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 .
Status of Claims
The following is a final office action in response to the communication filed on 05/19/2026. Claims 1—16 are currently pending.
Priority
The Applicant’s claim for benefit of German Patent Application DE10 2023 212 860.8, filed on 12/18/2023 in Federal Republic of Germany, has been received and acknowledged.
Information Disclosure Statement
Information Disclosure Statement received 11/19/2024 has been reviewed and considered.
Response to Arguments
Applicant's arguments and amendments filed 05/19/2026 regarding the rejection of claims 1—16 under 35 U.S.C. 101 have been fully considered but they are not persuasive. Regarding the amendments the Response at page 8 states “the claims are not directed to an abstract mental process, but rather to generating updated digital map data, entering overtaking suitability map data into an overtaking-suitability map layer of a digital road map, and providing that updated map data to a vehicle controller, thereby updating the vehicle controller with the overtaking suitability map layer so the controller is caused during subsequent vehicle operation to determine whether to permit, suppress, or recommend an overtaking maneuver.” To start, Examiner notes that “generating updated digital map data” is directed to an abstract idea. For example, actions such as “making determinations” (e.g., ascertaining), making observations, gathering data in a manner that can be performed by a human mind (e.g., claimed in a manner which does not explicitly require the use of sensors), utilizing and/or executing mathematical calculations, and making plans and/or generating strategies are all directed to abstract ideas. Whether or not the abstract idea is performed using a computer has no bearing on the fact that generating data, as recited in the claims, constitutes either a mental process, mathematical concept, or a combination thereof. Accordingly, claims 1, 15, 16 recite abstract ideas (e.g., which are specifically identified as such in the rejection under 35 U.S.C. 101 as provided below).
Furthermore, entering and/or transferring said data into a generic data structure within a computer is an additional element, but it cannot provide for a practical application of the identified judicial exceptions because it constitutes insignificant extra solution activity. Moreover, and as addressed in the rejection under 35 U.S.C. 101 provided below, the courts have identified this type of activity (e.g., entering data into a generic data structure, updating a dataset, saving data in memory, and so forth) as well-understood, routine, and/or conventional activity which does not provide for a practical application of the judicial exception.
Finally, the neither the claim element “vehicle controller” nor the associated function of the vehicle controller as recited in the claims, are supported by the as-filed specification. Examiner asserts that both the “vehicle controller” and the material directed to the operation of the vehicle controller constitutes new matter and is rejected under 35 U.S.C. 112(a) as provided below. That said, even if the material were supported by the specification, the limitation is recited at such a high level of generality that it does not provide for a practical application as set forth in MPEP 2106.05(f). Such limitations are equivalent to merely reciting the phrase “apply it,” and therefore do not adequately integrate the identified abstract ideas into a practical application. Please see the citations to MPEP 2106.5(f) and MPEP 2106.05(h) as discussed below which specifically address the limitations directed to the vehicle controller. For the reasons as provided above, the rejection of claims 1—16 under 35 U.S.C. 101 is maintained as modified below in view of the provided amendments.
Applicant's arguments and amendments filed 05/19/2026 with regard to the rejection of claims 1—10, 12, and 14—16 have been fully considered and are persuasive in overcoming the rejection of record. The amendments incorporate the subject matter identified as allowable (e.g., subject matter of claims 11 and 13) as set forth in the Non-Final Rejection dated 02/19/2026. Accordingly, the rejection of claims 1—10, 12, and 14—16 under 35 U.S.C. 103 is withdrawn.
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: “map-generation system” as recited in claim 1. The term “map-generation system,” is not present in the instant application. Specifically, the instant application only includes two instances of the term “system,” which include “a driver assistance system,” (e.g., see para. [0017]) and “motor vehicle safety systems,” (e.g., see para. [0098]). The foregoing systems do not provide for the requisite structure under 35 U.S.C. 112(f) because the instant application does not recite any structures associated with these systems. Accordingly, as best understood by the Examiner, the “map-generation system,” may include either “device 201” or “machine-readable storage medium 301.” The instant application does not appear to provide any structures which may be used as “device 201.” Accordingly, device 201 cannot provide for the requisite means to perform the function of “map-generation system.” Machine-readable storage medium 301 is understood to be a computer storage system which provides for a tangible device which may perform the function of “map-generation system.” Accordingly, “map-generation system,” is understood to be computer storage and equivalents thereof.
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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1—16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 15 and 16 recite the claim element “a vehicle controller,” along with the following limitation related to the vehicle controller:
“provide/providing the updated map data to a vehicle controller of the motor vehicle so as to update the vehicle controller with the overtaking-suitability map layer, wherein the updated vehicle controller is caused, during subsequent operation of the motor vehicle, to determine, based on the overtaking-suitability map data and a current or upcoming position of the motor vehicle along the road, whether to permit, suppress, or recommend an overtaking maneuver.”
Examiner submits that the claim element “a vehicle controller,” along with the above cited limitation directed to the vehicle controller do not appear to be disclosed in the application. For example, the word “control” and/or “controller” is not present anywhere in the as-filed application. Furthermore, the application does not appear to disclose making a control determination related to the suitability measure, let alone a control decision related to “whether to permit, suppress, or recommend an overtaking maneuver.” Upon review of the as-filed application, it appears that the only determinations which are disclosed are those related to determining the suitability measure itself rather than any determinations pertaining to how the suitability measure is used. Accordingly, to the best awareness of the Examiner, the above identified claim material of claims 1, 15, and 16 constitutes new matter and claims 1, 15, and 16 are therefore rejected under 35 U.S.C. 112(a).
Claims 2—14 depend from claim 1 and are therefore rejected under 35 U.S.C. 112(a) for being rejected from a base claim which is rejected under 35 U.S.C. 112(a) for the inclusion of new matter which was not disclosed in the original application.
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—16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 of the USPTO’s eligibility analysis entails considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter.
Claims 1, 15, and 16 are directed to a method (process), a device (machine or manufacture), and a non-transitory machine-readable storage medium (machine or manufacture), respectively. As such, the claims are directed to statutory categories of invention.
If the claim recites a statutory category of invention, the claim requires further analysis in Step 2A. Step 2A of the 2019 Revised Patent SUBJECT Matter Eligibility Guidance is a two-prong inquiry. In Prong One, examiners evaluate whether the claim recites a judicial exception
Claims 1, 15, and 16 recite the abstract limitations of, or substantially similar to:
“ascertaining, by a map-generation system, a plurality of factors of a road relevant to overtaking for at least one location along the road” (e.g., a mental process);
“ascertaining, by the map-generation system, overtaking-suitability map data based on the plurality of factors relevant to overtaking, wherein the ascertaining of the overtaking-suitability map data includes either or both” (e.g., a mental process);
“scaling the factors relevant to overtaking to a predetermined scaling interval to ascertain scaled factors relevant to overtaking, and ascertaining as part of the overtaking-suitability map data a scaled-factor-based suitability measure of for the at least one location based on the scaled factors relevant to overtaking” (e.g., a mental process and/or mathematical concept); and
“ascertaining respective suitability measures for a plurality of locations on the road, and performing a compensation calculation based on the respective suitability measures to ascertain as part of the overtaking-suitability at-the-at-least-one-leationbaed-on-ascertained-faetrs-relevant-tomap data a continuous overtaking-suitability function that best approximates the respective suitability measures along the road” (e.g., a mental process and/or mathematical concept).
Under the broadest reasonable interpretation, limitations directed the actions such as “ascertaining,” cover performance of the limitations in the mind, or by a human using pen and paper, and therefore recite mental processes. For example, the definition of the word “ascertain,” according to Oxford Languages is “to find something out for certain,” and carries a similar definition as “determine.” Both making determinations, and ascertaining information, are actions which can be performed in a human mind and therefore constitute mental processes. Additionally, and as noted above, the identified mental processes may benefit from the inclusion of mathematical concepts or may constitute mathematical concepts in lieu of a mental process. Both mathematical concepts and mental processes constitute abstract ideas. The mere recitation of generic computing elements (e.g., map-generation system is understood to be computer memory as discussed above) does not take the claim out of the mental process grouping. Thus the claim recites an abstract idea.
If the claim recites a judicial exception (i.e., an abstract idea enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance, a law of nature, or a natural phenomenon), the claim requires further analysis in Prong Two. In Prong Two, examiners evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
Claim 1 recites the additional element of, or substantially similar to:
“a map-generation system” (e.g., directed to generic computer components equivalent to reciting “apply it”);
“entering, by the map-generation system, the overtaking-suitability map data into an overtaking-suitability map layer of a digital road map representing the road, thereby generating updated map data,” (e.g., post-solution activity); and
“providing, by the map-generation system, the updated map data to a vehicle controller of the motor vehicle so as to update the vehicle controller with the overtaking-suitability map layer, wherein the updated vehicle controller is caused, during subsequent operation of the motor vehicle, to determine, based on the overtaking-suitability map data and a current or upcoming position of the motor vehicle along the road, whether to permit, suppress, or recommend an overtaking maneuver.” (e.g., generically recited application equivalent to reciting “apply it.” Notably, this subject matter triggered a rejection under 35 U.S.C. 112(a) for lack of support in the as-filed specification).
Claim 15 recites the additional element of, or substantially similar to:
“a device comprising a processing system that includes at least one processor” (e.g., directed to generic computer components equivalent to reciting “apply it”);
“entering, by the map-generation system, the overtaking-suitability map data into an overtaking-suitability map layer of a digital road map representing the road, thereby generating updated map data,” (e.g., post-solution activity); and
“providing, by the map-generation system, the updated map data to a vehicle controller of the motor vehicle so as to update the vehicle controller with the overtaking-suitability map layer, wherein the updated vehicle controller is caused, during subsequent operation of the motor vehicle, to determine, based on the overtaking-suitability map data and a current or upcoming position of the motor vehicle along the road, whether to permit, suppress, or recommend an overtaking maneuver.” (e.g., generically recited application equivalent to reciting “apply it.” Notably, this subject matter triggered a rejection under 35 U.S.C. 112(a) for lack of support in the as-filed specification).
Claim 16 recites the additional element of, or substantially similar to:
“a non-transitory machine-readable storage medium” (e.g., directed to generic computer components equivalent to reciting “apply it”);
“entering, by the map-generation system, the overtaking-suitability map data into an overtaking-suitability map layer of a digital road map representing the road, thereby generating updated map data,” (e.g., extra-solution activity); and
“providing, by the map-generation system, the updated map data to a vehicle controller of the motor vehicle so as to update the vehicle controller with the overtaking-suitability map layer, wherein the updated vehicle controller is caused, during subsequent operation of the motor vehicle, to determine, based on the overtaking-suitability map data and a current or upcoming position of the motor vehicle along the road, whether to permit, suppress, or recommend an overtaking maneuver.” (e.g., generically recited application equivalent to reciting “apply it.” Notably, this subject matter triggered a rejection under 35 U.S.C. 112(a) for lack of support in the as-filed specification).
Accordingly, 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.
If the additional elements do not integrate the exception into a practical application, then the claim is directed to the recited judicial exception, and requires further analysis under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
The additional elements directed to “a map-generation system”; “a device comprising a processing system that includes at least one processor”; and “a non-transitory machine-readable storage medium,” as identified above in claims 1, 15, and 16, are directed to additional elements which constitute generic computer components. While additional elements are not abstract ideas, additional elements such as generic computer components do not provide for an adequate integration of the judicial exceptions identified above in claims 1, 15 and 16. Regarding the recitation of generic computer components, the MPEP states: “[w]hen determining whether a claim simply recites a judicial exception with the words ‘apply it’ (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners may consider the following… (2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, ‘claiming the improved speed or efficiency inherent with applying the abstract idea on a computer’ does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015).” (MPEP 2106.05(f), Section 2). Accordingly, the generically recited computer components of claims 1, 15 and 16 do not provide for a practical application of the judicial exception because the limitations are equivalent to a mere directive to apply the exception.
As identified above, the additional element which recites “entering, by the map-generation system, the overtaking-suitability map data into an overtaking-suitability map layer of a digital road map representing the road, thereby generating updated map data,” amounts to extra-solution activity. Examiner notes that extra-solution activity which is identified to be “well-understood, routine, and/or conventional,” constitutes insignificant extra-solution activity (e.g., as described in MPEP 2106.05(g)) and cannot provide for an additional element which integrates the judicial exception into a practical application. To this end, the MPEP states “[t]he courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)… iii. Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log); v. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.” (MPEP 2106.05(d), Section II). Under the broadest reasonable interpretation, the limitation “entering, by the map-generation system, the overtaking-suitability map data into an overtaking-suitability map layer of a digital road map representing the road, thereby generating updated map data,” is equivalent transmitting data over a network and/or storing and retrieving data from memory. As such, the identified additional element amounts to insignificant extra-solution activity and does not provide for a practical application of the judicial exception.
Claims 1, 15, and 16 state the limitation “providing/provide, by the map-generation system, the updated map data to a vehicle controller of the motor vehicle so as to update the vehicle controller with the overtaking-suitability map layer, wherein the updated vehicle controller is caused, during subsequent operation of the motor vehicle, to determine, based on the overtaking-suitability map data and a current or upcoming position of the motor vehicle along the road, whether to permit, suppress, or recommend an overtaking maneuver,” which, constitutes a mere directive to apply the judicial exception in a manner which does not provide for a practical application. For example, the limitation directed to adjusting the generically recited parameter is not tied in any specific manner to the claimed judicial exceptions. With respect to limitations which constitutes mere directives to apply the exception (e.g., equivalent to “apply it”) the MPEP states:
“[w]hen determining whether a claim simply recites a judicial exception with the words ‘apply it’ (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners may consider the following: (1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words ‘apply it’. See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more. See Electric Power, 830 F.3d at 1356, 119 USPQ2d at 1743.” (MPEP 2106.05(f)).
Accordingly, the limitations of claims 1, 15, and 16 are merely directed to the idea of a solution or outcome and do not properly integrate the judicial exception into a practical application. Examples of limitations which do properly integrate the recited judicial exception into a practical application include the limitations of Diehr. For example, the MPEP states “[i]n contrast, the additional elements in Diamond v. Diehr as a whole provided eligibility and did not merely recite calculating a cure time using the Arrhenius equation ‘in a rubber molding process’. Instead, the claim in Diehr recited specific limitations such as monitoring the elapsed time since the mold was closed, constantly measuring the temperature in the mold cavity, repetitively calculating a cure time by inputting the measured temperature into the Arrhenius equation, and opening the press automatically when the calculated cure time and the elapsed time are equivalent. 450 U.S. at 179, 209 USPQ at 5, n. 5. These specific limitations act in concert to transform raw, uncured rubber into cured molded rubber. 450 U.S. at 177-78, 209 USPQ at 4.” (MPEP 2106.05(h)). Accordingly, the limitations of Diehr which integrated the abstract idea (e.g., calculations using the Arrhenius equation) into a practical application (e.g., opening the press automatically once the calculated cure time and elapsed time are equivalent) provided a more specific application which was directly tied to the outcome of the judicial exception than that of the instant claims. For example, Diehr did not merely state “providing updated temperature data to the mold to determine how to operate the mold.” Accordingly, the limitations of claims 1, 15, and 16 do not provide for a practical application of the judicial exception because the limitations are equivalent to a mere directive to apply the exception.
Thus, even when viewed as an ordered combination, nothing in the claims add significantly more (i.e., an inventive concept) to the abstract idea. Claims 2—10 and 14 are directed to the types of data utilized in ascertaining the suitability measure which is considered an additional element amounting to extra-solution activity. This data includes a lane factor, a visual range factor, a curvature factor, a speed limit factor, a distance factor, a road width factor, a coefficient of sliding friction factor, a road traffic hazard factor, and surrounding data gathered in real-time. The MPEP states “[b]elow are examples of activities that the courts have found to be insignificant extra-solution activity… Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016).” (MPEP 2106.05(g)). As stated above, limitations directed to insignificant extra-solution activity cannot provide for a practical application of the judicial exception. As such, claims 2—10 and 14 do not function to provide for a practical application of the judicial exception identified in claim 1.
Claim 11 recites the limitation “wherein the factors relevant to overtaking are scaled to a predetermined scaling interval,” which is directed to the mathematical concept of “scaling,” and therefore recites an abstract idea. Since claim 11 itself is directed to an abstract idea without significantly more (e.g., the claim does not recite any additional elements), the claim cannot provide for a practical application of the identified judicial exceptions of claim 1.
Claim 12 recites the limitation “wherein the factors relevant to overtaking are at least partly weighted with an individual weighting factor,” which is directed to the mathematical concept of weighting data and therefore recites an abstract idea. Since claim 12 itself is directed to an abstract idea without significantly more (e.g., the claim does not recite any additional elements), the claim cannot provide for a practical application of the identified judicial exceptions of claim 1.
Claim 13 recites limitations directed to performing “a compensation calculation,” which is inherently directed to a mathematical concept given that it is a calculation. For example, actions such as performing approximations and generating continuous functions are directed to mathematical concepts. Since claim 13 itself is directed to an abstract idea without significantly more (e.g., the claim does not recite any additional elements which have not already been addressed), the claim cannot provide for a practical application of the identified judicial exceptions of claim 1.
Subject Matter Not Rejected Under a Prior Art Rejection
Claims 1—16 do not currently stand rejected under a prior art rejection; however, claims 1—16 are all rejected under both 35 U.S.C. 101 and 35 U.S.C. 112(a). Accordingly, while the claims do not currently have prior art cited against them, the claims contain significant issues and are not in condition for allowance.
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 URSULA NORRIS whose telephone number is (703)756-4731. The examiner can normally be reached Monday to Friday, 7 AM to 4 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TARA SCHIMPF can be reached at 571-270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/U.L.N./Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676
Prosecution Insights