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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
Acknowledgement is made of Applicant’s Information Disclosure Statement (IDS) form PTO-1149 filed 08/03/2024. This IDS has been considered.
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 10-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Legal Framework
An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, the Office is guided by the Court’s two-part framework, described in Mayo and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, Examiners first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, Examiners turn to the second part of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (“USPTO”) published revised guidance on the application of § 101 and further updated this guidance in October 2019. This guidance is now found in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure (MPEP), and particularly Sections 2103 through 2106.07(c). See MPEP §§ 2103–2106.07(c) (9th ed., Rev. 10.2019, June 2020).
Under the 2019 Revised Guidance and the October 2019 Update, Examiners first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. 2018)) (“Step 2A, Prong Two”). 2019 Revised Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do Examiners then look, under Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Analysis
Examiners consider the claim as a whole giving it the broadest reasonable construction as one of ordinary skill in the art would have interpreted it in light of the Specification at the time of filing.
The Examiner finds, under Step 1 of the 2019 Revised Guidance, that claims 10-18 are directed to an apparatus and therefore, all claims recite a statutory category of invention.
Revised Step 2A, Prong One –recites a judicial exception
According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S. at 218 (emphasis added). The Memorandum instructs Examiners first to determine whether each claim recites any judicial exception to patent eligibility. 84 Fed. Reg. at 54. The Memorandum identifies three judicially-excepted groupings: (1) mathematical concepts, (2) certain methods of organizing human activity such as fundamental economic practices, and (3) mental processes. Id. at 52. Examiners primarily focus here on the first and third groupings - mathematical concepts and mental processes.
Claim 10 recites the limitations deriving a road surface roughness value representing a roughness of a road surface on which the plurality of vehicles travel for each speed range based on the driving information of the plurality of vehicles and correcting, for each speed range, each road surface roughness value for each speed range, and combining the road surface roughness value corrected for each speed range to derive a corrected road surface roughness value which under broadest reasonable interpretation can be considered either mathematical concepts (i.e. algorithms) and/or mental processes and therefore are considered abstract ideas.
Revised Step 2A, Prong Two – Practical Application
Having determined that claim 10 recites abstract ideas, Examiner next looks to determine whether the claims recite “additional elements that integrate the judicial exception into a practical application.” MPEP § 2106.05(a)–(c), (e)–(h); 2019 Revised 101 Guidance, 84 Reg. at 53–54. Integration into a practical application requires an additional element or a combination of additional elements in the claim to “apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” 2019 Revised 101 Guidance, 84 Fed. Reg. at 53–54; see also id. at 55 (setting forth exemplary considerations indicative that an additional element or combination of elements may have integrated the judicial exception into a practical application).
In the current instance, there are no limitations integrating the abstract ideas into a practical application as there is no improvement to the functioning of a computer or to any other technology or technical field, it is not used by a particular machine or to effect a particular transformation.
It is noted that while the claim specifies the abstract idea is being carried out on a generic computer, it does not appear to meet the criteria of an improvement to the functioning or a computer as outlined in MPEP §2106.04(d)(1).
Step 2B–Inventive Concept
Because the Examiner has determined that claim 1 is directed to an abstract idea and it does not include additional elements that integrate the abstract idea into a practical application, the Examiner looks to whether each claim provides an inventive concept, i.e., adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field. 2019 Revised 101 Guidance, 84 Fed. Reg. at 56. That is not the case here. See Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (holding that “the ‘inventive concept’ cannot be the abstract idea itself”).
Claim 10 recites the additional limitations of “ a microprocessor configured to perform acquiring driving information of a plurality of vehicles which are traveling, including acceleration information indicating accelerations of the plurality of vehicles, speed information indicating driving speeds of the plurality of vehicles, and position information of the plurality of vehicles”, “acquiring map information including information of a road on which the plurality of vehicles travel” and “an output unit configured to output the corrected road surface roughness value in association with the information of the road”.
The microprocessor appears to be a generic computing implement simply used to carry out the abstract idea. The Supreme Court has ruled that “merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention”. Alice Corporation Pty. Ltd. v. CLS Bank International 573 U.S. __, 134 S. Ct. 2347 (2014).
The steps of acquiring driving information and acquiring map information are considered merely data gathering, necessary for carrying out the abstract idea. They are recited at the highest level of generality and therefore do not place any meaningful limitations on the abstract idea. They are therefore considered insignificant extra solution activity. See MPEP §2106.05(g) (“[w]hether the limitation amounts to necessary data gathering and outputting, (i.e., all uses of the recited judicial exception require such data gathering or data output). See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (presenting offers and gathering statistics amounted to mere data gathering).”
An output unit that merely outputs the result of the abstract idea is likewise not considered as providing an inventive concept. Courts have ruled that merely providing information without it resulting in any further action to be taken is considered insignificant post solution activity. See Alice pg. 15, first paragraph: “The same is true with respect to the use of a computer to obtain data, adjust account balances, and issue automated instructions; all of these computer functions are “well-understood, routine, conventional activit[ies]” previously known to the industry. Mayo, 566 U. S., at ___ (slip op., at 4). In short, each step does no more than require a generic computer to perform generic computer functions.”
Therefore, because there are no additional elements that can provide an inventive concept, it is concluded that claim 10 does not recite patent eligible subject matter.
Turning now to the dependent claims, claims 11 and 13-18 are further drawn to the details of the data gathering necessary to perform the abstract idea and are therefore insignificant extra solution activity. MPEP §2106.05(g). Claims 12 and 13 are further defining and narrowing the abstract idea without adding an inventive concept that is significantly more.
Applying the guidance set forth in the Memorandum, the Examiner concludes that claims 10-18 do not recite patent-eligible subject matter.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 10-12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Shikanai (US 2022/0412756).
Regarding claim 10, Shikanai discloses in figures 1-8 a road surface evaluation apparatus (10) (¶¶ [0008], [0038]) comprising a microprocessor (13) configured to perform acquiring driving information of a plurality of vehicles (11-n) which are traveling (¶ [0038]), including acceleration information indicating accelerations of the plurality of vehicles (11-n) (¶¶ [0043], [0051]-[0052]), speed information indicating driving speeds of the plurality of vehicles (11-n) (¶¶ [0042], [0051]-[0052]), and position information of the plurality of vehicles (11-n) (¶¶ [0041], [0051]-[0052]), acquiring map information including information of a road on which the plurality of vehicles (11-n) travel (¶ [0070]) deriving a road surface roughness value representing a roughness of a road surface on which the plurality of vehicles (11-n) travel for each speed range based on the driving information of the plurality of vehicles (11-n) (¶¶ [0064]-[0065], [0069]), correcting, for each speed range, each road surface roughness value for each speed range, and combining the road surface roughness value corrected for each speed range to derive a corrected road surface roughness value (¶¶ [0063]-[0065]), and an output unit (142) configured to output the corrected road surface roughness value in association with the information of the road (¶ [0071]).
Regarding claim 11, Shikanai discloses each of the plurality of vehicles includes a vehicle speed sensor (112) configured to detect a driving speed (¶ [0042]), and the speed information indicates the driving speeds of the plurality of vehicles (11-n) detected by the vehicle speed sensor (112) of each of the plurality of vehicles (11-n) (¶ [0065]).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Shikanai in view of Nakao (JP 2009248633; see attached machine translation).
Regarding claim 12, Shikanai discloses all the limitations of claim 10 on which this claim depends.
Shikanai discloses a position sensor but also discloses that the speed information is calculated using wheel speed sensors rather than changes in position.
In the same field of endeavor, Nakao teaches a road surface state determination apparatus (¶ [0001]) wherein the microprocessor is configured to perform the acquiring the speed information including calculating driving speed of a vehicle based on changes in positions of the vehicle over time which is indicated by the position information included in the driving information of the vehicle to acquire the speed information of the vehicle (¶¶ [0019]-[0020]).
Nakao further teaches that the position information can be used to determine speed information instead of the disclosed vehicle wheel speed sensors establishing both methods as functional equivalents of determining the same values.
It would have been obvious to one of ordinary skill in the art before the effective filing of the invention to use Shikanai’s disclosed position information to determine vehicle speeds of the Shikanai’s plurality of vehicles as taught by Nakao since courts have ruled that simple substitution of one known element for another to achieve a predictable result is within the purview of one having ordinary skill in the art. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421 (2007). Doing so would have the benefit of providing a check on the wheel speed determination method and providing greater accuracy if a GPS used specifically for speed is already installed in the vehicles.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Shikanai in view of Koichi (JP 2017223640; see attached machine translation).
Regarding claim 13, Shikanai discloses all the limitations of claim 10 on which this claim depends.
Shikanai discloses the microprocessor (13) is configured to further perform acquiring vehicle information including unique information of a vehicle (¶ [0054], see figure 2).
Shikanai is silent to the microprocessor is configured to perform the correcting including correcting the road surface roughness value based on the vehicle information.
In the same field of endeavor, Koichi discloses a road surface condition measuring vehicle (¶ [0011]) wherein the microprocessor is configured to perform the correcting including correcting the road surface roughness value based on the vehicle information (¶¶ [0011], [0022]-[0024]).
It would have been obvious to one of ordinary skill in the art before the effective filing of the invention to include Koichi’s vehicle information and correction functionality in Shikanai’s road surface condition determination for the purpose of correcting for different types of vehicles possessing different characteristics (¶¶ [0011], [0024]).
Regarding claim 14, Shikanai in combination with Koichi disclose all the limitations of claim 13 on which this claim depends.
Shikanai further discloses a memory (132) connected to the microprocessor (13) (¶ [0051]) and configured to store the vehicle information wherein the driving information further includes vehicle identification information (¶ [0054]).
When Shikanai is combined with Koichi as in the rejection of claim 13 above, the vehicle identification information includes acquiring the vehicle information corresponding to the vehicle identification information and the microprocessor is configured to perform the acquiring the vehicle information including from the memory based on the vehicle identification information included in the vehicle information, since the combination of references renders obvious at the time of the effective filing of the invention the concept of correlating the vehicle information with the vehicle identification for the purpose of correcting the data to account for different vehicles of different types (Koichi ¶¶ [0011], [0024]).
Regarding claim 15, Shikanai in combination with Koichi disclose all the limitations of claim 13 on which this claim depends.
Koichi further teaches wherein the unique information includes information on type or grade of the vehicle (¶ [0024]).
Allowable Subject Matter
There are no prior art rejections for claims 16-18 however the Examiner cannot comment on their allowability until the rejections under §101 are adequately addressed.
Regarding claim 16, none of the prior art either alone or in combination discloses or renders obvious a road surface evaluation apparatus as claimed wherein the unique information includes information indicating a time of manufacture of the vehicle or information indicating a previous check time of the vehicle in combination with the remaining claim limitations.
Regarding claim 17, none of the prior art either alone or in combination discloses or renders obvious a road surface evaluation apparatus as claimed wherein the unique information includes information indicating an integrated travel distance of the vehicle from a start time of use of a predetermined component affecting a motion of the vehicle which is traveling among components constituting the vehicle or a period of the use from the start time in combination with the remaining claim limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2023/0391342 discloses the concept of determining road condition using a plurality of vehicles collecting data and but is not available as prior art under 102(a)(1) or 102(a)(2).
JP 6021309 discloses evaluating road unevenness using a vehicle equipped with an accelerometer.
WO 2016/060161 discloses evaluating road unevenness using a vehicle equipped with an accelerometer.
WO 2022/014357 discloses evaluating road unevenness using a vehicle equipped with an accelerometer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATALIE HULS whose telephone number is (571)270-5914. The examiner can normally be reached M-F 8-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Breene can be reached at (571) 272-4107. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATALIE HULS/Primary Examiner, Art Unit 2855
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