AIA
Status of claim Set 2
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Claims 1 3 5 examined. 2 4 canceled 10/8/2025
Response to Remarks
Under the new administration, PTO expects at most 1 interview normally per new application or RCE
Applicant amendment remarks fully considered but unfortunately not fully persuasive.
Examiner thanks Attorney O’Sullivan for the amendment to advance prosecution
Attorney remarks are styled as ‘response to final’ but seems like a typo; should read non-final.
101
Amendment = printed matter 2143.03 (describing data of charging facility and battery capacity) + organizing human behavior (… creates … so at to benefit) which is the idea itself.
103
Mr O’Sullivan distinguishes art based on moving but a) moving doesn’t appear to be in the claim, b) during prosecution the PTO employs broadest reasonable interpretation removing any distinction.
CLAIM INTERPRETATION
35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Generic placeholders, e.g., UNIT, STEP (claim 1) invoke 112f.
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
The claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The Claim(s) is/are directed to one or more abstract idea(s). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the abstract idea(s).
Step 1
The claims and their dependents are directed to one of the statutory classes (1 machine 5 process). (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
Step 2a Prong 1
The claim(s) is/are directed to
CERTAIN METHODS OF ORGANIZING HUMAN BEHAVIOR,
Independent claims 1, 5 similar
1. A charging facility suggestion device comprising:
o a map information storage configured to store charging facility information pertaining to charging facilities for charging vehicles , the charging facilitiy information includes charging speed information of the charging facilities
o a vehicle information storage configured to store identification information and battery capacity information of a plurality of vehicles , the battery capacity information being information on the maximum chargeable capacity of a battery installed in a vehicle
o a suggestion request input unit configured to receive, from a vehicle included in the plurality of vehicles or a terminal of a user of the vehicle, suggestion request information including position information of the vehicle and a charging facility suggestion request
o a charging facility search unit configured to search for charging facilities located within a predetermined range from a position of the vehicle among the charging facilities based on the position information of the vehicle included in the suggestion request information
o an incentive information creation unit configured to create, based on the charging facility information pertaining to charging facilities found by the charging facility search unit and the battery capacity information of the vehicle corresponding to the identification information of the vehicle, incentive information of each of the found charging facilities for the vehicle and
o an incentive information output unit configured to transmit the charging facility information and the incentive information to the vehicle or the terminal of the user of the vehicle
o upon receiving the charging facility suggestion request from two or more of the vehicles or terminals of users of the vehicles, the incentive information creation unit creates incentive information for any of the charging facilities that has charging speed information indicating a lower charging speed than a predetermined value so as to benefit a vehicle having a smaller battery capacity according to the battery capacity indicated by the battery capacity information of each vehicle
Abstract IDEA+
Collect info
Analyze it
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Display results (CAFC Electric Power Group 2016)
Bold = abstract idea
Additional element beyond the idea [ generic limitation generally applied ]
In light of the 7 January 2019 Patent Eligibility Guidance (PEG), the claims steps set forth
Certain Methods of Organizing Human Activity such as
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)
The claim is an abstract idea + (Collecting information, analyzing it, displaying certain results of collecting/analyzing (Electric Power Group v Alstom (CAFC 2016)).
Alice
clearinghouse
implemented by computer
Here
marketing
implemented by computer
Bilski
hedge
implemented by computer
Dependent claims 3
Collecting information, analyzing it, displaying certain results of collecting/analyzing (EPG v Alstom (CAFC 2016).
CLAIM 3
3. The charging facility suggestion device according to claim 1, wherein the
O incentive information creation unit creates the incentive information as a priority reservation for the charging facility or a discount on a unit charging price.
Examiner
Idea itself, collecting info, analyzing it, displaying certain results using generic tool and description of data. In other words, idea + EPG and description of data MPEP 2111.05.
Thus, the claims is “recite” an abstract idea (i.e. “PEG” Revised Step 2A Prong 1=Yes).
Additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to: bracketed above. Other steps do not present significantly more or integrate the idea into a practical application.
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims are directed to an abstract idea with additional generic computer elements do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation. The claims in ordered combination are just the abstract idea implemented on a computer, the ordered combination spelling out how to do computer implement. The specification has the computer as any machine that performs the functions (Applicant’s Spec). The additional elements are not sufficient to amount to significantly more than the judicial exception. The claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, and do not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. Additionally, the claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the industry. The limitations (those beyond the abstract idea) do not improve the technical field that the abstract idea limitations invoke. Moreover, these generic limitations do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers" (citing Bilski 561 US at 610).
Prong 1 answered “YES”, the next question in Prong 2 is whether there is an integrated practical application. This judicial exception is not integrated into a practical application. In particular, the claim recites additional element – bracketed above to perform the claim steps. The elements are recited at a high-level of generality (e.g. generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component, general linking of idea to generic element. Accordingly, these additional elements do not integrate the abstract idea into a practical application for lack of any meaningful limits on practicing the abstract idea.
Step 2b
Display (output) is generic and insignificant extra-solution activity. MPEP 2106.05g and Electric Power Group
The additional elements are not sufficient to amount to significantly more than the judicial exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, and do not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. Additionally, the claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the industry.
Moreover, these generic limitations do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers"(citing Bilski 561 US at 610).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements merely detail generic computer processors and software that implement the abstract idea. The generically recited computer elements do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation. The additional element merely instruct that the execution of the abreact idea occurs on other generic technology, but does not offer any disclosure of any additional technology beyond the abstract idea itself. Moreover, the claim steps as an ordered combination do not present significantly more. The claims are not directed to an improvement in computer functionality like in Enfish v Microsoft, but rather to an abstract idea. The claims "do nothing more than spell out what it means to 'apply it on a computer'”, Intellectual Ventures I 792 F.3d p1371 (citing Alice). Nowhere in the claims or specification is there any indication that the computer, processor, medium do something unconventional such that Applicant has improved computer functionality. Applicant presents an abstract idea for which computers are invoked merely as a tool.
Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claim limitations do not improve upon the technical field that the abstract idea is applied nor do they improve upon any other technical field. The claimed limitations do not improve upon the functioning of the computer itself. Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
The further elements of the claims are merely directed to further abstract ideas (a plurality of exceptions December 16, 2014 Interim Guidance p 74625, Fed Register Vol 79 No 241) and in ordered combination pose a list of abstract ideas, and invoke merely as a tool what is conventional (device, ad inventory, computer program product, medium). There is not improvement in these items, but rather they are invoked as a tool to solve a business problem (targeted marketing), not a technical problem.
The claim limitations alone or in ordered combination do not improve upon the technical field to which the abstract idea is applied nor do they improve upon any other technical field. The claimed limitations do not improve upon the functioning of any device itself.
The additional elements alone or in combination are not sufficient to amount to significantly more than the judicial exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, and do not provide meaningful limitations beyond generic linking use of an abstract idea to a particular technological environment. Additionally, the claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions that are generic activities previously known to the industry. Moreover, these generic limitations do not lead to an integrated practical application because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers"(citing Bilski 561 US at 610). Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to an integrated practical application. The claim limitations do not improve upon the technical field that the abstract idea is applied nor do they improve upon any other technical field. The claimed limitations do not improve upon the functioning of the computer itself.
Moreover, these generic limitations do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers"(citing Bilski 561 US at 610).
Moreover, mere recitation of a machine or medium in the preamble does not make a claim statutory under 35 U.S.C. 101, as seen in the Board of Patent Appeals Informative Opinion Ex Parte Langemyr (Appeal 2008-1495). Moreover, mere mention of a piece of a computer or processing device does not confer patentability. Alice Corporation Pty. Ltd. v CLS Bank International ("Alice Corp") 573 US __ (2014). Incorporating the two-step test espoused in its recent decision in Mayo v. Prometheus 566 U.S. ___ (2012), the Court describes a first inquiry as to whether the claims at issue are directed to a patent-ineligible concept. If so, the Court requires a second inquiry as to whether the elements, individually or in combination, “transform” the nature of the claims into a patent-eligible invention. The Court described this second step as a search for an inventive concept, “i.e., an element or combination sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements merely detail generic elements that implement the abstract idea. The generically recited computer elements do not add a meaningful limitation to the abstract idea. The additional element merely instruct that the execution of the abreact idea occurs on other generic technology, but does not offer any disclosure of any additional technology beyond the abstract idea itself. Moreover, the claim steps as an ordered combination do not present significantly more. The claims are not directed to an improvement in computer functionality like in Enfish v Microsoft, but rather to an abstract idea. The claims "do nothing more than spell out what it means to 'apply it on a computer'”, Intellectual Ventures I 792 F.3d p1371 (citing Alice). Nowhere in the claims or specification is there any indication that the computer, processor, medium do something to improved hardware functionality.
The further elements of the claims are merely directed to further abstract ideas and in ordered combination pose a list of abstract ideas, and invoke merely as a tool what is generic. There is no improvement in these items, but rather they are invoked as a tool to solve a business problem (targeted marketing), not a technical problem.
Here, the claims neither improve the technological infrastructure nor provide particular solutions to challenges. Rather, in ordered combination the claim limitations spell out the steps of calculating a number using generic technology
In addition to these indisputably generic features, Applicant did not invent any of those features, and the claims do not recite them in a manner that produces a result that overrides the generic use of these known features. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014). When viewed as an ordered combination, the proposed claims recite no more than the sort of “perfectly” generic computer components employed in a customary manner that we have held insufficient to transform the abstract idea into a patent-eligible invention. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016). We must thus conclude that the claims fail step two as well.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements merely detail generic computer processors and software that implement the abstract idea. The generically recited computer elements do not add a meaningful limitation to the abstract idea because they would be generic in any computer implementation. The additional element merely instruct that the execution of the abstract idea occurs on other generic technology, but does not offer any disclosure of any additional technology beyond the abstract idea itself. Moreover, the claim steps as an ordered combination do not present significantly more. The claims are not directed to an improvement in computer functionality like in Enfish v Microsoft, but rather to an abstract idea. The claims "do nothing more than spell out what it means to 'apply it on a computer'”, Intellectual Ventures I 792 F.3d p1371 (citing Alice). Nowhere in the claims or specification is there any indication that the computer, processor, storage do something nongeneric such that Applicant has improved computer functionality. Applicant presents an idea for which computers are invoked as a tool.
By way of example, in Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described "the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’" 850 F.3d at 1339-40 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340 121 USPQ2d at 1946. In addition to the abstract idea, the claims also recited the additional element of modifying the underlying XML document in response to modifications made in the dynamic document. 850 F.3d at 1342 121 USPQ2d at 1947-48. Examples that the courts have indicated may not be sufficient to show an improvement to technology include:
-Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48
-Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)
Here, the claims neither improve the technological infrastructure nor provide particular solutions to challenges. Rather, they spell out the steps of an algorithm for organizing human behavior implemented with generic technology. In addition to these indisputably conventional features, Applicant did not invent any of those features, and the claims do not recite them in a manner that produces “a result that overrides the routine and conventional” use of these known features. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014). When viewed as an ordered combination, the proposed claims recite no more than the sort of “perfectly conventional” generic computer components employed in a customary manner that we have held insufficient to transform the abstract idea into a patent-eligible invention. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016). We must thus conclude that the claims fail step two as well.
Claims dependent from the independent claims do not cure the deficiencies and are rejected.
CLAIM REJECTIONS - 35 USC § 103
MPEP 2123: “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331 (Fed. Cir. 1983) A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).”
Claims rejected as obvious over 35 USC 103 over Kashima, Nissan assignee, US 20130063283 in view of Mukai, Honda assignee, US 20190178663 in view of Cun US 20210046841
CLAIM 1 2 5
CLAIM 1 5
1. A charging facility suggestion device comprising:
O a map information storage configured to store charging facility information pertaining to charging facilities for charging vehicles , the charging facilitiy information includes charging speed information of the charging facilities
Kashima, Nissan assignee, US 20130063283 Fig 1, 3 & text
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O a vehicle information storage configured to store identification information and battery capacity information of a plurality of vehicles , the battery capacity information being information on the maximum chargeable capacity of a battery installed in a vehicle
Kashima, Nissan assignee, US 20130063283 Fig 1, 3 & text
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O a suggestion request input unit configured to receive, from a vehicle included in the plurality of vehicles or a terminal of a user of the vehicle, suggestion request information including position information of the vehicle and a charging facility suggestion request
Kashima, Nissan assignee, US 20130063283 Fig 1, 3 & text
O a charging facility search unit configured to search for charging facilities located within a predetermined range from a position of the vehicle among the charging facilities based on the position information of the vehicle included in the suggestion request information
Kashima, Nissan assignee, US 20130063283 Fig 1, 3 & text
O an incentive information creation unit configured to create, based on the charging facility information pertaining to charging facilities found by the charging facility search unit and the battery capacity information of the vehicle corresponding to the identification information of the vehicle, incentive information of each of the found charging facilities for the vehicle and
O an incentive information output unit configured to transmit the charging facility information and the incentive information to the vehicle or the terminal of the user of the vehicle
Mukai, Honda assignee, US 20190178663 ¶ 18 66 92 113
The prior art (Kashima, Mukai) included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. One of ordinary skill in the art could have combined the elements as claimed by known methods and that in combination, each element merely would have performed the same function as it did separately. One of ordinary skill in the art would have recognized that the results of the combination were predictable. Therefore all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods, and the combination would have yielded predictable results. This is simply Combining Prior Art Elements According to Known Methods
NOT EXPLICT IN Kashima is all of
o upon receiving the charging facility suggestion request from two or more of the vehicles or terminals of users of the vehicles, the incentive information creation unit creates incentive information for any of the charging facilities that has charging speed information indicating a lower charging speed than a predetermined value so as to benefit a vehicle having a smaller battery capacity according to the battery capacity indicated by the battery capacity information of each vehicle
battery capacity Mukai, Honda assignee, US 20190178663 ¶ 18 66 92 113
The prior art (Kashima, Mukai) included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. One of ordinary skill in the art could have combined the elements as claimed by known methods and that in combination, each element merely would have performed the same function as it did separately. One of ordinary skill in the art would have recognized that the results of the combination were predictable. Therefore all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods, and the combination would have yielded predictable results. Applying Known Technique to Known Art Ready for Improvement given that resources are not infinite.
And see
Cun US 20210046841 ¶ 77 charging speed
The prior art (Kashima, Cun) included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. One of ordinary skill in the art could have combined the elements as claimed by known methods and that in combination, each element merely would have performed the same function as it did separately. One of ordinary skill in the art would have recognized that the results of the combination were predictable. Therefore all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods, and the combination would have yielded predictable results. Applying Known Technique to Known Art Ready for Improvement given that resources are not infinite.
Claims rejected as obvious over 35 USC 103 over Kashima, Nissan assignee, US 20130063283 in view of Mukai, Honda assignee, US 20190178663 in view of Cun US 20210046841 in view of Yokoyama, US20200403419
CLAIM 3
CLAIM 3
3. The charging facility suggestion device according to claim 1, wherein the
O incentive information creation unit creates the incentive information as a priority reservation for the charging facility or a discount on a unit charging price
Yokoyama, Honda assignee, US20200403419 at least ¶ 45 46 54 55 56 battery, incentive
The prior art (Kashima, Yokoyama) included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. One of ordinary skill in the art could have combined the elements as claimed by known methods and that in combination, each element merely would have performed the same function as it did separately. One of ordinary skill in the art would have recognized that the results of the combination were predictable. Therefore all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods, and the combination would have yielded predictable results. Applying Known Technique to Known Art Ready for Improvement given that resources are not infinite.
Conclusion
Pertinent prior art cited but not relied upon US20240070572
During prosecution, applicant has an opportunity and a duty to amend ambiguous claims to clearly and precisely define the metes and bounds of the claimed invention The claim places the public on notice of the scope of the patentee’s right to exclude See, eg, Johnson & Johnston Assoc Inc v RE Serv Co, 285 F3d 1046, 1052, 62 USPQ2d 1225, 1228 (Fed Cir 2002) (en banc) As stated in Halliburton Energy Servs, Inc v M-I LLC, 514 F3d 1244, 1255, 85 USPQ2d 1654, 1663 (CAFC 2008):
“We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation”
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 BREFFNI X BAGGOT whose telephone number is (571)272-7154. The examiner can normally be reached M-F 8a-10a, 12p-6p.
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BREFFNI BAGGOT
Primary Examiner
Art Unit 3621
/BREFFNI BAGGOT/Primary Examiner, Art Unit 3621