DETAILED CORRESPONDENCE
Allowable Subject Matter
Claim(s) 2 is/are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Priority Status
Foreign priority benefit under 35 U.S.C. 119 (a)-(d) is acknowledged.
Status of Claims
Claim(s) 1-4 is/are examined in this office 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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Interpretation
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 Analysis will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
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;
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
the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Non-structural generic placeholders that may invoke § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) are “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for”.1, 2
Structural placeholders that do not invoke § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) are “circuit for,” “detent mechanism,” “digital detector for,” “reciprocating member,” “connector assembly,” “perforation,” “sealingly connected joints,” and “eyeglass hanger member.”3, 4
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:
“a driving diagnostic device that” (see Claim 1, line 6. The Examiner takes the position “that” is an alternative linking phrase to “so that” which in turn is an alternative to “for”; therefore, the recited claim language “device that” is considered equivalent to said non-structural generic placeholder “device for”. The “device that” limitation when read in light of The Original Filed Specification [0027] points to “driving diagnosis device 5A” as software being the corresponding structure.);
“a user interface unit that” (see Claim 1, line 8. The Examiner takes the position “that” is an alternative linking phrase to “so that” which in turn is an alternative to “for”; therefore, the recited claim language “unit that” is considered equivalent to said non-structural generic placeholder “unit for”. The “unit that” limitation when read in light of The Original Filed Specification [0041] points to “UI unit 6A” as software being the corresponding structure.).
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.
THIS SECTION IS NOT A REJECTION! The Examiner expresses that this particular section of the office action identifies and clarifies how the means-plus-function limitation(s) listed above are interpreted during examination and further acts as a formal statement on claim interpretation that is recorded into the prosecution history. 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.
Nonstatutory Subject Matter 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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to nonstatutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter.
Claim(s) 1-4 fail(s) Step 1 of the Subject Matter Eligibility (“SME”) Test and therefore directed to non-statutory subject matter:
As to Claim(s) 1-2, the “driving diagnosis system” embodiment is without any structural recitations but a listing of “software per se” components. A claim comprising only software per se immediately fails Step 1. (Please see the Broadest Reasonable Interpretation section below and MPEP § 2106.03 (I)).
As to Claim(s) 3-4, the “diagnosis server” and “user interface server” embodiments is/are without any structural recitations but a listing of “software per se” components. A claim comprising only software per se immediately fails Step 1. (Please see the Broadest Reasonable Interpretation section below and MPEP § 2106.03 (I))
Claim Rejections - 35 USC § 112(B) or (pre-AIA ) Second Paragraph
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.
Claim(s) 1-4 is/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.
As to Claim 1, the preamble introduces a product claim (i.e., “driving diagnosis system”) which is typically made up of physical features/characteristics; however, Claim 1 lacks any physical features/characteristics. Thus this claim is rejected because it is unclear what physical features/characteristics make up said “driving diagnosis system”. The Examiner requests Applicant to add physical features/characteristics to said product claim to overcome this rejection.
Claim 2 is rejected based on dependency.
As to Claim 3, the preamble introduces a product claim (i.e., “diagnosis server”) which is typically made up of physical features/characteristics; however, Claim 3 lacks any physical features/characteristics. Thus this claim is rejected because it is unclear what physical features/characteristics make up said “diagnosis server”. The Examiner requests Applicant to add physical features/characteristics to said product claim to overcome this rejection. The Examiner notes that [0026] lists common hardware in “server 5”, and [0027] implies “driving diagnosis device 5A” is installed software (i.e., “constructed inside” from [0027]) loaded on “server 5”.
As to Claim 4, the preamble introduces a product claim (i.e., “user interface server”) which is typically made up of physical features/characteristics; however, Claim 4 lacks any physical features/characteristics. Thus this claim is rejected because it is unclear what physical features/characteristics make up said “user interface server”. The Examiner requests Applicant to add physical features/characteristics to said product claim to overcome this rejection. The Examiner notes that [0026] lists common hardware in “server 6”, and [0041] implies “UI unit 6A” is installed software (i.e., “constructed inside” from [0041]) loaded on “server 6”.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1 and 3-4 is/are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by US 20220292885 A1 (“Manabe”)
As to Claim 1, Manabe discloses A driving diagnosis system (e.g., “10” from Fig. 2) that generates a driving diagnosis result calculated by using a detection value being a physical quantity to change based on at least one of (Only one option is required to satisfy an “at least one of” limitation.) traveling, steering, and braking of a vehicle or (Only one option is required to satisfy an “or” limitation.) a physical quantity to change by having a prescribed operation member operated (see at least Abstract, [0012], [0032] and Fig. 2 with associated text, in particular, [0032] – “the driving diagnostic device 10 is constructed as a cloud computing system”.), the driving diagnosis system comprising:
a database that accumulates information of the detection value from the vehicle (see at least [0012], [0039]);
a driving diagnosis device that includes a diagnosis unit (e.g., “diagnosis result generation unit”) and an aggregated data transmission unit (e.g., “transmission-reception unit”) (see at least Abstract, [0006], [0038]-[0039]); and
a user interface unit that (e.g., “web” and/or “web application (WebApp)”) includes a result storage unit (e.g., “ROM”) and a second aggregated data transmission unit (e.g., “transmission-reception control unit 181”) and receives information from the driving diagnosis device (see at least Fig. 2 with associated text, [0058] – “The fourth server 18 functions as at least the web server and the web application (WebApp) server” and [0061], [0079]-[0093]), wherein:
the driving diagnosis device belongs to a diagnosis server (e.g., “first server”, “second server” and/or “third server”) (see at least Fig. 2 with associated text; in particular, [0032] – “In the present embodiment, the first server 12, the second server 14, and the third server 16 are managed by the subject A. On the other hand, the fourth server 18 is managed by a subject B.”);
the user interface unit belongs to a user interface server (e.g., “fourth server”) (see at least Fig. 2 with associated text; in particular, [0032] – “In the present embodiment, the first server 12, the second server 14, and the third server 16 are managed by the subject A. On the other hand, the fourth server 18 is managed by a subject B.” and [0058], [0062]);
an account of a system user is separately set for each of the diagnosis server and the user interface server (see at least [0032] – “In the present embodiment, the first server 12, the second server 14, and the third server 16 are managed by the subject A. On the other hand, the fourth server 18 is managed by a subject B.” and [0058] – “The fourth server 18 functions as at least the web server and the web application (WebApp) server.”);
the diagnosis unit performs a driving diagnosis for each completion of 1 Trip of the vehicle based on information from the database (see at least [0008], [0012], [0036], [0038]-[0057]);
the aggregated data transmission unit transmits an aggregation result of information of the driving diagnosis to the user interface server (see at least [0057], [0081]-[0083]);
the result storage unit stores at least the aggregation result received from the aggregated data transmission unit (see at least [0057], [0081]-[0083]); and
the second aggregated data transmission unit, in response to a request from the system user, acquires necessary information from the stored aggregation result and provides the necessary information to the system user (see at least [0057], [0081]-[0083]).
As to Claim 3, Manabe discloses A diagnosis server (e.g., “first server”, “second server”, and/or “third server”) used for a driving diagnosis system that generates a driving diagnosis result calculated by using a detection value being a physical quantity to change based on at least one of (Only one option is required to satisfy an “at least one of” limitation.) traveling, steering, and braking of a vehicle or (Only one option is required to satisfy an “or” limitation.) a physical quantity to change by having a prescribed operation member operated (see at least Abstract, [0012], [0032] and Fig. 2 with associated text), wherein:
a driving diagnosis device (e.g., “driving diagnostic device” from Abstract) that includes
a diagnosis unit (e.g., “diagnosis result generation unit”; see at least [0006]) and
an aggregated data transmission unit (e.g., “transmission-reception unit”) belongs to the diagnosis server (see at least [0038]-[0039]),
the diagnosis unit performing a driving diagnosis for each completion of 1 Trip of a vehicle based on information from a database that accumulates information of the detection value from the vehicle (see at least (see at least [0008], [0012], [0036], [0038]-[0057]), and
the aggregated data transmission unit transmitting an aggregation result of information of the driving diagnosis (see at least [0057], [0081]-[0083]);
the diagnosis server is able to communicate with a user interface server (e.g., “fourth server”) to which a user interface unit (e.g., “web” and/or “web application (WebApp)”) that includes (see at least Fig. 2 with associated text and [0058]. Fig. 2 illustrates a user/s mobile terminal 50 communicating with the fourth server 18 therefore corresponds to a user interface server.)
a result storage unit (e.g., “ROM”; see at least [0058]) and
a second aggregated data transmission unit (e.g., “transmission-reception control unit 181”) belongs (see at least [0058]),
the result storage unit storing at least the aggregation result received from the aggregated data transmission unit (see at least [0057], [0081]-[0083]), and
the second aggregated data transmission unit, in response to a request from a system user, acquiring necessary information from the stored aggregation result and providing the necessary information to the system user (see at least [0057], [0081]-[0083]); and
an account of the system user set in the diagnosis server is separate to an account set in the user interface server (see at least [0032] – “In the present embodiment, the first server 12, the second server 14, and the third server 16 are managed by the subject A. On the other hand, the fourth server 18 is managed by a subject B.”).
As to Claim 4, Manabe discloses A user interface server (e.g., “fourth server”) used for a driving diagnosis system that generates a driving diagnosis result calculated by using a detection value being a physical quantity to change based on at least one of (Only one option is required to satisfy an “at least one of” limitation.) traveling, steering, and braking of a vehicle or (Only one option is required to satisfy an “or” limitation.) a physical quantity to change by having a prescribed operation member operated (see at least Abstract, [0012], [0032] and Fig. 2 with associated text), wherein:
the user interface server (e.g., “fourth server”) is able to communicate with a diagnosis server (e.g., “first server”, “second server”, and/or “third server”) to which a driving diagnosis device that includes a diagnosis unit (e.g., “diagnosis result generation unit”) and an aggregated data transmission unit (e.g., “transmission-reception unit”) belongs (see at least [0006], [0038]-[0039], Fig. 2 with associated text),
the diagnosis unit performing a driving diagnosis for each completion of 1 Trip of a vehicle based on information from a database that accumulates information of the detection value from the vehicle (see at least [0008], [0012], [0036], [0038]-[0057]), and
the aggregated data transmission unit transmitting an aggregation result of information of the driving diagnosis (see at least [0057], [0081]-[0083]);
a user interface unit that includes
a result storage unit (e.g., “ROM”; see at least [0058]) and
a second aggregated data transmission unit (e.g., “transmission-reception control unit 181”) belongs to the user interface server (see at least [0058]),
the result storage unit storing at least the aggregation result received from the aggregated data transmission unit (see at least [0057], [0081]-[0083]), and
the second aggregated data transmission unit, in response to a request from a system user, acquiring necessary information from the stored aggregation result and providing the necessary information to the system user (see at least [0057], [0081]-[0083]); and
an account of the system user set in the user interface server is separate to an account set in the diagnosis server (see at least [0032] – “In the present embodiment, the first server 12, the second server 14, and the third server 16 are managed by the subject A. On the other hand, the fourth server 18 is managed by a subject B.”).
Broadest Reasonable Interpretation
Because there are no lexicographic definitions found in The Specification, The Examiner has the ability to apply the broadest reasonable interpretation to the following words, terms, or phrases:
DEVICE – (software) A mechanism or piece of equipment designed to serve a purpose or perform a function. (See PTO-892)
SERVER – The software component on one device that provides services for use by clients on the same or another device. (See PTOL-892)
SYSTEM – A collection of hardware or software components necessary for performing a high-level function. (See PTOL-892)
UNIT – (software) A logically separable part of a computer program. (See PTOL-892)
Written Authorization Required for Internet Communication
MPEP § 502.03 II, “Without a written authorization by applicant in place, the USPTO will not respond via Internet email to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence and response will be placed in the appropriate patent application by the examiner. except for correspondence that only sets up an interview time, all correspondence between the office and the applicant including applicant’s representative must be placed in the appropriate patent application. If an email contains any information beyond scheduling an interview, such as an interview agenda, it must be placed in the application. THE WRITTEN AUTHORIZATION MAY BE SUBMITTED VIA EFS-WEB, MAIL, OR FAX. It cannot be submitted by email.”
Contact Information
Primary Examiner Calvin Cheung’s contact information is listed at the bottom, and he is best reached MONDAY-THURSDAY, 0700-1700 ET. If attempts to reach the primary by telephone are unsuccessful, the primary’s supervisor, ERIN PIATESKI, is available at telephone number (571) 270-7429.
Applicants are encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice for scheduling an examiner interview that will be performed over telephone or video conferencing (using a USPTO supplied web-based collaboration tool).
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/CALVIN CHEUNG/
Direct Office Number (571) 270-7041
Email and Fax send to Calvin.Cheung@USPTO.GOV
1 Federal Register /Vol. 76, No. 27 /Wednesday, February 9, 2011 /Notices located at http://www.gpo.gov/fdsys/pkg/FR-2011-02-09/pdf/2011-2841.pdf, center column, page 6 of 14.
2 MPEP § 2181 (I)(A), first paragraph
3 Federal Register /Vol. 76, No. 27 /Wednesday, February 9, 2011 /Notices located at http://www.gpo.gov/fdsys/pkg/FR-2011-02-09/pdf/2011-2841.pdf, center column, page 6 of 14.
4 MPEP § 2181 (I)(A), second paragraph