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
Claims 1-20 are pending and examined.
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 appliance for obtaining information, 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 a control unit”. That is, other than reciting “by the control unit” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “by the 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 a control unit 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 obtaining information, outputting data. The obtaining 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 obtaining step), and amounts to mere post solution outputting, which is a form of insignificant extra-solution activity. The “hidden Markov model” merely describes how to generally “apply” the otherwise mental judgements in a generic or general purpose vehicle communication environment. The vehicle communication environment is recited at a high level of generality and is merely automates the obtaining step.
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 2-9 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 12-17 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. Claims 2-10, 12-17, and 19-20 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 applies in this step 2B as discussed in Step 2A Prong Two (see independent and dependent claim analysis). 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.
Claim Rejections - 35 USC §112
The following is a quotation of 35 U.S.C. §112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. §112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 1, 2, 6, 10, 11, 12, 16, and 20 are rejected because “preset type”, “type” as recited are unclear and indefinite. The addition of the word "type" to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955). Likewise, the phrase "ZSM-5-type aluminosilicate zeolites" was held to be indefinite because it was unclear what "type" was intended to convey. The interpretation was made more difficult by the fact that the zeolites defined in the dependent claims were not within the genus of the type of zeolites defined in the independent claim. Ex parte Attig, 7 USPQ2d 1092 (Bd. Pat. App. & Inter. 1986). (MPEP 2173.05(b)(III)(e) Relative Terminology – Type). For interpretation purpose, “type” is examined as an event. Appropriate correction is needed.
Dependent claims 2-10, and 12-20 are further rejected based on their dependency of the base claims.
The following is a quotation of 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 following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “control unit” as recited in claims 11-13, and 19-20, to perform respective function to “obtain”, “transmit” and “determine”.
“control unit” as recited in claims 11-13, and 19-20 invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description “[0046] The control unit may include a communication device for communicating with other control units or sensors to control functions in charge, a memory for storing an operating system, logic instructions, input/output information, and the like, and one or more processors for making determinations, operations, decisions, and the like needed to control the functions in charge.”
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. “control unit” corresponds to a processor as recited in claims 11-13, and 19-20.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
Claim Rejections
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-20 are rejected under AIA 35 U.S.C. §102(a)(1) as being anticipated by Lim et al., US 20210110433 (A1).
As to claim 1, Lim teaches a method of controlling a navigation device, the method comprising:
obtaining, by the navigation device, information of a preset type from a mobile
device (“receives a user input indicative of a request to save location information”, ¶25; “computing platform 104 may be further configured to transmit the location report directly to the mobile device 128 via the wireless connection 130”, ¶27); and
outputting, by the navigation device, advertising data matching the obtained
information of the preset type through a display unit of the navigation device in response
that preset output conditions are satisfied (“computing platform 104 may be further configured to present the location report to the user directly via the HMI controls 112 in communication with the display 114 and/or the speaker 118”, ¶29),
wherein the information of the preset type includes schedule information (location information, ¶27, 29).
As to claim 2, Lim teaches the method further including:
transmitting, by the navigation device, the information of the preset type to an
advertising system (“upload the location report to a server 178 for the user to review”, ¶29); and
receiving, by the navigation device, the matching advertising data from the
advertising system (“the server 178 may include a databased associated with an account of the user”, ¶29).
As to claim 3, Lim teaches the method wherein the transmitting of the information of the preset type includes transmitting at least one of current location information or route information to the advertising system (“upload the location report to a server 178 for the user to review”, ¶29).
As to claim 4, Lim teaches the method wherein the matching advertising data is determined by the advertising system based on at least one of the schedule information, the current location information, or the route information (“upload the location report to a server 178 for the user to review”, ¶29).
As to claim 5, Lim teaches the method wherein the preset output conditions include at least one of a case where a current location of the navigation apparatus is within a predetermined distance from a place corresponding to the matching advertising data, a case where the corresponding place is located within a map output through the display unit, or a case where a current time point corresponds to a recommended display time point corresponding to the advertising data (“associating, via the processor, the image with the map; receiving, via a wireless transceiver, a wireless transmission from an advertising business containing a promotion icon”, ¶4).
As to claim 6, Lim teaches the method wherein the schedule information includes at least one of a date, a type, or a place of the schedule information (location report, ¶25, 27).
As to claim 7, Lim teaches the method wherein the recommended display time point is determined by the navigation device or the advertising system that provides the
advertising data according to the schedule information (capture location data when vehicle passes through the route, ¶29).
As to claim 8, Lim teaches the method further including, in response that the recommended display time point is determined by the advertising system, receiving information on the recommended display time point from the advertising system (capture location data when vehicle passes through the route, ¶29).
As to claim 9, Lim teaches the method further including:
transmitting, by the navigation device, at least one of current location information
or route information to an advertising system (“upload the location report to a server 178 for the user to review”, ¶29); and
receiving, by the navigation device, advertising data corresponding to at least one of the current location information or the route information from the advertising system (“the server 178 may include a databased associated with an account of the user”, ¶29).
As to claim 10, Lim teaches the method wherein the outputting includes:
determining, by the navigation device, the advertising data matching the obtained
information of the preset type among the received advertising data (“upload the location report to a server 178 for the user to review”, ¶29); and
outputting, by the navigation device, the determined matching advertising data,
through the display unit (“computing platform 104 may be further configured to present the location report to the user directly via the HMI controls 112 in communication with the display 114 and/or the speaker 118”, ¶29).
As to claims 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, they are apparatus claims that recite substantially the same limitations as the respective method claims 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10. As such, claims 11, 12, 13, 14, 15, 16, 17, 18, 19, 20 are rejected for substantially the same reasons given for claims 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10 and are incorporated herein.
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
Prosecution Insights