to data collection and analysis were found abstract. Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016).
Claim 8 recites a method of receiving data, determining a location, comparing data to a risk map, selecting a profile, downloading the profile, and configuring operation logic. The focus remains on the informational concept of analyzing data to make a choice. This again falls into the category of abstract mental processes, as a person could theoretically carry out these steps of reviewing data, comparing scores, and selecting profiles without technological intervention. The claim therefore describes an abstract idea.
Claim 15 recites non-transitory storage media containing instructions for performing substantially the same steps. The focus of the claim remains on receiving, analyzing, and comparing data to make a selection. As with claims 1 and 8, claim 15 falls within the category of abstract mental processes as defined in Electric Power Group. Id. Accordingly, each of claims 1, 8, and 15 is directed to an abstract idea under Step 2A, Prong One.
Step 2A Prong Two: Determining if additional limitations within the claim(s) integrate the judicial exception into a practical application.
Claim 1 does not integrate the abstract idea into a practical application. Although the claim recites “configuring vehicle operation logic,” the recitation is drafted at a high level of generality and does not specify any concrete manner in which the vehicle is controlled or altered. There is no recitation of adjusting braking systems, steering mechanisms, throttle inputs, or any tangible vehicle components. Instead, the claim stops at a conceptual statement of “configuring logic,” which is insufficient to demonstrate integration into a practical application.
Claim 8 also fails to integrate the abstract idea into a practical application. The method is expressed at a level of abstraction wherein the result (i.e., configuring operation logic) does not represent a specific technological improvement but rather an automation of the conceptual process of choosing a driving profile. The claim is focused on the outcome of profile selection rather than detailing any improvement in vehicle control technology.
Claim 15 similarly does not integrate the abstract idea into a practical application. The computer-readable media are limited to instructions for performing data collection and analysis steps followed by configuring logic at a high level. The recited functions do not meaningfully improve the operation of a computer or vehicle, nor do they transform the abstract concept of data comparison into a concrete technological application. Therefore, each claim fails Step 2A, Prong Two.
Step 2B: Determining if the additional elements, taken individually and in combination, do not result in the claim, as a whole, amounting to significantly more than the judicial exception.
Claim 1 recites additional elements of generic computing components such as processors, memory, and sensors. These elements perform only their well-understood, routine, and conventional functions of storing, processing, and receiving data. The downloading and configuring steps are also routine operations in the field of computing. When viewed as a whole, the claim merely instructs the practitioner to implement the abstract idea on a generic computer, which is insufficient to supply an inventive concept.
Claim 8 likewise does not recite significantly more than the abstract idea. The method claim employs standard computer functions of receiving, determining, comparing, selecting, downloading, and configuring. These steps do not amount to an unconventional arrangement of elements, nor do they provide a technical solution to a technical problem. Instead, they amount to a generic computer implementation of an abstract process, which fails to supply an inventive concept.
Claim 15 also lacks additional elements that would amount to significantly more. The claim recites storage media containing instructions for carrying out the abstract idea using routine computing steps. Storage media, processors, and sensors are all conventional elements. Implementing the claimed functionality through computer-readable instructions does not transform the abstract idea into patent-eligible subject matter. As such, the claim does not include significantly more than the identified abstract idea.
Conclusion:
The independent claim(s) are directed to the abstract idea of a mental process. Accordingly, claims 1, 8, and 15 are not patent eligible under 35 U.S.C. 101.
Analysis for Dependent Claims 2-7, 9-14, and 16-20:
Step 1: Determining if the claim(s) are directed a statutory class of invention (i.e., process, machine, manufacture, or composition of matter).
The dependent claims are properly directed to claims 1, 8, and 15. As a result, the dependent claims are properly directed to statutory classes. (Step 1: yes)
Step 2A Prong One: Determining if the claim(s) recite a judicial exception (e.g., mathematical concepts, mental processes, certain methods of organizing human activity, fundamental economic practices, and “an idea ‘of itself’”).
The dependent claims continue to encompass the mental process established in the independent claim(s). The same analysis of Step 2A Prong One for the independent claim(s) applies. Therefore, the dependent claims are directed to the judicial exception of a mental process.
Step 2A Prong Two: Determining if additional limitations within the claim(s) integrate the judicial exception into a practical application.
The dependent claims recite additional limitations, these limitations, when viewed both individually and in combination for the claim, fail to integrate the judicial exception into a practical application. As a result, the dependent claims are not integrated into a practical application.
Step 2B: Determining if the additional elements, taken individually and in combination, do not result in the claim, as a whole, amounting to significantly more than the judicial exception.
The additional elements in the dependent claims fail to recite any additional elements, viewed both individually (i.e., within a claim) and as a whole (i.e., claim set), that amount to significantly more than the judicial exception. The same analysis applies in this step 2B as discussed in Step 2A Prong Two (see independent claim analysis). As a result, the dependent claims fail to claim anything significantly more than the judicial exception and fail to integrate said claims into a practical application.
Conclusion:
The dependent claims are directed to the abstract idea of a mental process. Accordingly, claims 1-20 are not patent eligible.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J CROMER whose telephone number is (313)446-6563. The examiner can normally be reached M-F: ~ 8:15 A.M. - 6:00 P.M..
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/ANDREW J CROMER/Examiner, Art Unit 3667
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