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 .
Status of Claims
Claims 1 – 5 were previously pending and subject to a non-final office action mailed 11/21/2025. Claim 1 was amended and claim 6 was added in a reply filed 01/29/2026. Claims 1 – 6 are currently pending and subject to the final office action below.
Response to Arguments
Applicant’s arguments with respect to the previous rejection of the claims under 35 USC 101 have been considered but are not persuasive.
Applicant initially argues, on pg. 6, that the instant claims provide the improvement of reducing “the CO2 emission amount.”
Examiner respectfully disagrees that the claims are directed to an improvement in the functionality of a computing device or any other technology; rather, they are directed to an improvement to the recited judicial exception itself. For example, as noted by the Court in Enfish, “the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. As noted infra, in Bilski and Alice and virtually all of the computer-related § 101 cases we have issued in light of those Supreme Court decisions, it was clear that the claims were of the latter type—requiring that the analysis proceed to the second step of the Alice inquiry, which asks if nevertheless there is some inventive concept in the application of the abstract idea.” See Alice, 134 S. Ct. at 2355, 2357–59. In this case, however, the plain focus of the claims is not to an improvement to computer functionality itself, but “on economic or other tasks for which a computer is used in its ordinary capacity” (e.g., providing a route which reduces vehicle emissions). The instant claims are directed to a method of organizing human activity (e.g., following directions and providing a navigation service), which invokes generic computer components as a mere tool for implementation, rather to an improvement thereof. For example, the claims are not directed to an improvement in the functionality of a computing device or other technology; thus, the claims are directed to a judicial exception without significantly more, and the 101 rejection is maintained.
Applicant next argues, on pg. 6, that “amended Claim 1 now clarifies that the circuitry periodically receives information indicating a latitude and longitude indicating the current point of the user from a terminal of the user, and the system outputs the determined facility to the terminal of the user to be displayed as a recommendation to the user. Therefore, amended Claim 1 makes it clear that technology is intrinsic to the implementation of the invention and the claim integrates any interpreted abstract idea into a practical application by leveraging the user terminal for both current location determination and for outputting the recommendation.
Examiner respectfully disagrees that the use of a GPS system to periodically receives information indicating a latitude and longitude indicating the current point of the user integrates the recited abstract idea into a practical application. In particular, the functionality of “wherein the circuitry periodically receives information indicating a latitude and longitude indicating the current point of the user from a terminal of the user” is recited at a high-level of generality, and when viewed as whole/ordered combination, amount to insignificant extra-solution activity, such as mere data gathering (See MPEP 2106.05(g)). Moreover, the extra-solution functionality of “wherein the circuitry periodically receives information indicating a latitude and longitude indicating the current point of the user from a terminal of the user” has been found by the courts to be well-understood, routine, and conventional activity (See MPEP § 2106.05(d)(II), noting: “Performing repetitive calculations,” and “Transmitting data over a network”), and thus do not amount to significantly more under Step 2B. Furthermore, the generic recitation of GPS location monitoring in the instant specification at [0022] (“The latitude and the longitude indicating the current point of the user, for example, are acquired by a positioning means such as a global positioning system (GPS) of the terminal 20, and are transmitted to the recommendation system 10 from the terminal 20.”) demonstrates that these additional elements are well-understood, routine, and conventional activities (see MPEP § 2106.05(d)(I)(2.) and the Berkheimer Memo, § (III.)(A.)(1.)). Therefore, the implementation of a GPS system to receive location informant fails to provide integration of the recited abstract ideas into a practical application of amount to significantly more than the recited judicial exception.
Applicant next argues, on pg. 7, that “the claims do recite the "improvement" at a proper level
of specificity, especially in view of the recent decision of Ex Parte Desjardins.”
Examiner respectfully disagrees, and points Applicant to the above explanation that the purported improvement is not directed to computer capabilities or any other technology, but rather to “economic or other tasks for which a computer is used in its ordinary capacity.” Examiner further notes that a full analysis of the claims and every claim element, both individually and in an ordered combination, has been performed in accordance with the MPEP and the Alice/Mayo analysis – which has led to the conclusion that the currently-amended claims are not patent-eligible under 35 USC 101.
Applicant’s arguments with respect to the previous rejection of the claims under 35 USC 103 have been considered but are not persuasive.
Applicant initially argues, on pg. 6, that “CO₂ emissions are reduced by having the user make a detour to a facility that is not typically included on the movement route from the departure point to the destination. This concept is not disclosed in Zhou.”
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that “CO₂ emissions are reduced by having the user make a detour to a facility that is not typically included on the movement route from the departure point to the destination) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant’s arguments regarding the new limitation “the facility requiring an additional travel from the estimated movement route” have been considered but are moot in light of the new grounds of rejection as outlined below.
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 – 6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 1 – 5 are directed to a system (i.e., a machine). Claim 6 is directed to a process (i.e., a method). Therefore, claims 1 – 6 all fall within the one of the four statutory categories of invention.
Step 2A, Prong One
Independent claims 1 & 6 substantially recite: acquire movement information indicating a departure point and a destination related to a future movement of a user using a means of transportation emitting C02; estimate, for a movement related to the acquired movement information, a movement route from the departure point to the destination, and estimate a C02 emission amount due to the movement on the estimated movement route for each of a plurality of movement timings different from each other; determine a facility that the user can visit during the movement and that is recommended to the user, on the basis of the estimated C02 emission amount for each movement timing, the facility requiring an additional travel from the estimated movement route; and output the determined facility to the… user to be displayed as a recommendation to the user.
The limitations stated above are processes / functions that, as drafted, cover performance of the limitations in fundamental economic practices, a commercial interaction, business relation, or while managing relationships between people. That is, nothing in the claim element precludes the step from practically being performed in fundamental economic practices, a commercial interaction, business relation, or while managing relationships between people. For example, the functions in the context of this claim encompass managing a user’s trip based on carbon emissions. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in fundamental economic practices, a commercial interaction, business relation, or while managing relationships between people, then it falls within the "Certain Methods of Organizing Human Activity" grouping of abstract ideas. Accordingly, the claims recite an abstract idea that falls within the "Certain Methods of Organizing Human Activity" grouping of abstract ideas.
Step 2A, Prong Two
The judicial exception is not integrated into a practical application. Claims 1 & 6, as a whole, amounts to merely invoking generic components as a tool to perform the abstract idea or “apply it” (or an equivalent) and adding insignificant extra-solution activity to the judicial exception. In particular, claim 1 recites the additional computer elements of “circuitry” and “terminal of the user.” Claim 6 recites the additional computer elements of “circuity of a recommendation system” and “terminal of the user.” Claims 1 & 6 also recite the additional elements of “wherein the circuitry periodically receives information indicating a latitude and longitude indicating the current point of the user from a terminal of the user.”
The additional elements of “circuitry,” “terminal of the user,” and “circuity of a recommendation system” are recited at a high-level of generality, such that, when viewed as whole/ordered combination, it amounts to no more than mere instruction to apply the judicial exception using generic computer components or “apply it” (See MPEP 2106.05(f)).
The additional elements of “wherein the circuitry periodically receives information indicating a latitude and longitude indicating the current point of the user from a terminal of the user” are recited at a high-level of generality, and when viewed as whole/ordered combination, amount to insignificant extra-solution activity (See MPEP 2106.05(g)).
Accordingly, this additional element, when viewed as a whole/ordered combination, does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Thus, the claims are directed to an abstract idea without integration into a practical application.
Step 2B
As discussed above with respect to Step 2A Prong Two, the additional elements amount to no more than merely invoking generic components as a tool to perform the abstract idea or “apply it” (or an equivalent) and adding insignificant extra-solution activity to the judicial exception, and do not provide integration of the recited abstract ideas into a practical application. The same analysis applies here in Step 2B, i.e., merely invoking the generic components as a tool to perform the abstract idea or “apply it” (See MPEP 2106.05(f)) and adding insignificant extra-solution activity to the judicial exception (See MPEP2106.05(g)) does not integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B.
Furthermore, the extra-solution functionality of “wherein the circuitry periodically receives information indicating a latitude and longitude indicating the current point of the user from a terminal of the user” has been found by the courts to be well-understood, routine, and conventional activity (See MPEP § 2106.05(d)(II), noting: “Performing repetitive calculations,” and “Transmitting data over a network”), and thus do not amount to significantly more under Step 2B. Furthermore, the generic recitation of GPS location monitoring in the instant specification at [0022] (“The latitude and the longitude indicating the current point of the user, for example, are acquired by a positioning means such as a global positioning system (GPS) of the terminal 20, and are transmitted to the recommendation system 10 from the terminal 20.”) demonstrates that these additional elements are well-understood, routine, and conventional activities (see MPEP § 2106.05(d)(I)(2.) and the Berkheimer Memo, § (III.)(A.)(1.)).
Therefore, the additional elements of “circuitry,” “terminal of the user,” “circuity of a recommendation system,” and “wherein the circuitry periodically receives information indicating a latitude and longitude indicating the current point of the user from a terminal of the user” fail to integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B. Thus, even when viewed as a whole/ordered combination, nothing in the claims adds significantly more (i.e., an inventive concept) to the abstract idea. There is no indication that the combination of elements, taken both individually and as an ordered combination, improves the functioning of a computer or improves any other technology. Thus, the claims are not patent eligible.
Dependent claims 2 – 5 merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception. That is, they further limit the recited commercial interaction. Accordingly, the dependent claims are not directed to significantly more than the exception itself, and are not eligible subject matter under 35 USC § 101.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 – 6 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou et al. (US 20170261330 A1), in view of Ivavalko et al. (US 20160069689 A1), in view of Pawlakowitsch et al. (US 20210253083 A1)
As per Claim 1, Zhou discloses recommendation system, comprising circuitry ([0106] – [0107]) configured to:
• acquire movement information indicating a departure point and a destination related to a future movement of a user using a means of transportation emitting C02 (See [0023] – [0025], [0030] – [0031], & [0099], noting obtaining “the vehicle's starting location, the target location” to generate a plan for an upcoming trip including stops to “refuel the vehicle,” taking into account “fuel consumption” in order to “benefit fuel economy” for vehicles such as “trucks transporting loads from one city to another city.”);
Regarding the following limitation, Zhou discloses that the method may implement a user’s terminal device “that may detect and provide information on the vehicle's location.” To the extent to which Zhou does not appear to explicitly disclose the following limitation, Ivavalko teaches:
• wherein the circuitry periodically receives information indicating a latitude and longitude indicating the current point of the user from a terminal of the user ([0020], [0038], & [0042], the system received the GPS coordinate information provided by a user terminal.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the aforementioned teachings of Ivavalko in the invention of Zhou so that “a user may save time by taking a detour to make one or more purchases to allow traffic congestion or delays to reduce,” as evidenced by Ivavalko ([0013]).
Regarding the following limitation, Zhou discloses:
• estimate, for a movement related to the acquired movement information, a movement route from the departure point to the destination, and estimate a {fuel consumption amount} due to the movement on the estimated movement route for each of a plurality of movement timings different from each other ([0067], calculating “, a minimum fuel consumption F(n,i) at time T.sub.n from a node i to the next node may be calculated with path and speed at each edge”; Also see [0040] – [0042], [0047] – [0049], & [0052] – [0053], which describe a process for iteratively estimating a “fuel consumption” amount for “travel along highway segments of the route from location A to Location B.” As per [0065], the fuel consumption estimates are generated for each possible “highway segment” between possible stations, and includes a predicted “time used” for each highway segment, and a “time of break” for each rest station. Also see [0081], which describes iteratively computing fuel consumption for a path, while iteratively calculating a fuel consumption for each segment while “inserting” breaks at various stations. Also see Fig. 9 & [0099] – [0103], and Tables 1 – 3, which describes calculating “Different travel itineraries or solutions (e.g., Solutions 1, 2 and 3), which may be generated by system 100, may involve travel over different paths or stations between station 901 and station 904” which include “travel times and fuel consumption” amount for each highway segment between all possible paths through stations 902 and 903, including a “start time” and “time used” (i.e., movement timings) for each possible segment. In other words, Zhou discloses iteratively estimating a fuel consumption amount for each possible trip segment, accounting for different possible combinations of stops as well as travel timings between each possible segment.).
To the extent to which Zhou does not appear to explicitly disclose wherein a C02 emission amount is estimated for each possible segment, Pawlakowitsch, in [0034], teaches that a C02 emission amount for a vehicle’s exhaust is a metric that is “based on” a fuel consumption amount.
Therefore, since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. That is in the substitution of the “C02 emission amount” of Pawlakowitsch for the “fuel consumption amount” of Zhou. Thus, the simple substitution of one known element for another (i.e., one known vehicle metric for another) producing a predictable result renders the claim obvious.
Zhou, modified by Pawlakowitsch as detailed above (i.e., the substitution of the “C02 emission amount” of Pawlakowitsch for the “fuel consumption amount” of Zhou), further discloses:
• determine a facility that the user can visit during the movement and that is recommended to the user, on the basis of the estimated C02 emission amount for each movement timing ([0041], determining “break stations and break times” based on a ““fuel consumption” model relating fuel consumption and travel along highway segments of the route from location A to location B generate the planned travel itinerary 132.”; [0050], “selecting the next node or station (e.g., node 2) from amongst one or more potential next nodes or stations” based on “estimated fuel consumption.”; Also see Fig. 6 & [0065], as well as Fig. 7 & [0081], noting outputting “break output data, as shown in Table 602, may for example, include sequence of the break, time of break (when to have), station ID (where to have a break),” which was determined based on producing “a minimum fuel consumption” as per at least [0048], [0067], & [0089]. As per at least [0005], [0024], [0026], & [0028], [0040], & [0081], the trip with recommended breaks is output to a user. In other words, when substituting the “C02 emission amount” of Pawlakowitsch for the “fuel consumption amount” of Zhou, as explained above, a trip with particular break stations, break times, and segment times is determined based on the estimated C02 emission amount.);
To the extent to which Zhou does not appear to explicitly disclose the following limitation, Ivavalko teaches:
• the facility requiring an additional travel from the estimated movement route ([0010] – [0011], [0042, & [0047], a shopping detour location comprises a “detour” from an originally-computed route for which an additional distance is calculated to add the extra waypoint.) Rationale to combine the teachings of Ivavalko pessists.
Zhou further discloses:
• and output the determined facility to the terminal of the user to be displayed as a recommendation to the user ([0044], [0065], [0081], [0106], the planned travel itinerary comprising route stops are displayed to the user.).
As per Claim 2, Zhou / Ivavalko / Pawlakowitsch discloses the limitations of claim 1. Regarding the following limitation, Zhou, modified by Pawlakowitsch as detailed above (i.e., the substitution of the “C02 emission amount” of Pawlakowitsch for the “fuel consumption amount” of Zhou), further discloses:
• wherein the circuitry estimates the C02 emission amount from a movement speed for each movement timing ([0006], [0041], [0047], [0064] – [0065] & [0099] – [0100], the system “determines a fuel consumption of the vehicle for each highway segment”; As per Fig. 9 & [0099] – [0103], and Tables 1 – 3, the calculations for each segment include “travel times and fuel consumption” amount for each highway segment between all possible paths through stations 902 and 903.).
As per Claim 3, Zhou / Ivavalko / Pawlakowitsch discloses the limitations of claim 1. Regarding the following limitation, Zhou, modified by Pawlakowitsch as detailed above (i.e., the substitution of the “C02 emission amount” of Pawlakowitsch for the “fuel consumption amount” of Zhou), further discloses:
• wherein the circuitry computes a difference between the highest C02 emission amount among the plurality of movement timings and a C02 emission amount at the other timing, and determines the facility that the user can visit during the movement and that is recommended to the user, on the basis of the computed difference (Fig. 9 & [0099] – [0103], and Tables 1 – 3, noting calculating the differences of “travel times and fuel consumption” for each highway segment between all possible paths through stations 902 and 903. As per at least [0005], [0024], [0026], & [0028], [0040], & [0081], the trip with lowest fuel consumption is output to a user.).
As per Claim 4, Zhou / Ivavalko / Pawlakowitsch discloses the limitations of claim 1. Regarding the following limitation, Zhou, modified by Pawlakowitsch as detailed above (i.e., the substitution of the “C02 emission amount” of Pawlakowitsch for the “fuel consumption amount” of Zhou), further discloses wherein the circuitry:
• estimates a C02 emission amount due to a movement when the user visits a facility to be a candidate recommended to the user during the movement, and determines the facility that the user can visit during the movement and that is recommended to the user, also on the basis of the estimated C02 emission amount due to the movement when the user visits the facility during the movement ([0067], calculating “, a minimum fuel consumption F(n,i) at time T.sub.n from a node i to the next node may be calculated with path and speed at each edge”; Also see [0040] – [0042], [0047] – [0049], & [0052] – [0053], which describe a process for iteratively estimating a “fuel consumption” amount for “travel along highway segments of the route from location A to Location B.” As per [0065], the fuel consumption estimates are generated for each possible “highway segment” between possible stations, and includes a predicted “time used” for each highway segment, and a “time of break” for each rest station. Also see [0081], which describes iteratively computing fuel consumption for a path, while iteratively calculating a fuel consumption for each segment while “inserting” breaks at various stations. Also see Fig. 9 & [0099] – [0103], and Tables 1 – 3, which describes calculating “Different travel itineraries or solutions (e.g., Solutions 1, 2 and 3), which may be generated by system 100, may involve travel over different paths or stations between station 901 and station 904” which include “travel times and fuel consumption” amount for each highway segment between all possible paths through stations 902 and 903, including a “start time” and “time used” (i.e., movement timings) for each possible segment. In other words, Zhou discloses iteratively estimating a fuel consumption amount for each possible trip segment, accounting for different possible combinations of stops as well as travel timings between each possible segment. As per [0041], determining “break stations and break times” based on a ““fuel consumption” model relating fuel consumption and travel along highway segments of the route from location A to location B generate the planned travel itinerary 132.”; [0050], “selecting the next node or station (e.g., node 2) from amongst one or more potential next nodes or stations” based on “estimated fuel consumption.”; Also see Fig. 6 & [0065], as well as Fig. 7 & [0081], noting outputting “break output data, as shown in Table 602, may for example, include sequence of the break, time of break (when to have), station ID (where to have a break),” which was determined based on producing “a minimum fuel consumption” as per at least [0048], [0067], & [0089]. As per at least [0005], [0024], [0026], & [0028], [0040], & [0081], the trip with recommended breaks is output to a user.).
As per Claim 5, Zhou / Ivavalko / Pawlakowitsch discloses the limitations of claim 1. Regarding the following limitation, Zhou, modified by Pawlakowitsch as detailed above (i.e., the substitution of the “C02 emission amount” of Pawlakowitsch for the “fuel consumption amount” of Zhou), further discloses wherein the circuitry:
• determines the facility that the user can visit during the movement and that is recommended to the user, also on the basis of an assumed stay time in a facility to be a candidate recommended to the user (See at least [0026], [0028], & [0040] – [0041], noting that the recommended break stations are recommended based on “break times for vehicle servicing, etc., at the stops.”).
As per Claim 6, see the above relevant rejection of claim 1. Zhou additionally discloses a method in claim 1, [0018], [0066] – [0069], & [0106].
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYAN J KIRK whose telephone number is (571)272-6447. The examiner can normally be reached Monday -Friday 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shannon Campbell can be reached at (571)272-5587. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYAN J KIRK/Examiner, Art Unit 3628
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