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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
This Office Action is in response to the Applicant’s amendments and remarks filed 05 December 2025. Claims 1-5 are currently canceled. Claims 6-9 are new claims. Claims 6-9 are presently pending and are presented for examination.
Reply to Applicant’s Remarks
Applicant’s remarks filed 05 December 2025 have been fully considered and are addressed as follows:
Claim Objections:
Claims 1-5 were canceled in the amendment to the claims filed 05 December 2025, therefore, the claim objects set forth in the previous Office Action are withdrawn.
Claim Rejections under 35 U.S.C. 101:
In the amendment to the claims filed 05 December 2025, the applicant canceled claims 1-5 and added new claims 6-9. New claims 6-9 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter for the reasons set forth in this Office Action.
Claim Interpretation under 35 U.S.C. 112(f):
New claim 6 recites “a communication unit including a communication interface connected to…”. The term “communication unit” is a generic placeholder that does not connote sufficiently definite structure to a person of ordinary skills in the art. The term “communication interface”, which is recited as being included in the “communication unit”, is also a generic placeholder that does not connote sufficiently definite structure to a person of ordinary skills in the art. Therefore, “communication unit” is being interpreted under 35 U.S.C. 112(f).
Claim Rejections under 35 U.S.C. 112:
In the amendment to the claims filed 05 December 2025, the applicant canceled claims 1-5 and added new claims 6-9. Therefore, the 112 rejections for claims 1-5 set forth in the previous Office Action are withdraw. New claims 6-7 necessities a new ground of rejection under 35 U.S.C. 112(a) and 112(b) for the reasons set forth in this Office Action.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
communication unit in claim 6;
The structure of the communication unit is not disclosed in the specification.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 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 6-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 6 recites “a communication unit including a communication interface connected to a network and configured to communicate with a navigation device and a server”. The “communication unit” invokes 112(f), where structure, material or act must be given in the specification for the communication unit to perform the function of communicating with a navigation device and a server. The specification lacks detailed description of the communication unit. It is not obvious to one of ordinary skill in the art what the communication unit is, what the advantages of using a communication unit are and how communicating with a navigation device and a server is performed by the communication unit, therefore the specification lacks written description to support the limitation of the communication unit.
Claim 7 is rejected by virtue of their dependency on claim 6.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 6 recites “a communication unit including a communication interface connected to a network and configured to communicate with a navigation device and a server” which is ambiguous. It is not clear “a communication unit…configured to communicate…” OR “a communication interface…configured to communicate…”. Therefore, the claim is indefinite and rejected under 35 U.S.C. 112(b). The claim is interpreted by the examiner as “a communication unit…configured to communicate…” for the purpose of examination.
Claim limitation “communication unit” in claim 6 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts or performing the entire claimed function and to clearly link the structure, material or acts to the function. The “communication unit” is recited in the claim as having the function of communicating with a navigation device and a server. However, the specification fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claim 7 is rejected in virtue of their dependency on claim 6.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 6-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
101 Analysis – Step 1
Claim 8 is directed to an information processing method (i.e., a process). Therefore, claim 8 is within at least one of the four statutory categories.
101 Analysis – Step 2A, Prong I
Regarding Prong I of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether they recite subject matter that falls within one of the follow groups of abstract ideas: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes.
Independent claim 8 includes limitations that recite an abstract idea (emphasized below) and will be used as a representative claim for the remainder of the 101 rejection. Claim 8 recites:
An information processing method executed by an information processing device including a communication unit and a control unit, the method comprising:
receiving, by the control unit information of a destination set on a display screen of a navigation device in a vehicle;
acquiring, by the control unit, information of a parking lot annexed to the destination;
determining whether the annexed parking lot is congested based on an occupancy rate of the annexed parking lot;
in response to a determination the annexed parking lot is congested, displaying, on the display screen, a congestion status of the annexed parking lot;
in a case where a part or all of the annexed parking lot is under construction at a scheduled date and time that the vehicle arrives at the destination, displaying, on the display screen, a construction state of the annexed parking lot;
searching for information of alternative parking lot candidates located within a predetermined distance from the destination;
generating, from among the alternative parking lot candidates, by the control unit, a list of a predetermined number of alternative parking lots arranged in order of the shortest total time, the total time including a time during which the vehicle moves from a departure location to an entrance of an alternative parking lot, a time during which the vehicle moves from the entrance of the alternative parking lot to a parking space of the alternative parking lot, and a time during which a driver of the vehicle walks from the parking space to an entrance of a destination facility; and
displaying, on the display screen of the navigation device, the list of the predetermined number of the alternative parking lots.
The examiner submits that the foregoing bolded limitation(s) constitute a “mental process” because under its broadest reasonable interpretation, the claim covers performance of the limitation in the human mind. For example, “determining…”, “searching...” and “generating…” in the context of this claim encompasses a person (e.g. a driver) looking at data collected and forming a simple judgement in the mind or using a pen and paper. Accordingly, the claim recites at least one abstract idea.
101 Analysis – Step 2A, Prong II
Regarding Prong II of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether the claim, as a whole, integrates the abstract into a practical application. As noted in the 2019 PEG, it must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.”
In the present case, the additional limitations beyond the above-noted abstract idea are as follows (where the underlined portions are the “additional limitations” while the bolded portions continue to represent the “abstract idea”):
An information processing method executed by an information processing device including a communication unit and a control unit, the method comprising:
receiving, by the control unit information of a destination set on a display screen of a navigation device in a vehicle;
acquiring, by the control unit, information of a parking lot annexed to the destination;
determining whether the annexed parking lot is congested based on an occupancy rate of the annexed parking lot;
in response to a determination the annexed parking lot is congested, displaying, on the display screen, a congestion status of the annexed parking lot;
in a case where a part or all of the annexed parking lot is under construction at a scheduled date and time that the vehicle arrives at the destination, displaying, on the display screen, a construction state of the annexed parking lot;
searching for information of alternative parking lot candidates located within a predetermined distance from the destination;
generating, from among the alternative parking lot candidates, by the control unit, a list of a predetermined number of alternative parking lots arranged in order of the shortest total time, the total time including a time during which the vehicle moves from a departure location to an entrance of an alternative parking lot, a time during which the vehicle moves from the entrance of the alternative parking lot to a parking space of the alternative parking lot, and a time during which a driver of the vehicle walks from the parking space to an entrance of a destination facility; and
displaying, on the display screen of the navigation device, the list of the predetermined number of the alternative parking lots.
For the following reason(s), the examiner submits that the above identified additional limitations do not integrate the above-noted abstract idea into a practical application.
Regarding the additional limitations of “receiving…”, “acquiring…”, “…displaying…”, “…displaying…” and “displaying…” the examiner submits that these limitations are insignificant extra-solution activities that merely use a computer to perform the process. In particular, the receiving…, acquiring steps from the external source are recited at a high level of generality (i.e. as a general means of gathering data for use in the determining, searching and generating steps), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The displaying steps are recited at a high level of generality (i.e. as a general means of displaying information), which is a form of insignificant extra-solution activity.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitation(s) as an ordered combination or as a whole, the limitation(s) add nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole, reflect an improvement in the functioning of a computer or an improvement to another technology or technical field, apply or use the above-noted judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use 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 not more than a drafting effort designed to monopolize the exception (MPEP § 2106.05). Accordingly, the additional limitation(s) do/does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
101 Analysis – Step 2B
Regarding Step 2B of the 2019 PEG, representative independent claim 8 does not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a control unit to perform the generating... amounts to nothing more than applying the exception using a generic computer component. Generally applying an exception using a generic computer component cannot provide an inventive concept. And as discussed above, the additional limitations of “receiving…”, “acquiring…”, “…displaying…”, “…displaying…” and “displaying…” the examiner submits that these limitations are insignificant extra-solution activities.
Further, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field. The additional limitations of “receiving...” and “acquiring...” are well-understood, routine, and conventional activities, and the specification does not provide any indication that the control unit is anything other than a conventional computer. MPEP 2106.05(d)(II), and the cases cited therein, including Intellectual Ventures I, LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016), TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610 (Fed. Cir. 2016), and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner. The additional limitations of “…displaying...,” are well-understood, routine, and conventional activities because the Federal Circuit in Trading Techs. Int’l v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019), and Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017), for example, indicated that the mere displaying of data is a well understood, routine, and conventional function. Hence, the claim is not patent eligible.
As per Claim 6.
Claim 6, an apparatus claim (an information processing device), includes limitations analogous to claim 8 a process claim (an information processing method).
Accordingly, claim 6 is rejected under 35 U.S.C. § 101 because the claim is directed to an abstract idea without significantly more.
Dependent claims 7 and 9 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 7 and 9 are not patent eligible under the same rationale as provided for in the rejection of claims 6 and 8.
Therefore, claims 6-9 are ineligible under 35 USC §101.
Allowable Subject Matter
Claims 6-9 would be allowable if rewritten or amended to overcome the claim rejection(s) under 35 U.S.C. 101, 112(a), 112(b) as set forth in this Office Action.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Examiner’s Notes
Examiner has cited particular columns/paragraph and line numbers in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention. This will assist in expediting compact prosecution. MPEP 714.02 recites: “Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP §2163.06. An amendment which does not comply with the provisions of 37 CFR 1.121(b), (c), (d), and (h) may be held not fully responsive. See MPEP § 714.” Amendments not pointing to specific support in the disclosure may be deemed as not complying with provisions of 37 C.F.R. 1.131(b), (c), (d), and (h) and therefore held not fully responsive. Generic statements such as "Applicants believe no new matter has been introduced" may be deemed insufficient.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONGYE LIANG whose telephone number is (571)272-5410. The examiner can normally be reached on Monday-Friday 9:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rachid Bendidi can be reached on 571-272-4896. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONGYE LIANG/Primary Examiner, Art Unit 3664