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 .
1. This Office Action is in response to a communication filed on 1/09/2025.
2. This is a Non-Final Office Action on the merit. Claims 12-22 are currently pending and are addressed below.
3. Examiner notes that the fundamentals of the rejection are based on the broadest reasonable interpretation of the claim language. Applicant is kindly invited to consider the reference as a whole. References are to be interpreted as by one of ordinary skill in the art rather than as by a novice. See MPEP 2141. Therefore, the relevant inquiry when interpreting a reference is not what the reference expressly discloses on its face but what the reference would teach or suggest to one of ordinary skill in the art.
Priority
4. Applicant claims a DE application with priority date back to 8/08/2022, this date is considered.
Information Disclosure Statement
5. Applicant filed an IDS on 1/09/2025; it is considered.
Drawing Objection
6. The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention (i.e., the sole drawing shows no test run, and no safety system as claimed). Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d).
Claim interpretations
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.
7. The claims in this application are given their broadest reasonable interpretation (BRI) 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 “...a control device which is configured to carry out a test (see applicant’s claim 12, line 2; claim 13, line 2; claim 14, line 2; claim 16, line 2; claim 21, line 5), 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 (i.e., claim 10, line 6) 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.
8. 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 control device.... configured to carry out the test (see applicant’s claim 21, line 5; claim 13, line 2; claim 14, line 2; claim 16, line 2; claim 21, line 5)
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.
9. 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.
10. If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
11. Dependent claims 15, 17-19 and 22 are objected because they are dependent on their rejected based claims 12, and 21.
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.
12. Independent claims 12, 20, and 21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more (i.e., at most, applicant claims about using a generic computer to practice a mental process).
101 Analysis - Step 1: Claims 12, 20, and 21 are directed to “...a safety system” , a vehicle”, and “a method for carrying out a safety check on a vehicle”; therefore, they are within at least one of the four statutory categories.
101 Analysis - Step 2A, Prong I:
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 follow groups of abstract ideas: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes.
Representative claims 21, and 12 include limitation(s) that recites a method of organizing human activity/an abstract idea (emphasized below):
Applicant claims a method for a safety check on a vehicle, comprising:
- automatically actuating vehicle’s functions for testing by activating a test run; and
- providing a control device in a motor vehicle that is configured to carry out the test run.
As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all." 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 ("“[M]ental processes .. and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same). Accordingly, a method that claims above steps is an abstract idea: performing a safety check for an object/vehicle by pressing a button (e.g., to start a test) on said object/device/vehicle.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitation(s) (underlined) 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, (underlined) when considered as a whole, reflect an improvement in the functioning of using a remote device/computer or an improvement to another technology or technical field, apply or use the above-noted judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, 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 (i.e., merely initiating/running a generic/certain test phase/program/steps on a controller), 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 claimed abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Accordingly, those claims recite at least one abstract idea.
101 Analysis — Step 2A, Prong II
According to the 2019 PEG, the claim is to be analyzed to determine whether the claim, as a whole, integrates the abstract 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 have indicated that additional elements merely using a generic computer/processor to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use (e.g., vehicles) do not integrate a judicial exception into a specific “practical application.”
101 Analysis - Step 2B
Regarding Step 2B of the 2019 PEG, representative 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 element of using a processor to perform the steps amounts to nothing more than applying the exception (e.g., claim 13: preset time to start testing, claim 14: an environment can be in a garage; claim 15: a generic driver’s action/movement/plan ; claim 16: performing a test when an engine is ON; claim 18: actuating a test run with a smart phone (e.g., using generic computer components). Generally applying an exception using a generic computer cannot provide an inventive concept. And as discussed above, the additional limitations discussed above are insignificant extra-solution activities.
The additional limitations of receiving/obtaining data using a communication unit (pending claim 17), are well-understood, routine and conventional activities because the background recites that these claimed activities are all conventional, and the specification does not provide any indication that the processor is anything other than a conventional computer. 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 for a ship is a well-understood, routine, and conventional function when it is claimed in a merely generic manner from the Federal Circuit in Trading Techs. Int'l v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019), and Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017), for example, indicated that the mere pre/post-solution activity is a well understood, routine, and conventional function (see claims 12-22).
Independent claim 12 include insignificant generic components to practice the invention (i.e., using a control device to implemented a process of claim 21), having similar features or having extra non-significant limitations in the claimed bodies, their claimed concept are analyzed as pending claim 21.
13. Dependent claims 13-19, and 22 are rejected under 35 USC § 101 because they are also directed to non-statutory subject matter by incorporating their independent claims’ deficiencies; those claims are also ineligible under 35 USC 101 because they do not include extra significant further for the claimed features.
14. In summary, claims 12--22 are ineligible under 35 USC 101.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
15. Claims 12-21 are rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention: Koeberl et al (DE102020123610.7A- hereafter “Koeberl’610”)
A. Per independent claim 12: Koeberl’610 teaches a safety system for a motor vehicle, comprising: a control device which is configured to carry out a test run (see Koeberl’610 pg. 7, 7th para.) , wherein the test run is configured (see Koeberl’610 pg. 7, 3rd para.) such that, when activated, a plurality of vehicle functions are actuated, in succession and automatically, for testing (see Koeberl’610 pg.2, State of the Art).
B. Per dependent claim 13: Koeberl’610 also teaches a control to automatically start a test (see Koeberl’610 pg. 2, State of the Art).
C. Per dependent claim 14: Koeberl’610 teaches a control device to process information from an environment of the motor vehicle in order to activate the test run (i.e., using a camera or using a manually input information, see Koeberl’610 pg. 3, 6th para., and pg. 4, 3rd para).
D. Per dependent claim 15: Koeberl’610 teaches that information comprises: a position of a driver (a GPS position), and actions of the driver: braking/using infotainment (see Koeberl’610 pg. 4, 1st para., and pg. 7, 3rd para.).
E. Per dependent claim 16: Koeberl’610 teaches a control device to “manually” activate the test run when a driver is present and a readiness of the driver to depart are identified: a “safety”/”engine light for temperature is normal” testing (see Koeberl’610 pg. 14, 2nd para.) .
F. Per dependent claims 17-18: Koeberl’610 teaches a control device comprises a plurality of communication units, including a receiving unit and/or a transmitting unit (i.e., a cell-phone), which are designed to interact in order to activate the test run.. Koeberl’610 teaches a communication unit is assigned to a driver’s cell-phone (see Koeberl’610 pg. 6, 5th para., or see Kammann et al Fig. 1, pg. 11, para. 1 for using a touch sensitive device) .
G. Per dependent claim 19: Koeberl’610 teaches a display that displays a result of the test run (see Koeberl’610 pg. 6, 3rd para.).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 USC. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained. notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary in the art to which the claimed invention pertains. Patentability shall not be negated by the manner m which the invention was made.
16. Claims 20- 22 are rejected under 35 U.S.C. 103 as being unpatentable over Koeberl’610 in view of . Kammann et al (DE102016218584A1).
A. Per claim 20: Koeberl’610 in view of Kammann et al teaches a motor vehicle comprising a safety system (see Kammann et al , Imag (1), and pg. 6, 4th para.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement Koeberl’610 with Kamman et al to improve a motorcycle’s safety by performing a testing to guarantee nothing wrong for using it- this limitation has been successfully practice
B. Per independent claim 21: Koeberl’610 in view of Kaman et al also teaches steps of: automatically actuating a vehicle functions for testing by activating a test run; and providing a control device in a motor vehicle that is configured to carry out the test run (see Koeberl’610 pg.2, State of the Art ; pg. 7, 3rd para., and pg. 7, 7th para.;).
C. Per claim 22: Koeberl’610 also teaches steps of: determining a presence of a driver; determining a driver's intention, including a readiness of the driver to depart; and activating the test run (see Koeberl’610 pg. 14, 2nd para.) .
Conclusion
17. Pending claims 12-22 are rejected.
18.. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Cuong H Nguyen whose telephone number is (571) 272-6759 (email address is cuong.nguyen@uspto.gov). The examiner can normally be reached on M - F: 10:30AM- 6:30PM. Examiner interviews are available via telephone, 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, BENDIDI RACHID can be reached on (571) 272-4896. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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 https//ppair-my.uspto.gov/pair/PrivatePair. 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.
/CUONG H NGUYEN/Primary Examiner, Art Unit 3664