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 .
DETAILED ACTION
This Office action is in response to Applicant’s Amendments/Remarks filed 6/22/2026. Claim(s) 1, 4-9 is/are pending.
Response to Arguments
Rejections under 35 USC 102 and 35 USC 103 of the most recent Office action have been removed due to Applicant’s amendments.
Applicant's arguments filed 6/22/2026, pg(s). 6, in regards to the rejections under 35 USC 101 to the pending claims have been fully considered but they are not persuasive.
Applicant asserts, pg(s). 6,
“the claimed features of the independent claims as amended improve the computer's ability to accurately calculate energy consumption by avoiding calculation errors caused by the presence of water-related substances on the set travel route roads. This is an improvement to the functioning of the computer which provides a patent-eligible practical application of any abstract idea. In addition, by calculating the increase amount of travel resistance due to a water-related substance on the road and then calculating the travel resistance using that increase amount, the claims provide an improvement to the technological field of energy consumption estimation and thus provide a patent-eligible practical application of any abstract idea.”
The examiner disagrees with these assertions. It is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation. That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 120 USPQ2d 1473 (Fed. Cir. 2016) (a method of translating a logic circuit into a hardware component description of a logic circuit was found to be ineligible because the method did not employ a computer and a skilled artisan could perform all the steps mentally). As stated below in the 35 USC 101 section of this Office action, claim 1 is directed to a mental process. The addition of computing components to the claim are using generic computer components to implement the mental process. The courts have found that mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 is not enough to qualify as "significantly more" when recited in a claim with a judicial exception. Further, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. In this case, the specification describes in the Background that it is known to calculate energy consumption using an energy estimation device, i.e., a computer. However, the specification does not explain how the additional calculations of the invention improve the energy estimation process. Thus, claim 1 does not show an improvement in computer-functionality.
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 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:
“water information acquisition unit” in claim(s) 1, described in Applicant’s specification as “The energy consumption estimation device 1 is configured as a computer including a communication unit 10, a storage unit 20, a computing unit 30” (pg. 8). “the communication unit 10 of the present embodiment, which acquires the weather information WI that is information related to the water-related substance, from the server SV, functions as a water information acquisition unit.”, (pg. 22).
“energy estimation unit” in claim(s) 1, 4-7, described in Applicant’s specification as “The energy consumption estimation device 1 is configured as a computer including a communication unit 10, a storage unit 20, a computing unit 30” (pg. 8). “ed. The computing unit 30 of the present embodiment functions as an energy estimation unit.”, (pg. 9).
“vehicle information acquisition unit” in claim(s) 6, described in Applicant’s specification as “The energy consumption estimation device 1 is configured as a computer including a communication unit 10, a storage unit 20, a computing unit 30” (pg. 8). “The computing unit 30 of the present embodiment functions as a vehicle information acquisition unit”, (pg. 10).
“location information acquisition unit” in claim(s) 7, described in Applicant’s specification as “The energy consumption estimation device 1 is configured as a computer including a communication unit 10, a storage unit 20, a computing unit 30” (pg. 8). “The communication unit 10 of the present embodiment functions as a location information acquisition unit that acquires the travel route information DI corresponding to scheduled location information.” (pg. 11).
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.
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.
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, 4-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claims 1, 4-7, the claims recite “An energy consumption estimation device” and thus, are a machine. Therefore, the claims are within at least one of the four statutory categories.
Regarding Prong I of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether they recite subject matter that falls within one of the following groups of abstract ideas: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes.
Independent claim 1 includes limitations that recite an abstract idea (emphasized below).
An energy consumption estimation device for estimating energy consumption of a vehicle that travels on a road surface, comprising:
a water information acquisition unit configured to acquire water-related information on a water-related substance on the road surface; and
an energy estimation unit configured to:
estimate, based on at least an outside air temperature included in the water-related information acquired by the water information acquisition unit, a road surface temperature of the road surface,
determine, based on the estimated road surface temperature, a state of the water-related substance on the road surface as being at least one of snow, water, and ice,
calculate, based on the determined state, an increase amount of travel resistance caused by the water-related substance,
calculate a travel resistance by adding the increase amount to a base travel resistance calculated without taking the water-related substance into account, and
estimate the energy consumption of the vehicle that travels on the road surface based on the calculated travel resistance.
The examiner submits that the foregoing bolded limitations constitute a “mental process” because under its broadest interpretation, the claim covers performance of the limitations in the human mind. For example, the “estimate…a road surface temperature of the road surface”, “determine…a state of the water-related substance on the road surface…”, “calculate…an increase amount of travel resistance caused by the water-related substance”, “calculate a travel resistance…”, and “estimate the energy consumption of the vehicle…” in the contexts of this claim encompass forming judgements regarding the temperature of the road and the state of the road based on the temperature, performing evaluations on how the state of the road affects the travel resistance compared to the travel resistance in ideal conditions, and performing an evaluation on how the energy consumption of the vehicle is affected by the travel resistance. These limitations can be practically performed in the mind or with pen and paper. Accordingly, the claim recites at least five abstract idea(s).
Regarding Prong II of the Step 2A analysis of the 2019 PEG, the claims are to be analyzed to determine whether the claim, as a whole, integrates the abstract idea into a practical application. As noted in the 2019 PEG, it must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of the judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application”.
In the present case, the additional limitations beyond the above-noted abstract idea(s) are as follows (where the underlined portions are the “additional limitations” while bolded portions continue to represent the “abstract idea”).
An energy consumption estimation device for estimating energy consumption of a vehicle that travels on a road surface, comprising:
a water information acquisition unit configured to acquire water-related information on a water-related substance on the road surface; and
an energy estimation unit configured to:
estimate, based on at least an outside air temperature included in the water-related information acquired by the water information acquisition unit, a road surface temperature of the road surface,
determine, based on the estimated road surface temperature, a state of the water-related substance on the road surface as being at least one of snow, water, and ice,
calculate, based on the determined state, an increase amount of travel resistance caused by the water-related substance,
calculate a travel resistance by adding the increase amount to a base travel resistance calculated without taking the water-related substance into account, and
estimate the energy consumption of the vehicle that travels on the road surface based on the calculated travel resistance.
For the following reason(s), the examiner submits that the above identified additional limitations do not integrate the above-noted abstract idea into a practical application.
Regarding the additional limitation(s) of “an energy estimation unit configured to”, the examiner submits the limitation(s) are merely tool(s) being used to perform the abstract idea (or instructions to implement the abstract idea on a computer). Further, the “energy estimation unit” is/are recited at a high level of generality and merely describe how to generally “apply” the otherwise mental judgement in a generic or general-purpose vehicle control environment. The component(s) merely automate(s) the “estimate…” step(s) and thus do/does not integrate a judicial exception into a “practical application”. See MPEP 2106.05(f). These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I).
Regarding the additional limitation(s) of “a water information acquisition unit configured to acquire water-related information on a water-related substance on the road surface”, the examiner submits the limitation(s) is/are insignificant extra-solution activity[ies] that merely use a computer (“water information acquisition unit”) to perform a nominal or tangential addition to the claim. In particular, the “water information acquisition unit” is recited at a high level of generality (i.e. as a general means of gathering information for use in the “estimate...” step(s)), and amounts to mere data gathering for use in the claimed process, which is a form of insignificant extra-solution activity. Additional elements that are considered extra-solution activities do not integrate the claim into a “practical application”. See MPEP 2106.05(g).
Moreover, limiting the use of the abstract idea to a particular technological environment (e.g., to control an aircraft engine), or as stated the preamble (“for estimating energy consumption of a vehicle that travels on a road surface”) is not enough to transform the abstract idea into a patent-eligible invention (Flook) e.g., because the preemptive effect of the claims on the idea within the field of use would be broad. See e.g., Bilski v. Kappos, 561 U.S. 593 (“Flook established that limiting an abstract idea to one field of use . . . did not make the concept patentable.”).
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, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is not more than a drafting effort designed to monopolize the exception (MPEP § 2106.05). 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.
Regarding Step 2B of the 2019 PEG, independent claim 1 does not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application.
As discussed above with respect to integration of the abstract idea into a practical application, the additional limitation(s) of the “an energy estimation unit configured to” is/are merely means to apply the exception and does not amount to “significantly more”, as adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984, are not 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 limitation(s) of “for estimating energy consumption of a vehicle that travels on a road surface” is/are merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to “significantly more”, as generally linking the use of a judicial exception to a particular technological environment or field of use (“simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use”), as discussed in Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981), are not sufficient to amount to significantly more than the judicial exception.
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 limitation(s) of “a water information acquisition unit configured to acquire water-related information on a water-related substance on the road surface” is/are a well-understood, routine, and conventional activity because the specification does not provide any indication that the acquiring of “water-related information” is anything other than obtaining data from a server (pg. 22). See also 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.
Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015) and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93, indicate that storing and retrieving of data is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner.
Hence, the claim is not patent eligible.
Regarding claim(s) 8, the claim(s) recite(s) “An energy consumption estimation method” and thus, are a process. Therefore, the claims are within at least one of the four statutory categories. Independent claim 8 rises and falls with independent with claim 1. Thus, the claim is not patent eligible for the same reasons as discussed above with respect to claim 1. Discussion is omitted for brevity.
Hence, the claim is not patent eligible.
Regarding claim(s) 9, the claim(s) recite(s) “A non-transitory computer readable medium” and thus, are a manufacture. Therefore, the claim(s) is/are within at least one of the four statutory categories. Independent claim 9 recites the similar limitations as indicated above with respect to claim 1. Hence, the claim(s) is/are not patent eligible for the same reasons as discussed above with respect to claim 1. Additional elements present in the independent claim are discussed below. All other limitations not discussed are the same as those discussed above with respect to claim 1. Discussion is omitted for brevity.
Additionally, the claim recites the additional elements of the “A non-transitory computer readable medium having stored thereon instructions executable by a computer to cause the computer to perform”. When evaluated in Prong II of the Step 2A analysis in the 2019 PEG, these additional elements do not integrate the above-noted abstract idea into a practical application. The limitation(s) merely describe how to generally “apply” the otherwise mental judgements in a generic or general-purpose environment, are recited at a high level of generality, and merely automate(s) the functional step(s) of the claim. Further, when evaluated in Step 2B of the 2019 PEG, the additional limitation(s) amount(s) to nothing more than applying the exception using a generic computer component. Generally applying an exception using a generic computer component cannot provide an inventive concept.
Hence, the claim is not patent eligible.
Dependent claim(s) 4-7 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.
Hence, the claim(s) is/are not patent eligible.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMELIA VORCE whose telephone number is (313) 446-4917. The examiner can normally be reached on Monday-Friday, 9AM-6PM, Central Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anne Antonucci can be reached at (313) 446-6519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMELIA VORCE/ Primary Examiner, Art Unit 3666
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