The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
This action is in response to the applicant’s amendment filed on 14 August 2026.
Claims 1-20 are pending and examined. Claims 1-5, 10-15, and 17-20 are currently amended.
Response to Arguments
Applicant’s argument against rejection of claims 1-20 under AIA 35 U.S.C. §101 has been carefully considered. Applicant seems to argue that amended limitation “outputting, by the navigation device, the advertising data through a display unit of the navigation device based on a determination that the advertising data is to be output” amounts to significantly more than the abstract idea. Examiner respectfully disagrees. The outputting step is recited at a high level of generality (i.e. as a general means of outputting result from the receiving and determining steps), and amounts to mere post solution outputting, which is a form of insignificant extra-solution activity.
Rejection as to claims 1-20 under AIA 35 U.S.C. §112b has been withdrawn due to amendment and argument.
Claim interpretation of “control unit” as recited in claims 11-12, and 19-20 has been withdrawn due to amendment and argument.
Rejection of claims 1-20 under AIA 35 U.S.C. §102(a)(1) as being anticipated by Lim et al., US 20210110433 (A1) has been withdrawn due to amendment and argument.
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 not directed to patent eligible subject matter.
Analysis for Independent Claims 1 and 11:
When considering subject matter eligibility under 35 U.S.C. § 101 under the 2019 Revised Patent Subject Matter Eligibility Guidance, the Office is charged with determining whether the scope of the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter (Step 1).
If the claim falls within one of the statutory categories (Step 1), the Office must then determine the two-prong inquiry for Step 2A whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, or abstract idea) (Step 2A Prong 1), and if so, whether the claim is integrated into a practical application of the exception (Step 2A Prong 2), and if so, re-evaluate whether the inventive concept is more than what is well-understood, routine, conventional activity in the field (Step 2B).
Claims 1 and 11 are rejected under 35 U.S.C. 101 because the claim invention is directed to an abstract idea without significantly more.
101 Analysis – Step 1: statutory category
Independent claims 1 and 11 are rejected under 35 USC §101 because the claimed invention is directed to a process and machine respectively, which are statutory categories of invention (Step 1: Yes).
101 Analysis – Step 2A Prong 1: Judicial Exception Recited
The claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes). The abstract idea falls under “Mental Processes” Grouping. The independent claims and the other claims recite a method and apparatus for receiving information, determining whether information to be output, and outputting data as recited in independent claims 1 and 11. The limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of “by at least one processor”. That is, other than reciting “by the at least one processor” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “by at least one processor” language, the claim encompasses a person looking at data collected and forming a simple judgement in the human mind, or by a human using a pen and paper. The mere nominal recitation of by at least one processor does not take the claim limitations out of the mental process grouping. Thus, the claim recites a mental process. (Step 2A – Prong 1: Judicial Exception Recited: Yes).
101 Analysis – Step 2A Prong 2: Practical Application
The claim recites additional elements of receiving information is recited at a high level of generality (i.e. as a general means of gathering data for use in the outputting step), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The outputting step is also recited at a high level of generality (i.e. as a general means of outputting result from the receiving and determining steps), and amounts to mere post solution outputting, which is a form of insignificant extra-solution activity.
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 2A—Prong 2: Practical Application?: No)
101 Analysis – Step 2B: Inventive Concept
As discussed with respect to Step 2A Prong Two, the additional elements in the claim amount to no more than insignificant extra-solution activity.
Under the 2019 PEG, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B. Here, the generating and outputting steps were considered to be extra-solution activity in Step 2A, and thus they are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field. The background recites that vehicle navigation displays advertisement along a route is well known [0003]-[0004]. 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 collection or receipt of data over a network 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), for example, indicated that the mere displaying of data is a well understood, routine, and conventional function. Accordingly, a conclusion that the collecting step is well-understood, routine, conventional activity is supported under Berkheimer. The claim is ineligible (Step 2B: Inventive Concept?: No).
Analysis for Dependent Claims 2-10, 12-20:
Step 1: Determining if the claim(s) are directed a statutory class of invention (i.e., process, machine, manufacture, or composition of matter).
Claims 2-10 are directed to “a method’. The claim is directed to a process, which is a statutory category. (Step 1: yes)
Claims 12-20 are directed to a navigation apparatus. The claim is directed to a machine, which is a statutory category. (Step 1: yes)
Step 2A Prong One: Determining if the claim(s) recite a judicial exception (e.g., mathematical concepts, mental processes, certain methods of organizing human activity, fundamental economic practices, and “an idea ‘of itself’”.
Claims 2-10 recite additional limitations directed to a mental process. The same analysis of Step 2A Prong One for claim 1 applies. Claims 2-10 are directed to the judicial exception of a mental process.
Claims 12-20 recite additional limitations directed to a mental process. The same analysis of Step 2A Prong One for claim 11 applies. Claims 12-20 are directed to the judicial exception of a mental process.
Step 2A Prong Two: Determining if additional limitations within the claim(s) integrate the judicial exception into a practical application.
Claims 2-10, 12-20 recite additional limitations, which viewed both individually and in combination, fail to integrate the judicial exception into a practical application. The same analysis of Step 2A Prong Two for claims 1 and 11 applies. Claims 2-10, 12-20 are not integrated into a practical application.
Step 2B: Determining if the additional elements, taken individually and in combination, do not result in the claim, as a whole, amounting to significantly more than the judicial exception?
The additional elements in claims 2-10, 12-20 fail to recite any additional elements, viewed both individually and as a whole, that amount to significantly more than the judicial exception. The same analysis for claims 1 and 11 applies in this step 2B . Claims 2-10, 12-20 fail to claim anything significantly more than the judicial exception.
Conclusion:
Dependent claims 2-10, 12-20 are directed to the abstract idea of a mental process. Accordingly, claims 2-10, 12-20 are not patent eligible. Overall, claims 1-20 are rejected under 35 U.S.C. §101 as being directed to non-statutory subject matter and are not patent eligible.
Notice re prior art available under both pre-AIA and AIA
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.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 as set forth in this Office action.
The closest prior art of Lim et al., US 20210110433 (A1) teaches a vehicle that includes a camera; a wireless transceiver; and a controller, programmed to responsive to receiving an input requesting to save a location, record a current location of the vehicle, activate the camera to capture an image, and associate the image with the location, responsive to receiving, via the wireless transceiver, a wireless transmission from an advertising business containing a promotion icon, identify the advertising business in the image and modify the image by overlaying the promotion icon on the image to highlight the advertising business, and generate a location report incorporating the location and the image as modifie.
In regarding to independent claims 1 and 11, Lim taken either individually or in combination with other prior art of record fails to teach or render obvious a system and method for receiving schedule information through a communication interface;
determining, by the navigation device, whether advertising data associated with the schedule information is to be output based on one or more output conditions; and
outputting, by the navigation device, the advertising data through a display unit of the navigation device based on a determination that the advertising data is to be output.
Conclusion
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 mailing date of this final action.
Examiner’s Note
The examiner has pointed out particular references contained in the prior art of record in the body of this action for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicant should consider the entire prior art as applicable as to the limitations of the claims. It is respectfully requested from the applicant, in preparing the response, to consider fully the entire references as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUEN WONG whose telephone number is (313)446-4851. The examiner can normally be reached on M-F 9-5:30 EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Faris Almatrahi, can be reached on (313)446-4821. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Yuen Wong/
Primary Examiner, Art Unit 3667
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