DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to applicant’s arguments/remarks and amendments filed on 09/18/2026. Claims 1, 8, and 15 have been amended. No Claims have been cancelled. No Claims have been newly added. Accordingly, claims 1-20 are currently pending.
Response to Arguments
Applicant's arguments filed on 09/18/2026 with respect to the rejection of claims 1-20 under 35 U.S.C. 101 have been fully considered but they are not persuasive. With respect to applicant’s argument that the transmitting and generating steps are not being performed in the mind, the examiner respectfully disagrees with that statement. The examiner did not consider these limitations under the mental process (see 101 rejection below). The examiner identified said limitations as additional elements that are insignificant extra-solution activities that merely use a computer to perform the process. The transmitting a route suggestion amounts to mere post solution transfer of data, which is a form of insignificant extra-solution activity. The generating a warning is also recited at a high level of generality (i.e. as a general means of displaying a warning as a result from the calculating and generating steps step), and amounts to mere post solution displaying, which is a form of insignificant extra-solution activity.
With respect to applicant’s arguments/remarks with respect to the rejection of claims 1-20 under 35 U.S.C. 101 and that the claims create an improvement for the technical field of vehicular computerized navigation, as a practical application, the examiner respectfully disagrees with that statement. As discussed below with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform the recited steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Further, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field. The additional limitations of receiving a request from a user including an origin and a destination, and transmitting a route suggestion to a user are well-understood, routine, and conventional activities because the background recites said limitations in Paragraphs 0001-0004 as such. Furthermore, 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. The additional limitation of generating a warning that could be visual according to the specification is also well-understood, routine, and conventional activity because 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. Hence, the claims are not patent eligible.
Applicant’s arguments, see applicant’s arguments/remarks, filed on 09/18/2026, with respect to the rejection(s) of claim(s) 1-20 under 35 U.S.C. 103 as being unpatentable over Hayes in view of Lu have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Hayes and Wang US 2016/0232785 A1 (hence Wang) as detailed below.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,725,955 B2 and over claims 1-20 of U.S. Patent No. 12,135,218 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Claims 1, 8, and 15 of the current application appear to be a broader version of claims 1, 8, and 15 of U.S. Patent No. 11,725,955 B2, and claims 1, 8, and 15 of U.S. Patent No. 12,135,218 B2 because the structural elements of claims 1, 8, and 15 of the current application are the same structural elements of claims 1, 8, and 15 of US 11,725,955 B2 and 12,135,218 B2 with the exception of the display feature, i.e. “generating a plurality of personalized route suggestions” since claims 1, 8, and 15 in the current application recites “generating a personalized route suggestion”. Furthermore, Claims 1, 8, and 15 of the current application recites “wherein the personalized route is transmitted to a user device or provided on a vehicle display” which is a broader limitation than the transmitting step in claims 1, 8, and 15 of U.S. Patent No. 11,725,955 B2 and 12,135,218 B2.
Claims 2-7, 9-14, and 16-20 of the current application appear to be the same as claims 2-7, 9-14, and 16-20 of U.S. Patent No. 11,725,955 B2, and claims 2-7, 9-14, and 16-20 of U.S. Patent No. 12,135,218 B2.
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 directed to an abstract idea without significantly more. The claim(s) claims 1, 8, and 15, recite(s) receiving a request from a user including an origin and a destination, identifying a plurality of routes, retrieving real time data associated with road segments of the plurality of routes, retrieving accident history data, retrieving a user profile, calculating risk scores based on accident history, real time data and at least one of tolerance level and driver’s history from the driver’s profile, generating and transmitting a route suggestion based on the risk scores and generating a warning to be provided.
The limitations “identifying a plurality of routes, retrieving real time data associated with road segments of the plurality of routes, retrieving accident history data, retrieving a user profile, calculating risk scores based on accident history, real time data and at least one of tolerance level and driver’s history from the driver’s profile, and generating a route suggestion based on the risk scores”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than one or more processors and a computer, nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the one or more processors and a computer language, the context of the claims encompasses a user gathering data and mentally calculate a score and assign a route based on said score. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claims recite the additional element of one or more processors and a computer. The one or more processors and the computer are recited at a high-level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. With respect to the receiving a request, transmitting to a user device, and generating a warning, the examiner submits that these limitations are insignificant extra-solution activities that merely use a computer to perform the process. In particular, receiving a request from a user including an origin and a destination is recited at a high level of generality and amounts to mere data gathering. The transmitting a route suggestion amounts to mere post solution transfer of data, which is a form of insignificant extra-solution activity. The generating a warning is also recited at a high level of generality (i.e. as a general means of displaying a warning as a result from the calculating and generating steps step), and amounts to mere post solution displaying, which is a form of insignificant extra-solution activity. Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitation(s) as an ordered combination or as a whole, the limitation(s) add nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole, reflect an improvement in the functioning of a computer or an improvement to another technology or technical field. Accordingly, the additional limitation(s) do/does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform the recited steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Further, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field. The additional limitations of receiving a request from a user including an origin and a destination, and transmitting a route suggestion to a user are well-understood, routine, and conventional activities because the background recites said limitations in Paragraphs 0001-0004 as such. Furthermore, 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. The additional limitation of generating a warning that could be visual according to the specification is also well-understood, routine, and conventional activity because 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. Hence, the claims are not patent eligible.
Dependent claim(s) 2-7, 9-14, and 16-20 do not recite any further limitations that cause the claim(s) to be patent eligible. Rather, the limitations of dependent claims are directed toward additional aspects of the judicial exception and/or well-understood, routine and conventional additional elements that do not integrate the judicial exception into a practical application. Claims 2, 9, and 16 discloses how the risk score is calculated and that falls under the mental process of calculating a number. Claims 3, 10, and 17 define a time period and do not impose any meaningful limits on practicing the abstract idea. Claims 4, 11, and 18 discloses that weather and accidents are taken into consideration and do not impose any meaningful limits on practicing the abstract idea. Claims 5, 12, and 19 further define the driver’s history and do not impose any meaningful limits on practicing the abstract idea. Claims 6, 13, and 20 discloses that the determining is based on different parameters and do not impose any meaningful limits on practicing the abstract idea. Claims 7 and 19 recite generating a route and that also falls under the mental process as discussed above. Therefore, dependent claims 2-7, 9-14, and 16-20 are not patent eligible under the same rationale as provided for in the rejection of independent claims 1, 8, and 15.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayes et al US 2018/0059687 A1 (hence Hayes) in view of Wang US 2016/0232785 A1 (hence Wang).
In re claims 1, 8, and 15, Hayes discloses a system determining one or more recommended routes between two or more locations, tracking a fleet vehicle's progress along a route, and activating a feature of the fleet vehicle based on the fleet vehicle following or not following the recommended route (Abstract) and teaches the following:
receiving a navigation request from a user, wherein the request includes destination data and a detected origin location associated with the user (Fig.3, #302, #304, and Paragraph 0026 “a system may receive a start location”, and Paragraph 0027 “a system may receive an end location”);
identifying a plurality of routes from the origin to the destination, wherein a route is comprised of a plurality of road segments (Fig.3, #306, Paragraph 0028 “determine a number of segments along the route from the start location to the end location”, and Paragraph 0060 “the system may determine, in step 306, multiple routes from the start location to the end location”);
retrieving data indicative of a real-time condition associated with at least one of the road segments (Fig.4, #410, Paragraph 0035 “a predicted weather for a predicted time that the vehicle will be on a particular segment”, Fig.4, #416 and Paragraph 0039 “”traffic may include information regarding current traffic, predicted traffic, historical traffic patterns, and the like);
retrieving data indicative of accident history associated with the at least one of the road segments (Fig,4, #408 and Paragraph 0034 “accidents may include a number of accidents along a segment, a frequency of accidents along a segment, or the like”);
retrieving a user profile associated with the user ((Fig.4, #426 and Paragraph 0044 “A risk factor may include driver profile”), wherein the user profile includes at least one of a user-configurable tolerance level (Paragraph 0044 “if a driver has a more difficult time seeing at night, but is otherwise a more defensive driver, that driver might have a more risky nighttime driving profile, but a less risky daytime driving profile”, and Paragraph 0098 “A user preference input may allow a user to create or maintain one or more driver profiles”) and driver's history that factors experience and past traffic incidents, (Paragraph 0099 “if a user always values time over safety (e.g., two routes could be safe, but one route might be 95% safe and another might be 98% safe. The 95% safe route might take 10 minutes, and the 98% safe route might take 30 minutes), the system might take the user's preferences into account and choose a route that takes less time, even if the route is slightly less safe”),
calculating risk scores, based on the accident history and the real-time condition and weighed based on the at least one tolerance level and driver's history, associated with a plurality of proposed routes (Fig.3, #310-312, and Paragraph 0047 “the system may determine a total risk of the route” and Paragraph 0099 as described above);
and generating at least one personalized route suggestion based on the risk scores (Paragraph 0084 “determine a recommended route from among the potential routes”);
transmitting data to a graphical user interface of a client device to display the at least one personalized route suggestion on the screen of the client device (Paragraph 0085 “server 606 may send the recommended route to mobile device 604 and/or vehicle 602” and Fig.7C)
However, Hayes doesn’t explicitly teach the following:
generating data for the graphical user interface of the client device, including a warning to be provided once the driver is at a location along a roadway that is a basis for negatively impacting the risk score for the route
Nevertheless, Wang discloses a system for mapping and storing traffic violation citations and alerting a user of traffic violations (Abstract) and teaches the following:
generating data for the graphical user interface of the client device, including a warning to be provided once the driver is at a location along a roadway that is a basis for negatively impacting the risk score for the route (Paragraph 0017 “systems and methods for avoidance of traffic violation citations by alerting a user of a potential traffic violation in a current location of the user or any location requested by the user on the basis of the analysis of the historic traffic violation citation data of the location”, Paragraph 0052 “The system of the current application may then use the data to provide notifications to alert users of the dangerous, accident-prone locations along the city-designated truck routes if the user must drive along those routes to arrive at their intended destination”, Fig.5, Paragraph 0139 “notifications on an in-vehicle display, for example traffic violation alerts may be displayed on a display apparatus”)
It would have been obvious to one having ordinary skills in the art at the time the invention was filed to have modified the Hayes reference to include traffic violation alerts, as taught by Wang, in order for assisting the users in understanding an application of the traffic rules, regulations, laws, citations, etc. (hereinafter, “RRLC”) in the real street traffic situations for specific locations to avoid traffic violations (Wang, Paragraph 0014).
In re claims 2, 9, and 16, Hayes teaches the following:
wherein the risk scores are calculated based on a portion of the data indicative of accident history associated with a time period (Paragraphs 0034 “A risk factor may include accidents 408”, 0041-0042 “an increased number of historical accidents at a time of the day, increased driver fatigue”, and Fig. 4, #422)
In re claims 3, 10, and 17, Hayes teaches the following:
wherein the time period is determined based on a present time or start time received from the user device (Paragraphs 0041-0043 “The system may provide an estimated risk for different times of the day (e.g., now, in one hour, etc.)”, and Fig.4, #420, #422, and #424)
In re claims 4, 11, and 18, Hayes teaches the following:
retrieving data associated with a weather condition, wherein the risk scores are calculated based on a portion of the data indicative of accident history associated with a weather condition (Paragraphs 0035 “A risk factor may include weather 410”, and 0041)
In re claims 5, 12, and 19, Hayes teaches the following:
wherein the driver's history includes at least one of the driver's age, age group, gender, knowledge of the local roads, driving skill level, driving experience, and a combination thereof (Fig.3, #426, Paragraph 0044 “less risky”, “more defensive driver”, Fig.5, #526, and Paragraph 0075 “history”)
In re claims 6, 13, and 20, Hayes teaches the following:
wherein generating the personalized route is further based on a route distance, a travel time, or a combination thereof (Fig.4, #420, #422, #424, and Paragraphs 0041-0043 “driving at certain times of the day”)
In re claims 7 and 14, Hayes teaches the following:
generating at least one route from the plurality of routes other than the identified personalized route (Fig.7E and Paragraph 0096 “a list (e.g., list 736) of potential routes”)
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMI KHATIB whose telephone number is (571)270-1165. The examiner can normally be reached M-F: 9:00am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erin M Piateski can be reached at 571-270 7429. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAMI KHATIB/Primary Examiner, Art Unit 3669
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