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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/02/2026 has been entered.
Response to Amendment
Claims 1-4, and 6-7 are currently amended.
Claims 1-7 are currently pending and examined below.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 2024-036169, filed on 03/08/2024.
Contingent Limitation
The Examiner notes that the following contingent limitation:
Claim 4: “suspending the provision of the non-advertisement content and starting a provision of an advertisement content, in response to (a) the determined traveling state indicating that the traveling body has stopped and (b) the determined permission state indicating to permit the suspension.
Under the broadest reasonable interpretation, the above limitation is not required to be performed if the determined travel state does not indicate that the traveling body has stopped or the permission state does not indicate to permit the suspension.
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 1-7 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a nature phenomenon, or an abstract idea) without significantly more.
Step 1:
Claims 1-7 is/are directed towards a statutory category (i.e., a process, machine, manufacture, or composition of matter) (Step 1, Yes).
Step 2A Prong One:
Claim 1 recites (additional elements underlined):
An information processing device comprising:
a display;
a processor, including a position information obtaining section, a first determining section, a second determining section, and a content providing section, wherein the processor is configured to:
obtain, via the position information obtaining section, position information and vehicle information from a controller area network (CAN) associated with a traveling body, the vehicle information including at least one of vehicle speed, acceleration, accelerator pedal operation, brake pedal operation, and steering wheel operation,
determine, via the first determining section, a traveling state of the traveling body indicating whether the traveling body is traveling has stopped, based on changes in the obtained position information and/or the obtained vehicle information; and
determine, via the second determining section, a permission state indicating whether to permit a suspension of provision of a non-advertisement content, based on whether a first time period has elapsed from a start of the provision of the non-advertisement content, wherein the first time period is a timing at which a scene of the non-advertisement content is switched; and
suspend, via the content providing section, the provision of the non-advertisement content and start a provision of an advertisement content through the display, in response to (a) the determined traveling state indicating that the traveling body has stopped and (b) the determined permission state indicating to permit the suspension.
Under the broadest reasonable interpretation, the limitations outlined above that describe or set forth the abstract idea, cover performance of the limitations in the mind but for the recitation of generic computer(s) and/or generic computer component(s). That is, other than reciting the additional elements, nothing in the claim precludes the limitations from practically being performed in the mind. These limitations are considered a mental process because the limitations include an observation, evaluation, judgment, and/or opinion. These limitations are also similar to “collecting information, analyzing it, and displaying certain results of the collection and analysis” and/or “collecting and comparing known information” which were determined to be mental processes in MPEP 2106.04(a)(2)(III)(A). The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer” (see MPEP 2106.04(a)(2)(III)(C)). The mere nominal recitation of the additional elements do not take the claims out of the mental process grouping. Therefore, the claim recite a mental process (Step 2A Prong One, Yes).
The limitations outlined above also describe or set forth an advertising/marketing activity. Advertising/marketing fall within the certain method of organizing human activity enumerated grouping of abstract ideas. The limitations outlined above also describe or set forth a fundamental economic principle or practice because advertising/marketing is related to commerce and economy. The limitations outlined above also describe or set forth a commercial interaction (e.g., advertising, marketing or sales activities or behaviors, business relations). The limitations outlined above also describe or set forth the managing of personal behavior or relationships or interactions between people. Therefore, the claim recites a certain method of organizing human activity (Step 2A Prong One, Yes).
Step 2A Prong Two:
In Step 2A Prong Two, the additional element(s) outlined above are recited at a high level of generality, and under the broadest reasonable interpretation, are generic computer(s) and/or generic computer component(s) that perform generic computer functions. The additional element(s) are merely used as tools, in their ordinary capacity, to perform the abstract idea. The additional element(s) amount adding the words “apply it” with the judicial exception. Merely implementing an abstract idea on generic computer(s) and/or generic computer component(s) does not integrate the judicial exception similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. The Examiner notes that “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent eligible subject matter" (see pp 10-11 of FairWarning IP, LLC. v. Iatric Systems, Inc. (Fed. Cir. 2016)). The additional elements also amount to generally linking the use of the abstract idea to a particular technological environment or field of use (e.g., in a computer environment). The courts have found that simply limiting the use of the abstract idea to a particular environment does not integrate the judicial exception into a practical application. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. There is no indication that the combination of elements improves the functioning of a computer, improves any other technology or technical field, applies or uses the judicial exception to effect a particular treatment or prophylaxis for disease or medical condition, applies the judicial exception with, or by use of a particular machine, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claims as a whole is more than a drafting effort designed to monopolize the exception. Their collective functions merely provide generic computer implementation (Step 2A Prong Two, No).
Step 2B:
In Step 2B, the additional elements also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong Two. The Examiner notes that revised Step 2A Prong Two overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Their collective functions merely provide generic computer implementation (Step 2B, No).
Claim(s) 2-3, 5, and 7 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 1 (i.e., certain methods of organizing human activities and/or mental processes).
Claim 2 recites the additional elements “wherein the processor is further configured to,” “via a third determining section,” “the first determining section,” and “the third determination section.” Claim 3 recites the additional elements “the first determining section” and “the third determining section.” Claim 5 recites the additional elements “A vehicle comprising an information processing device recited in claim 1.” Claim 7 recites the additional elements “from an external server” and “the second determining section.” However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claim 4 recites (additional elements underlined):
A content switching method comprising:
obtaining position information and vehicle information from a controller area network (CAN) associated with a traveling body, the vehicle information including at least one of vehicle speed, acceleration, accelerator pedal operation, brake pedal operation, and steering wheel operation;
determining a traveling state of the traveling body indicating whether the traveling body is traveling or has stopped, based on changes in the obtained position information and/or the obtained vehicle information;
determining a permission state indicating whether to permit a suspension of provision of a non-advertisement content, based on whether a first time period has elapsed from a start of the provision of the non-advertisement content, wherein the first time period is a timing at which a scene of the non-advertisement content is switched; and
suspending the provision of the non-advertisement content and starting a provision of an advertisement content, in response to (a) the determined traveling state indicating that the traveling body has stopped and (b) the determined permission state indicating to permit the suspension.
For the same reasons explained above with respect to claim 1, claim 4 also recites an abstract idea in Step 2A Prong One. For the same reasons explained above with respect to claim 1, claim 4 also does not integrate the judicial exception into a practical application or amount to significantly more.
Claim 6 recites (additional elements underlined):
A non-transitory computer-readable storage medium having a program stored therein, the program causing a computer to execute a process of comprising:
obtaining position information and vehicle information from a controller area network (CAN) associated with a traveling body, the vehicle information including at least one of vehicle speed, acceleration, accelerator pedal operation, brake pedal operation, and steering wheel operation;
determining a traveling state of the traveling body indicating whether the traveling body is traveling or has stopped, based on changes in the obtained position information and/or the obtained vehicle information; and
determining a permission state indicating whether to permit a suspension of provision of a non-advertisement content, based on whether a first time period has elapsed from a start of the provision of the non-advertisement content, wherein the first time period is a timing at which a scene of the non-advertisement content is switched; and
suspending the provision of the non-advertisement content and starting a provision of the advertisement content through a display, in response to (a) the determined traveling state indicating that the traveling body has stopped and (b) the determined permission state indicating to permit the suspension.
For the same reasons explained above with respect to claim 1, claim 6 also recites an abstract idea in Step 2A Prong One. For the same reasons explained above with respect to claim 1, claim 6 also does not integrate the judicial exception into a practical application or amount to significantly more.
Prior Art
After a thorough search on the claims as currently amended, the claims are found to recite novel and non-obvious subject matter. The closest prior art found to date are the following:
Cho et al. (US 2022/0012776 A1) discloses an apparatus and method for using connected vehicles as an advertisement platform.
Honda Motor Co. (JP 2021-039503 A) discloses the concept of determining whether or not a vehicle has stopped, and switching between non-advertisement content and advertisement content.
Kim et al. (US 2016/0140613 A1) discloses an advertisement providing system may include a telematics terminal and a telematics server. The telematics server may include a communication server configured to perform wireless communication with the telematics terminal; a database server including a map database, a traffic light database, an advertisement database, and a user database; and a processing server configured to determine whether a vehicle is in a stopped state based on vehicle location information, and calculate an expected amount of stopped time of the vehicle based on the vehicle location information and information stored in the database server when the vehicle is in the stopped state. The processing server may search the advertisement database for advertisement information that corresponds to the vehicle location and the expected amount of stopped time, and transmit the advertisement information to the telematics terminal.
Han et al. (US 2019/0080356 A1) discloses the concept of displaying advertisements in a vehicle when the vehicle has stopped.
Takanashi et al. (US 2019/0355019) discloses the concept presenting advertisements based on vehicle speed (see ¶ 191).
While the prior art disclose some of the limitations of the claimed invention, the prior art do not disclose or render obvious the following limitations when viewing the claimed invention as a whole: “obtain, via the position information obtaining section, position information and vehicle information from a controller area network (CAN) associated with a traveling body, the vehicle information including at least one of vehicle speed, acceleration, accelerator pedal operation, brake pedal operation, and steering wheel operation, determine, via the first determining section, a traveling state of the traveling body indicating whether the traveling body is traveling has stopped, based on changes in the obtained position information and/or the obtained vehicle information; and determine, via the second determining section, a permission state indicating whether to permit a suspension of provision of a non-advertisement content, based on whether a first time period has elapsed from a start of the provision of the non-advertisement content, wherein the first time period is a timing at which a scene of the non-advertisement content is switched; and suspend, via the content providing section, the provision of the non-advertisement content and start a provision of an advertisement content through the display, in response to (a) the determined traveling state indicating that the traveling body has stopped and (b) the determined permission state indicating to permit the suspension.” Additionally, while each of the individual features may have been known per se, there is no teaching or suggestions absent Applicant’s own disclosure to combine these features in the specific manner claimed other than with impermissible hindsight.
Response to Arguments
Applicant's arguments filed 06/02/2025 have been fully considered but they are not persuasive. In the Remarks, Applicant argues:
Argument: “The Office Action rejects independent claims 1, 4, and 6 for being an abstract idea
because they recite a mental process and advertising which "falls within the certain methods of organizing human activity enumerated grouping of abstract ideas." But these conclusions do not apply to amended claims 1, 4, and 6.”
In response, the Examiner respectfully disagrees. As explained above, the limitations outlined above that describe or set forth the abstract idea, cover performance of the limitations in the mind but for the recitation of generic computer(s) and/or generic computer component(s). That is, other than reciting the additional elements, nothing in the claim precludes the limitations from practically being performed in the mind. These limitations are considered a mental process because the limitations include an observation, evaluation, judgment, and/or opinion. Therefore, the claim recite a mental process (Step 2A Prong One, Yes).
The limitations outlined above also describe or set forth an advertising/marketing activity. Advertising/marketing fall within the certain method of organizing human activity enumerated grouping of abstract ideas. The limitations outlined above also describe or set forth a fundamental economic principle or practice because advertising/marketing is related to commerce and economy. The limitations outlined above also describe or set forth a commercial interaction (e.g., advertising, marketing or sales activities or behaviors, business relations). The limitations outlined above also describe or set forth the managing of personal behavior or relationships or interactions between people. Therefore, the claim recites a certain method of organizing human activity (Step 2A Prong One, Yes).
Argument: “The amended claims are not directed to an abstract idea. For example, the amended claims are factually analogous to the claims held as patent-eligible in Diamond v. Diehr, 450 U.S. 175 (1981).”
In response, the Examiner respectfully disagrees. Unlike the claimed invention in Diamond v. Diehr in which the claimed invention provided an improvement to another technology or technical field by reducing under and over curing problems common in the art, here the alleged improvements are entirely in the realm of the abstract idea (i.e., an improvement to advertising). The Examiner notes that “the judicial exception alone cannot provide the improvement” (MPEP 2106.05(a)). Similar to SAP America Inc. v. InvestPic (Fed. Cir. 2018), the advance here lies entirely in the realm of the abstract idea (i.e., improvement to advertising), with no plausibly alleged innovation in the non-abstract application realm.
Argument: “Particularly, the claims are further integrated into a patent-eligible technical application. For example, the claims recite the concrete control of the operation of a real-world machine or device. The "suspend ... and start ... in response to ..." operation in the amended claims is fundamentally different from merely outputting data to a screen. It is a concrete operation that dynamically changes the state of a physical display under specific conditions. Furthermore, in the amended claims, "the first time period" is defined as the "timing at which a scene of the non- advertisement content is switched." This clarifies that "the first time period" is not merely a duration of time, but a specific event rooted in the technical structure of a video data stream- namely, the moment a scene changes. When this limitation is combined with the subsequent "suspend ... and start ... in response to ..." limitation, the "suspension rule" becomes directly tied to the technical operation of video data processing. Moreover, the amendments further clarify the overall configuration of the device that advantageously allows for the display of appropriate content (e.g., non-advertisement content or advertisement content) without further calculation or prior knowledge of when a vehicle stops. See, e.g., paragraphs [0032], [0034], and [0035] of the Specification as filed. This reduction in calculation and data requirements reduces processing requirements, such that speed, efficiency, and performance of the underlying technical components would be achieved. See, e.g., paragraphs [0032], [0034], and [0035] of the Specification as filed. Also, the "suspend ... and start ... in response to ..." control feature is performed to solve a technical problem of how to effectively deliver advertisements in the unique environment of a moving vehicle without degrading the passenger's viewing experience. The specification explicitly describes in paragraph [0030] that this control can "prevent an uncomfortable feeling and/or a strange feeling from being given to the passenger of the vehicle 30." Applicant submits that this is a concrete improvement in the technical field of coordinated operation between a computer and a display. Moreover, because "the first time period" is defined as the "timing at which a scene of the non-advertisement content is switched," the amended claims are shown to possess a "content-aware" functionality that actively analyzes the content being played, rather than simply running a timer. This recites an improved operation of a computer, tailored for a specific task (i.e., smooth content switching), that goes beyond the functionality of a generic computer.”
In response, the Examiner respectfully disagrees. First, “eligibility should not be evaluated based on whether the claim recites a ‘useful, concrete, and tangible result” (MPEP 2106(I)).
Second, the specification is silent with regard to the claimed invention reducing processing requirements such as speed, efficiency, and performance of the underlying technical components, or improving the function of a computer.
Third, delivering advertisements without degrading the passenger’s viewing experience is not a technical problem, but a business problem. Unlike in DDR in which the claimed invention solved the business challenge of retaining website visitors that is particular to the Internet, here the claimed invention amounts to merely reciting the performance of a business practice along with the requirement to perform it on the Internet. The claimed invention here is not necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.
Argument: “The Office Action also asserts that the combination of elements within the claims fail to recite significantly more than an abstract idea for similar reasons as those used with respect to the analysis of the individual elements. But the claims have been amended to be allowable for the reasons discussed above. Additionally, even assuming, arguendo, that amended claims 1, 4, and 6 were involved with an abstract idea, the claims nevertheless include an "inventive concept" sufficient to confer patent eligibility. Specifically, the amended claims recite a specific ordered combination that is non-obvious and not found in the prior art as evidenced by the fact that the Office Action concedes that "the claims currently overcome prior art." Particularly, the amended claims combine conditions based on two distinct and unrelated information sources: (i) a determination of the physical traveling state of a moving body (first determining section); and (ii) a determination of a structural break in the content (scene switch timing) (second determining section), and switches the content only when both conditions are met. This specific combination, as described in Paragraphs [0030] and [0032] of the specification, yields a specific technical effect undisclosed by any prior art, i.e., improving the passenger's experience while effectively utilizing the time when the vehicle is stopped.”
In response, the Examiner respectfully disagrees. First, “the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possible patentable subject matter” (MPEP 2106.05(I)).
Second, the Office action does not take the position that any of the additional elements amount to adding insignificant extra-solution activity in Step 2A Prong Two that would warrant an analysis in Step 2B to determine that the additional element also amounts to simply appending well-understood, routine, and conventional activity. The Examiner notes that revised Step 2A Prong Two overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Their collective functions merely provide generic computer implementation (Step 2B, No).
Unlike in Bascom in which the particular arrangement of known elements provided a technical improvement over prior art ways of filtering content, here looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer, improves any other technology or technical field, applies or uses the judicial exception to effect a particular treatment or prophylaxis for disease or medical condition, applies the judicial exception with, or by use of a particular machine, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claims as a whole is more than a drafting effort designed to monopolize the exception. Their collective functions merely provide generic computer implementation. The claims at issue do not require any non-conventional computer, network or display components, or even a non-conventional and non-generic arrangement of known conventional pieces. The claims at issue merely call for the performance of the claimed invention on a set of generic computer components and display devices. Using a computer to take data, compute a result, and return the result to a user amounts to electronic data query and retrieval—some of the most basic functions of a computer.
Therefore, the claims do not integrate the judicial exception into a practical application, nor do they amount to significantly more.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAM REFAI whose telephone number is (313)446-4822. The examiner can normally be reached M-F 9:00am-6:00pm.
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/SAM REFAI/Primary Examiner, Art Unit 3621
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