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 .
Response to Arguments/Amendments
The amendment filed January 13th, 2026 has been entered. Claims 1-20 are currently pending in the Application.
Applicant’s amendments/arguments with respect to the rejection of claims under 35 U.S.C 103 have been considered and are persuasive. Therefore, the rejections of claims under 35 U.S.C 103 is withdrawn.
Applicant’s amendments with respect to the rejections of claims under 35 U.S.C 101 have been fully considered and is not persuasive. Therefore, the rejections of claims under 35 U.S.C 101 is sustained. Specifically..
Applicant remarks
MPEP 2106.06(b) Clear Improvement to a Technology or to Computer Functionality states: As explained by the Federal Circuit, some improvements to technology or to computer functionality are not abstract when appropriately claimed, and thus claims to such improvements do not always need to undergo the full eligibility analysis. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016). MPEP § 2106.05(a) provides details regarding improvements to a technology or computer functionality.
MPEP 2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field states:
In determining patent eligibility, examiners should consider whether the claim "purport(s) to improve the functioning of the computer itself' or "any other technology or technical field." Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1976, 1984 (2014). This consideration has also been referred to as the search for a technological solution to a technological problem. See e.g., DDR Holdings, LLC. v. Hotels.com, L.P., 773 F.3d 1245, 1257, 113 USPQ2d 1097, 1105 (Fed. Cir. 2014); Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300-01, 120 USPQ2d 1527, 1537 (Fed. Cir. 2016).
Applicant submits that the claimed invention, recited in claims 1-20, improves upon conventional functioning of a computer, or upon conventional technology or technological processes”
Examiner response
The examiner agrees with the legal standards cited by the applicant under Enfish and MPEP 2106.05(a);
However, the examiner respectfully disagrees. Under Step2A, Prong 1 of the Alice/Mayo framework, the claims are directed to the abstract idea of receiving data, generating a route, analyzing the route, and applying logical rules to formulate the driving instruction, which specifically falls within the judicial exception of mental processes. Formalizing standard human logic into finite state automata merely recites the abstract mental rules to the data.
Applicant remarks
“paragraph 11 of the specification states (emphasis added): In this way, the routing system generates vehicle routing directions using finite state automata. For example, the routing system may employ separate FSA for distinct driving maneuvers, which enables precise and isolated generation of directions. This modular approach ensures that the FSA can be updated or replaced independently, resulting in the routing system that facilitates straightforward debugging and enhancement. In addition, the routing system may integrate real-time traffic data into the driving instructions to provide an adaptive mechanism that can modify routes to evade traffic congestion or road incidents, thus conserving fuel, reducing emissions, and optimizing travel times.
The routing system may streamline computational efforts required to discern relevant navigational instructions, by reducing a complexity of routing models, and by enabling simpler in-field updates. The utilization of separate FSA for routing tasks may streamline navigation software maintenance and may provide for ongoing refinement. Thus, the routing system may conserve computing resources, networking resources, and/or other resources that would have otherwise been consumed by having updates or changes to one driving instruction type disrupt correct operation of other driving instruction types, failing to discern and correctly interpret various road topologies and driver maneuvers, providing incorrect directions to drivers based on failing interpret various road topologies and driver maneuvers, and/or the like. Applicant submits that one of ordinary skill in the art would understand that employing separate finite state automata (FSA) for distinct driving maneuvers improves technology such that it enables precise and isolated generation of directions, facilitates straightforward debugging and enhancement, streamline navigation software maintenance and conserves resources that would have otherwise been consumed.”
Examiner response
The examiner respectfully disagrees. To integrate an abstract idea into a practical application (Step 2A, Prong 2) the claim must provide a technological improvement, not an administrative one. The cited benefits of “straightforward debugging”, “simpler in-field updates” and “streamlined software maintenance” are administrative benefits that aids the the human programmer.
Applicant remarks
Applicant submits that one of ordinary skill in the art would understand that employing
separate finite state automata (FSA) for distinct driving maneuvers improves technology such
that it enables precise and isolated generation of directions, facilitates straightforward debugging and enhancement, streamline navigation software maintenance and conserves resources that would have otherwise been consumed.
For example, claim 1, as amended, recites "the plurality of instruction finite state
automata comprises at least a first finite state automata and a second finite state automata
operating independently from the first finite state automata, and wherein each of the first finite state automata and the second finite state automata is associated with a different driving
maneuver."
Examiner response
The examiner respectfully disagrees. Claim 1 merely recites the abstract idea itself at a high level of generality, utilizing independent logical rule sets for distinct tasks. Under Step 2B, the claims lack an inventive concept amounting to “significantly more”. The recited elements are merely a generic “device” and “vehicle”. The steps of receiving data, generating routes, and outputting instructions are well understood, routine, and conventional computer functions. Merely using a generic computing device to perform a mental process faster or more efficiently than a human does not transform the claim into patent-eligible subject matter.
Therefore, Applicant remarks do not overcome the rejection.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In January, 2019 (updated October 2019), the USPTO released new examination guidelines setting forth a two-step inquiry for determining whether a claim is directed to non-statutory subject matter. According to the guidelines, a claim is directed to non-statutory subject matter if:
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), 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:
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon?
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application?
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
Using the two-step inquiry, it is clear that claim 1 is directed toward non-statutory subject matter, as shown below:
STEP 1: Does claim 1 fall within one of the statutory categories? Yes. The claim is directed toward a system (machine) which falls within one of the statutory categories.
STEP 2A (PRONG 1): Is the claim directed to a law of nature, a natural phenomenon or an abstract idea? Yes, the claim is directed to an abstract idea.
With regard to STEP 2A (PRONG 1), the guidelines provide three groupings of subject matter that are considered abstract ideas:
Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;
Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
Mental processes – concepts that are practicably performed in the human mind (including an observation, evaluation, judgment, opinion).
Claim 1.
A method, comprising:
receiving, by a device, current location data and vehicle data associated with a vehicle traveling to a destination;
receiving, by the device, traffic data identifying traffic and roads in a geographical location associated with the vehicle;
generating, by the device, a route for the vehicle based on the current location data, the vehicle data, and the traffic data;
performing, by the device, a common feature analysis of the route to generate link features associated with links of the route;
processing, by the device, the link features, with a plurality of instruction finite state automata, to generate a list of driving instructions for the vehicle to the destination; wherein the plurality of instruction finite state automata comprises at least a first finite state automata and a second finite state automata operating independently from the first finite state automata, and wherein each of the first finite state automata and the second finite state automata is associated with a different driving maneuver;
modifying, by the device, the list of driving instructions to generate a modified list of driving instructions;
including, by the device, additional information with the modified list of driving instructions to generate a final list of driving instructions; and
providing, by the device, the final list of driving instructions to the vehicle.
The system in claim 1 (particularly the limitations highlighted above) is a mental process that can be practicably performed in the human mind and, therefore, an abstract idea. It merely consists of obtaining vehicle location and data while the vehicle is on route to a destination, wherein generating a route based on the location, vehicle data, and traffic data, whereby providing instructions to reach a destination based on waypoints. These limitations, under a broadest reasonable interpretation, are limitations that can be practically performed in the human mind, and therefore is a mental process. The limitations is equivalent to a person providing instructions to a taxi driver, wherein the vehicle reaches a certain waypoint further providing driving instructions for the driver to reach his/her destination. The Examiner notes that under MPEP 2106.04(a)(2)(III), the courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 ("‘Mental processes and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same). As such, a person providing instructions to a taxi driver, wherein the vehicle reaches a certain waypoint further providing driving instructions for the driver to reach his/her destination recites a mental process.
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? No, the claim does not recite additional elements that integrate the judicial exception into a practical application.
With regard to STEP 2A (prong 2), whether the claim recites additional elements that integrate the judicial exception into a practical application, the guidelines provide the following exemplary considerations that are indicative that an additional element (or combination of elements) may have integrated the judicial exception into a practical application:
an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
While the guidelines further state that the exemplary considerations are not an exhaustive list and that there may be other examples of integrating the exception into a practical application, the guidelines also list examples in which a judicial exception has not been integrated into a practical application:
an additional element merely recites the words “apply it” (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea;
an additional element adds insignificant extra-solution activity to the judicial exception; and
an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use.
Claim 1.
A method, comprising:
receiving, by a device, current location data and vehicle data associated with a vehicle traveling to a destination;
receiving, by the device, traffic data identifying traffic and roads in a geographical location associated with the vehicle;
generating, by the device, a route for the vehicle based on the current location data, the vehicle data, and the traffic data;
performing, by the device, a common feature analysis of the route to generate link features associated with links of the route;
processing, by the device, the link features, with a plurality of instruction finite state automata, to generate a list of driving instructions for the vehicle to the destination; wherein the plurality of instruction finite state automata comprises at least a first finite state automata and a second finite state automata operating independently from the first finite state automata, and wherein each of the first finite state automata and the second finite state automata is associated with a different driving maneuver;
modifying, by the device, the list of driving instructions to generate a modified list of driving instructions;
including, by the device, additional information with the modified list of driving instructions to generate a final list of driving instructions; and
providing, by the device, the final list of driving instructions to the vehicle.
Claim 1 does not recite any of the exemplary considerations (particularly the limitations underlined above) that are indicative of an abstract idea having been integrated into a practical application (particularly the limitations highlighted above). Specifically, the “providing” step is claimed generically and is merely post solution actions (e.g., display of information), which is a form of extra solution activity.
The one or more processors and the computer readable medium merely describes how to generally “apply” the otherwise mental judgments in a generic or general purpose computing environment. The one or more processors and the computer readable medium are recited at a high level of generality and merely automate the aggregating and processing steps.
Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No, the claim does not recite additional elements that amount to significantly more than the judicial exception.
With regard to STEP 2B, whether the claims recite additional elements that provide significantly more than the recited judicial exception, the guidelines specify that the pre-guideline procedure is still in effect. Specifically, that examiners should continue to consider whether an additional element or combination of elements:
adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
The claim does not recite any specific limitation or combination of limitations that are not well-understood, routine, conventional (WURC) activity in the field. Aggregating and processing data are fundamental activities performed by computers/processors. Further, applicant’s specification does not provide any indication that the aggregating and processing are performed using 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 performance of an action is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Further, 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).
CONCLUSION
Thus, since claim 1 is: (a) directed toward an abstract idea, (b) does not recite additional elements that integrate the judicial exception into a practical application, and (c) does not recite additional elements that amount to significantly more than the judicial exception, it is clear that claim 1 is directed towards non-statutory subject matter.
Independent claims 8 and 15 are commensurate in scope to claim 1 and are rejected using a similar analysis to claim 1 above.
Dependent claims 2-7, 9-14 and 16-20 further limit the abstract idea without integrating the abstract idea into practical application or adding significantly more. For example, In claim 2, the addition limitations of
“wherein processing the link features, with the plurality of instruction finite state automata, to generate the list of driving instructions comprises: processing at least one of the link features, with at least one of the plurality of instruction finite state automata, to generate a turn instruction for the vehicle.”, under the broadest reasonable interpretation, covers performance of the limitation in the mind using a similar analysis applied to claim 1 above. The system in claim 2, specifically the limitation above, is a mental process that can be practicably performed in the human mind and, therefore, and abstract idea. This is equivalate to a person providing instructions to a taxi driver, wherein the vehicle reaches a certain waypoint further providing driving instructions for the driver to reach his/her destination.
As such, claims 1-20 are rejected under 35 USC 101 as being drawn to an abstract idea without significantly more, and thus are ineligible.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Wesam Almadhrhi whose telephone number is (571) 270-3844. The examiner can normally be reached on 7:30 AM - 5PM Mon-Fri Eastern Alt Fri.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anne Antonucci can be reached on (313) 446-6519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WESAM NMN ALMADHRHI/Examiner, Art Unit 3666
/ANNE MARIE ANTONUCCI/Supervisory Patent Examiner, Art Unit 3666
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