DETAILED CORRESPONDENCE
Priority Status
Foreign priority benefit under 35 U.S.C. 119 (a)-(d) is acknowledged.
Status of Claims
Claim(s) 1-10 is/are examined in this office action.
Notice of 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) or (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) or (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 vehicle data collection unit configured to” (see Claim 8. The Examiner takes the position “configured to” is an alternative linking phrase to “for”; therefore, the recited claim language “unit configured to” is considered equivalent to said non-structural generic placeholder “unit for”.);
“a vehicle fault preliminary diagnosis unit configured to” (see Claim 8. The Examiner takes the position “configured to” is an alternative linking phrase to “for”; therefore, the recited claim language “unit configured to” is considered equivalent to said non-structural generic placeholder “unit for”.);
“a vehicle fault digital twin diagnosis unit configured to” (see Claim 8. The Examiner takes the position “configured to” is an alternative linking phrase to “for”; therefore, the recited claim language “unit configured to” is considered equivalent to said non-structural generic placeholder “unit for”.); and
“a visual presentation unit configured to” (see Claim 8. The Examiner takes the position “configured to” is an alternative linking phrase to “for”; therefore, the recited claim language “unit configured to” is considered equivalent to said non-structural generic placeholder “unit for”.).
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.
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) 10 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.
Claim(s) 10 recite(s) two distinct embodiments (i.e., “A system”; and “… method … of claim 1”) and therefore indefinite. In accordance with MPEP § 2173.05(p) II states “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.” In other words, a single claim must be drawn to either a product or process (but not both) and because a potential competitor of Applicant would not know whether possession alone of the claimed structure constituted infringement, or alternatively, if infringement required the execution of the recited method steps; therefore, the claim(s) is/are indefinite.
Claim Rejections - 35 USC § 112(d) or (pre-AIA ) Fourth Paragraph
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the following, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim(s) 10 is/are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Independent Claims stand on their own without dependency on another claim. The Examiner notes that Applicant has demonstrated their full understanding and ability to properly draft dependent claims based on the presentation of independent Claim 1 tied to “A method” followed by explicit language matching the embodiment of the parent claim found in dependent Claim(s) 2-3 and 7 (i.e., “The method of claim 1”); Claim(s) 4-6 (i.e., “The method of claim 3”). Another example demonstrated by Applicant is the presentation of independent Claim 8 tied to “A system” followed by explicit language matching the embodiment of the parent claim found in dependent Claim(s) 9 (i.e., “The system of claim 8”).
Claim 10 is rejected because Claim(s) 10 is written as an independent-type claim (i.e., “A system”) but it contain two issues: (1) it has explicit language tying dependency on another claim (i.e., “a method for diagnosing vehicle faults using a digital twin of claim 1”), and (2) it recites an embodiment that is not identical to the embodiment of their respective parent claim (i.e., “A method” from Claim 1’s preamble).
The Office’s position is that such claim construction provides a way to avoid paying fees associated with independent claims. The Examiner is not accusing the Applicant of such practice but claims that follow this type of claim construction shall be rejected under 35 USC § 112(d) or (pre-AIA ) Fourth Paragraph until amended into independent form.
Solution: Applicant may cancel the claim(s), amend the claim(s) to place the claim in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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) 8 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) 8 fail(s) Step 1 of the Subject Matter Eligibility (“SME”) Test and therefore directed to non-statutory subject matter and immediately rejected. A product claims (i.e., “A system”) requires some hardware or physical characteristic/features in the claim. Claim(s) 8 reads as computer program per se because it lacks hardware or physical characteristics/features in said claim; however, Claim 8 recites only programmed functions like software. MPEP § 2106.03 provides a particular example “Products that do not have a physical or tangible form, such as information (often referred to as ‘data per se’) or a computer program per se (often referred to as ‘software per se’) when claimed as a product without any structural recitations.”
Judicial Exception 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) 1-10 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. (See MPEP § 2106.)
STEP 1 of the eligibility analysis asks: Is the claim to a process, machine, manufacture or composition of matter?
Yes for Claim(s) 1-10.
STEP 2A PRONG ONE asks does the claim recite an abstract idea, law of nature, or natural phenomenon?
Yes, because Claim(s) 1 recite(s) the following limitation(s):
“performing a preliminary diagnosis of whether the vehicle has a fault based on the collected vehicle sensor data to obtain a preliminary diagnosis result” – (In this step “performing a preliminary diagnosis” is interpreted as evaluating. This step is considered at least one of observations, evaluations, judgments, and opinions performed in the human mind, or by a human using a pen and paper and therefore a Mental Process. See MPEP § 2106.04 (a)(2) III.);
“performing a digital twin diagnosis of a vehicle fault when the preliminary diagnosis result indicates that the vehicle has a fault” – (In this step “performing a digital twin diagnosis” is interpreted as evaluating. This step is considered at least one of observations, evaluations, judgments, and opinions performed in the human mind, or by a human using a pen and paper and therefore a Mental Process. See MPEP § 2106.04 (a)(2) III.);
“determining a real-time vehicle digital twin model M2, the real-time vehicle digital twin model M2 corresponding to an occurrence time T of the fault and indicating an actual state of the vehicle” – (In this step “determining” is interpreted as calculating. This step is considered a Mathematical Concept which “is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations” furthermore, “[I]t is important to note that a mathematical concept need not be expressed in mathematical symbols”. See MPEP § 2106.04 (a)(2) I); and
“determining a location and a fault level of a faulty component based on the initial vehicle digital twin model M1, the occurrence time T of the fault and the real-time vehicle digital twin model M2” – (In this step “determining” is interpreted as calculating. This/These step(s) is/are considered a Mathematical Concept which “is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations” furthermore, “[I]t is important to note that a mathematical concept need not be expressed in mathematical symbols”. See MPEP § 2106.04 (a)(2) I)
Yes, because Claim(s) 8 recite(s) the following limitation(s):
“a vehicle fault preliminary diagnosis unit configured to perform a preliminary diagnosis of whether the vehicle has a fault based on the collected vehicle sensor data to obtain a preliminary diagnosis result” – (This limitation functions as an evaluation step/action. This/These step(s) is/are considered at least one of observations, evaluations, judgments, and opinions performed in the human mind, or by a human using a pen and paper and therefore a Mental Process. See MPEP § 2106.04 (a)(2) III);
“a vehicle fault digital twin diagnosis unit configured to perform a digital twin diagnosis of a vehicle fault” – (This limitation functions as an evaluation step/action. This/These step(s) is/are considered at least one of observations, evaluations, judgments, and opinions performed in the human mind, or by a human using a pen and paper and therefore a Mental Process. See MPEP § 2106.04 (a)(2) III);
“determining a real-time vehicle digital twin model M2, the real-time vehicle digital twin model M2 corresponding to an occurrence time T of the fault and indicating an actual state of the vehicle” – (In this step “determining” is interpreted as calculating. This step is considered a Mathematical Concept which “is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations” furthermore, “[I]t is important to note that a mathematical concept need not be expressed in mathematical symbols”. See MPEP § 2106.04 (a)(2) I);
“determining a location and a fault level of a faulty component based on the initial vehicle digital twin model M1, the occurrence time T of the fault and the real-time vehicle digital twin model M2” – (In this step “determining” is interpreted as calculating. This step is considered a Mathematical Concept which “is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations” furthermore, “[I]t is important to note that a mathematical concept need not be expressed in mathematical symbols”. See MPEP § 2106.04 (a)(2) I); and
“a visual presentation unit configured to generate a visual representation of the fault” – (The limitation functions as a displaying step/action. This step is considered collecting information, analyzing it, and displaying certain results of the collection and analysis. See MPEP § 2106.04 (a)(2) III)
Yes, because Claim 10 repeats the subject matter of Claim 1 and analyzed in like manner.
STEP 2A PRONG TWO asks does the claim recite additional elements that integrate the judicial exception into a practical application?
No, Claim(s) 1 recite(s) the following limitation(s):
“collecting a vehicle data of a vehicle, the vehicle data comprising a vehicle sensor data, a user operating behavior data and a vehicle environment data, the vehicle having an initial vehicle digital twin model M1” – (This step ise considered Mere Data Gathering. See MPEP § 2106.05(g) Insignificant Extra-Solution Activity); and
“storing the collected vehicle data in association with respective generation time stamp and sensor identification codes in a first database DB1 and a second database DB2” – (This step is considered Electronic recordkeeping and/or Storing and retrieving information in memory. See MPEP § 2106.05(d) Well-Understood, Routine, Conventional Activity.)
No, Claim(s) 8 recite(s) the following limitation(s):
“an initial vehicle digital twin model M1” – (This step is considered Selecting a particular data source or type of data to be manipulated. See MPEP § 2106.05(g) Insignificant Extra-Solution Activity);
“a vehicle data collection unit configured to collect a vehicle data of a vehicle, the vehicle data comprising a vehicle sensor data, a user operating behavior data and a vehicle environment data”– (This step is considered Mere Data Gathering. See MPEP § 2106.05(g) Insignificant Extra-Solution Activity); and
“a first database DB1 and a second database DB2 each configured to store the collected vehicle data in association with respective generation time stamp and sensor identification codes” – (This step is considered Electronic recordkeeping and/or Storing and retrieving information in memory. See MPEP § 2106.05(d) Well-Understood, Routine, Conventional Activity.)
No, because Claim 10 repeats the subject matter of Claim 1 and analyzed in like manner.
The above limitations are recited at a high level of generality, i.e., as generic computer functions of collecting and/or processing data. These generic limitations are no more than mere instructions to apply the exception using generic computer components (e.g., “one or more computer processors” from Claim 10; and “a computer-readable memory” from Claim 10). Accordingly, 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. As a result, Claim(s) 1, 8 and 10 is/are directed to the abstract idea.
Additionally, The Examiner refers to The Berkheimer Memorandum5 for submitting more evidence into the prosecution regarding what subject matter is/are well known in the technology. The Berkheimer Memorandum specifies The Examiner shall show one or more of the follow items:
“A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).” See Section III (A) (1).
“A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s).” See Section III (A) (2).
“A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).” See Section III (A) (3).
“A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s).” See Section III (A) (4).
In this particular case, The Examiner provides “A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s)” as required by Section III:
“It is well known in the art to provide a vehicle display screen located within the vehicle.” (US 20130224721 A1)
“Client-Server and network communication is well-known in the art of computers and networking.” (US 20050021745 A1, [0052])
“The electronic control unit 23 comprises a microprocessor including a central processing unit (CPU), a random access memory (RAM), a read-only memory (ROM), an A/D converter, and an input/output interface, all not shown, but well-known in the art.” (US 4741163)
“As is well-known in the art, software is stored on a computer-readable storage medium (including compact disc, computer diskette, and computer memory, etc.) with code, or instructions, which, when read and executed by a computer, causes the computer to perform a process or task.” (US 20120226548 A1, [0020])
“Conventionally, an in-vehicle microphone device mounted on a vehicle interior, for example, a vehicle interior ceiling, is widely known.” (JP 2016105557 A)
STEP 2B asks: Does the claim recite additional elements that amount to significantly more than the judicial exception?
No for Claim(s) 1, 8 and 10. As discussed with respect to Step 2A Prong Two, the additional elements in the claims amount to no more than mere instructions to apply the exception using generic computer components. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using generic computer components cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Therefore, Claim(s) 1, 8 and 10 is/are ineligible.
Dependent Claim(s) 2-7 and 9 are also ineligible because they do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
In summary, Claim(s) 1-10 is/are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Written Authorization Required for Internet Communication
MPEP § 502.03 II, “Without a written authorization by applicant in place, the USPTO will not respond via 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 the USPTO patent electronic filing system, 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).
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/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
5 See https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-20180419.PDF