DETAILED CORRESPONDENCE
Response to Arguments
§ 101: Applicant traverses the 101 rejection but does not make specific remarks to a particular claim. In response, The Examiner finds the claims continue to fail the 101 subject matter eligibility test. The Examiner provides one specific example, in Claim 1, the “detect” and “determine” steps are explained as observation and a combination of observation and evaluation, respectively, which are classified as mental processes. The last step limitation in Claim 1 is directed to the following action “transmit a diagnostic message”; in other words, send a message. The latter part of the limitation is “the diagnostic message including device information …, and including default information, …” which describes the contents (i.e., “including device information… and including default information”) contained within said message. The action itself is sending a message and this is what The Examiner is focused on for “transmit a diagnostic message” to another party/entity. The Examiner finds the last limitation falls under “Receiving or transmitting data over a network” which according to MPEP § 2106.05(d) is a Well-Understood, Routine, Conventional Activity. Based on the analysis process, the rejection is maintained.
§ 112(B) or (pre-AIA ) Second Paragraph: This rejection from the prior office action is withdrawn.
§ 102/103: The prior art rejection(s) from the prior office action is/are withdrawn.
Status of Claims
Claim(s) 1-20 is/are examined in this office action.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-20 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) 1-20.
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):
“detect, during booting, a fault with the device” – (In this step, “detect” is interpreted as observe. 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.); and
“determine whether information associated with the device is stored in a shared memory of a machine incorporating the device” – (In this step, “determine” is interpreted as a combination of observe and evaluate. 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.)
Yes, because Claim 8 recite(s) the following limitation(s):
“detecting a fault in a device of machine during booting” – (In this step, “detecting” is interpreted as observing. 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.); and
“determining whether device information is stored in a shared memory of the machine” – (In this step, “determining” is interpreted as a combination of observing and 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.)
Yes, because Claim(s) 16 recite(s) the following limitation(s):
“detect, during booting of the device, a fault with the device” – (In this step, “detect” is interpreted as observe. 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.); and
“determine whether device information associated with the device is stored in the shared memory” (In this step, “determine” is interpreted as a combination of observe and evaluate. 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.)
STEP 2A PRONG TWO asks does the claim recite additional elements that integrate the judicial exception into a practical application?
No, because Claim(s) 1 recite(s) the following limitation(s):
“transmit a diagnostic message to a diagnostic tool …” – (This/These step(s) is/are considered Receiving or transmitting data over a network. See MPEP § 2106.05(d) Well-Understood, Routine, Conventional Activity.)
No, because Claim 8 recite(s) the following limitation(s):
“populating a diagnostic message with the device information from the shared memory, when available” – (In this step, “populating” is interpreted as gathering. This/These step(s) is/are considered obtaining Mere Data Gathering and/or Storing and retrieving information in memory. See MPEP § 2106.05(g) Insignificant Extra-Solution Activity and/or MPEP § 2106.05(d) Well-Understood, Routine, Conventional Activity.);
“populating the diagnostic message with default information when device information is available in the shared memory” – (In this step, “populating” is interpreted as gathering. This/These step(s) is/are considered obtaining Mere Data Gathering and/or Storing and retrieving information in memory. See MPEP § 2106.05(g) Insignificant Extra-Solution Activity and/or MPEP § 2106.05(d) Well-Understood, Routine, Conventional Activity.); and
“transmitting the diagnostic message to a diagnostic too” – (This/These step(s) is/are considered Receiving or transmitting data over a network. See MPEP § 2106.05(d) Well-Understood, Routine, Conventional Activity.)
No, because Claim(s) 16 recites the following limitation(s):
“populate the shared memory with device information respectively associated with one or more components of the machine” – (In this step, “populate” is interpreted as gathering. This/These step(s) is/are considered obtaining Mere Data Gathering and/or Storing and retrieving information in memory. See MPEP § 2106.05(g) Insignificant Extra-Solution Activity and/or MPEP § 2106.05(d) Well-Understood, Routine, Conventional Activity.); and
“generate a diagnostic message, the diagnostic message including the device information from the shared memory, when available, and including default information, when the device information associated with the device is not stored in the shared memory” – (This/These step(s) is/are considered obtaining Requiring the use of software to tailor information and provide it to the user on a generic computer. See MPEP § 2106.05(f) Mere Instructions To Apply An Exception.)
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 computing hardware components (e.g., “a controller coupled to a memory storing computer-executable instructions” from Claim 1; “shared memory” from Claim 16; and “at least one processor coupled to a computer-readable storage medium storing instructions that configure the at least one processor to” from Claim 16). 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 16 is/are directed to the abstract idea.
Additionally, The Examiner refers to The Berkheimer Memorandum1 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 16. 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 16 is/are ineligible.
Dependent Claim(s) 2-7, 9-15 and 17-20 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) 1-20 is/are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
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 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.
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 See https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-20180419.PDF
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