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 .
Examiner’s Note
Examiner has cited particular paragraphs/columns and line numbers or figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the 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. Applicant is reminded that the Examiner is entitled to give the broadest reasonable interpretation to the language of the claims. Furthermore, the Examiner is not limited to Applicants’ definition which is not specifically set forth in the claims.
Priority
This application discloses and claims only subject matter disclosed in prior Application No. 17088118, filed 11/3/2020, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or divisional. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application.
Information Disclosure Statement
The information disclosure statement filed 9/14/2025 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because a legible copy of the foreign patents listed have not been included. It has been placed in the application file, but the information referred to therein regarding these references has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations of Claim 1 are limitations present in Claim 1 of the copending Application No. 17088118. In addition, the preamble is identical.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are identical and depend from patentably indistinct independent claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are identical and depend from patentably indistinct independent claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are identical and depend from patentably indistinct independent claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the independent claim consists of limitations present in Claim 1 of Application No. 17088118, and Claim 5 comprises further limitations of that Claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 6 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the independent claim consists of limitations present in Claim 1 of Application No. 17088118, and Claim 6 comprises further limitations of that Claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 7 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the independent claim consists of limitations present in Claim 1 of Application No. 17088118, and Claim 7 comprises further limitations of that Claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations of Claim 8 are limitations present in Claim 8 of the copending Application No. 17088118. In addition, the preamble is identical.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 9 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are identical and depend from patentably indistinct independent claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 10 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are identical and depend from patentably indistinct independent claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 11 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are identical and depend from patentably indistinct independent claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 12 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the independent claim consists of limitations present in Claim 8 of Application No. 17088118, and Claim 5 comprises further limitations of that Claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 13 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the independent claim consists of limitations present in Claim 8 of Application No. 17088118, and Claim 6 comprises further limitations of that Claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the independent claim consists of limitations present in Claim 8 of Application No. 17088118, and Claim 7 comprises further limitations of that Claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 15 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations of Claim 15 are limitations present in Claim 15 of the copending Application No. 17088118. In addition, the preamble is identical.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 16 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are identical and depend from patentably indistinct independent claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 17 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are identical and depend from patentably indistinct independent claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 18 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are identical and depend from patentably indistinct independent claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 19 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the independent claim consists of limitations present in Claim 15 of Application No. 17088118, and Claim 5 comprises further limitations of that Claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 20 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of copending Application No. 17088118 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the independent claim consists of limitations present in Claim 15 of Application No. 17088118, and Claim 6 comprises further limitations of that Claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 directed to an abstract idea without significantly more.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The determination of whether a claim recites patent ineligible subject matter is a 2 step inquiry.
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), see MPEP 2106.03, or
STEP 2: the claim recites a judicial exception, e.g. an abstract idea, without reciting additional elements that amount to significantly more than the judicial exception, as determined using the following analysis: see MPEP 2106.04
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon? see MPEP 2106.04(II)(A)(1)
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? see MPEP 2106.04(II)(A)(2)
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? see MPEP 2106.05
101 Analysis – Step 1
Claim 1 is directed to a method (i.e., a process). Therefore, claim 1 is within at least one of the four statutory categories.
101 Analysis – Step 2A, Prong I
Regarding Prong I of the Step 2A analysis, 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. see MPEP 2106(A)(II)(1) and MPEP 2106.04(a)-(c)
Independent claim 1 includes limitations that recite an abstract idea (emphasized below [with the category of abstract idea in brackets]) and will be used as a representative claim for the remainder of the 101 rejection.
Claim 1 recites a method, comprising:
identifying, by a processor of a transport, user data which is to be delivered to a first device of an occupant within an interior of the transport and device data which is to be delivered to a second device installed on the transport; [abstract idea – mental process]
queuing, by the processor, the device data based on a position of the device data within a queue of an internal memory of an onboard computer of the transport; [abstract idea – mental process]
determining characteristics of a travel route of the transport; [abstract idea – mental process]
waiting to transmit the device data to the second device based on the characteristics of the travel route; [abstract idea – mental process]
determining that movement of the transport has temporarily stopped along the travel route; [abstract idea – mental process]
and while the transport is stopped, transmitting the user data to the first device.
The examiner submits that the foregoing bolded limitation(s) constitute a “mental process” because under its broadest reasonable interpretation, the claim covers limitations which may be performed in the human mind. Regarding the limitations of this claim, the limitations “identifying, … user data which is to be delivered to a first device of an occupant within an interior of the transport and device data which is to be delivered to a second device installed on the transport;” in the context of this claim encompass a person determining which data goes to which recipient. Regarding the limitations of this claim, the limitations “queuing, …, the device data based on a position of the device data within a queue of an internal memory of an onboard computer of the transport;” in the context of this claim encompass a person determining an order of providing data based on recipient priority. Regarding the limitations of this claim, the limitations “determining characteristics of a travel route of the transport;” in the context of this claim encompass a person determining characteristics of a travel route of the transport. Regarding the limitations of this claim, the limitations “waiting to transmit the device data to the second device based on the characteristics of the travel route” in the context of this claim encompass a person waiting to perform an action or provide information based on the characteristics of the travel route. Regarding the limitations of this claim, the limitations “determining that movement of the transport has temporarily stopped along the travel route;” in the context of this claim encompass a person determining that movement of the transport has temporarily stopped along the travel route. Accordingly, the claim recites at least one abstract idea.
101 Analysis – Step 2A, Prong II
Regarding Prong II of the Step 2A analysis, the claims are to be analyzed to determine whether the claim, as a whole, integrates the abstract into a practical application. see MPEP 2106.04(II)(A)(2) and MPEP 2106.04(d)(2). 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” [with a description of the additional limitations in brackets], while the bolded portions continue to represent the “abstract idea”.):
identifying, by a processor of a transport, [performing the abstract idea using a generic computer] user data which is to be delivered to a first device of an occupant within an interior of the transport and device data which is to be delivered to a second device installed on the transport; [abstract idea – mental process]
queuing, by the processor, [performing the abstract idea using a generic computer] the device data based on a position of the device data within a queue of an internal memory of an onboard computer of the transport; [abstract idea – mental process]
determining characteristics of a travel route of the transport; [abstract idea – mental process]
waiting to transmit the device data to the second device based on the characteristics of the travel route; [abstract idea – mental process]
determining that movement of the transport has temporarily stopped along the travel route; [abstract idea – mental process]
and while the transport is stopped, transmitting the user data to the first device. [insignificant extra-solution activity]
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 “by a processor of a transport,” and “by the processor” are in the context of this claims recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of determining a vehicle and geofence’s location in relation to each other, and whether this is acceptable). The limitation to “and while the transport is stopped, transmitting the user data to the first device” is a mere post-solution activity of transmitting based on the results of an abstract idea determination.
101 Analysis – Step 2B
Regarding Step 2B of the Revised Guidance, representative independent claim 1 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 elements “and while the transport is stopped, transmitting the user data to the first device” the examiner submits that these limitations are insignificant extra-solution activities. Finally as discussed above, the additional limitations of the to perform the abstract idea using a “processor” are mere instructions to apply the exemption using a generic computer, which cannot provide an inventive concept. In addition, all of these additional limitations (and the combination, thereof) amount to no more than what is well-understood, routine and conventional activity. Hence, the claim is not patent eligible.
Dependent claims 2-7 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 2-7 are not patent eligible under the same rationale as provided for in the rejection of Independent Claim 1.
Claim 8 is rejected for the same reasons as the representative Claim 1 above, as the claim is
substantially identical to the examined claims with only minor changes to the limitations; being a transport rather than a method, changes which do not affect the analysis as demonstrated above.
Dependent claims 9-14 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 9-14 are not patent eligible under the same rationale as provided for in the rejection of Independent Claim 8.
Claim 15 is rejected for the same reasons as the representative Claim 1 above, as the claim is
substantially identical to the examined claims with only minor changes to the limitations; being a non-transitory computer readable medium comprising instruction, changes which do not affect the analysis as demonstrated above.
Dependent claims 16-20 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 16-20 are not patent eligible under the same rationale as provided for in the rejection of Independent Claim 15.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB D UNDERBAKKE whose telephone number is (571)272-6657. The examiner can normally be reached Monday-Friday 8:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jelani Smith can be reached at 571-270-3969. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JACOB DANIEL UNDERBAKKE/Examiner, Art Unit 3662
/MAHMOUD S ISMAIL/Primary Examiner, Art Unit 3662