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 the Claims
This FINAL action is in response to Applicant's amendment of 03 August 2026. Claims 1 and 3-20 are pending and have been considered as follows. Claim 2 has been cancelled.
Response to Argument
Applicant's amendments and arguments with respect to the rejection of claims 2-5, 11-12 and 17 under 35 USC 112(b) as set forth in the office action of 14 May 2026 have been considered and are persuasive. Therefore, the rejection of claims 1-5 and 11-20 under 35 USC 112(b) as set forth in the office action of 14 May 2026 has been withdrawn. Examiner notes that the rejection for claim 3 is maintained for the term “temporal variance value of the prediction error” and more details can be seen in the rejection below.
Applicant’s amendments and/or arguments with respect to the rejection of Claims 1-20 under 35 USC 101 as set forth in the office action of 14 May 2026 have been considered and are NOT persuasive. Specifically, Applicant argues:
In the Office Action, claims 1-14 and 18-20 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Specifically, the Office Action asserts that the claims are directed to a Mental Process (e.g., concepts performed in the human mind). (See Office Action at page 5). The Office Action further asserts that the claims do not integrate the abstract idea into a practical application, and do not include additional elements which amount to significantly more than the abstract idea. (See Office Action at pages 6-9).
By the present paper, without acquiescing in the propriety of the rejection, the claims are amended to incorporate a feature of dependent claim 15, which is not rejected under 35 U.S.C. § 101. At least in view of the amendments, it is submitted that the grounds of the above-captioned rejection at least no longer exist.
Revised Step 2A
Step 2A of the United States Patent & Trademark Office's current patent-subject-matter- eligibility test requires a determination of whether a claim is "directed to" an abstract idea. Under the United States Patent & Trademark Office 2019 Guidelines, revised Step 2A requires the following determinations: (Prong 1) whether the claim recites a judicial exception; and (Prong 2) whether a recited judicial exception is integrated into a practical application. (Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 4, page 50 (January 7, 2019)). A claim is not "directed to" a judicial exception if the judicial exception "is integrated into a practical application of the judicial exception" under Prong 2. (Id. at 50).
Prong 1 of Revised Step 2A
The Office Action asserts that the claims are directed to a Mental Process. In this regard, the Mental Process grouping is characterized by concepts that can be performed in the human mind, or by a human using pen and paper.
As set forth by the Memorandum of August 5, 2025, the Mental Process grouping should not be expanded to encompass claim features that cannot practically be performed in the human mind.
In the instant matter, independent claims 1, 19, and 20 (i.e., all independent claims) are amended to generally recite that: the processor outputs, to an on-vehicle electronic controller that controls the vehicle, operation information that is associated with the area (in which the prediction error is larger than a predetermined threshold among a plurality of areas in the image) and gives an instruction on an operation of the vehicle; and the on-vehicle electronic controller is configured to cause the vehicle to perform the operation based on the operation information. Such a feature is generally recited by original claim 15, which is not rejected under 35 U.S.C. § 101. Applicant respectfully submits that the "human mind" cannot "reasonably and practically" perform such feature, as now recited by amended independent claims 1, 19, and 20.
Thus, for at least these reasons, it is submitted that amended independent claims 1, 19, and 20, as well as the claims dependent therefrom, are not "directed to" any Mental Process under Prong 1 of Revised Step 2A.
Prong 2 of Revised Step 2A
Additionally to and independently of the above, should the claims be found to be "directed to" an abstract idea under Prong 1 of Revised Step 2A (which Applicant respectfully submits they are not), Applicant submits that the claims would necessarily incorporate such recited judicial exception (if any) into a practical application thereof. That is, the U.S. Patent and Trademark Office has specifically indicated that the following may be indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field. See MPEP2106.05(a).
In the instant matter, it is submitted that the claims integrate any judicial exception to which the claims may be directed into such practical application thereof under Prong 2 of revised Step 2A.
For example, the features of the amended independent claims extract an area in which the prediction error is larger than a predetermined threshold among a plurality of areas in the image, and estimate one or more states in which the area is at least one of biased from a center of the plurality of areas, concentrated on a part of the plurality of areas, or dispersed throughout. The Office Action appears to acknowledge that such features are not disclosed or rendered obvious by the prior art, and thus, it is submitted that such features improve the technical field. (See Office Action at page 25).
Accordingly, it is submitted that the amended independent claims integrate any abstract idea to which the claims may be directed into a practical application and/or include features which amount to "significantly more" than any recited abstract idea.
In view of the above, it is submitted that the amended independent claims of the present application (as well as the claim dependent therefrom) are not "directed to" any judicial exception, include additional features which would amount to a practical application of any such judicial exception, and/or include features which amount to "significantly more" than any such judicial exception. Thus, the claims are submitted to comprise patent-eligible subject matter. As such, it is submitted that the grounds of the above-captioned rejection at least no longer exist, and it is requested that the rejection be withdrawn in the next Official communication. Allowable Subject Matter Page 25 of the Office Action indicates that claim 2 contains allowable subject matter and would be allowable if rewritten in independent form to incorporate the features of the base claim and any intervening claims.
By the present paper, base independent claim 1 is amended to incorporate the features of claim 2, with no intervening claim existing (and with claim 2 being canceled). Accordingly, it is submitted that claim 2 has effectively been rewritten in independent form as amended independent claim 1. As a result, it is submitted that amended independent claim 1 is in condition for allowance in view of the indication on page 25 of the Office Action.
Moreover, independent claims 19 and 20 (which are submitted to be system and method claims which generally recite similar features as independent claim 1) are also amended to incorporate the features of dependent claim 2. Accordingly, it is similarly submitted that amended independent claims 19 and 20 are also in condition for allowance in view of the indication on page 25 of the Office Action.
Lastly, since each of dependent claims 3-18 (claim 2 being canceled) depends directly or indirectly from amended independent claim 1, which is in condition for allowance for the reasons discussed above, these claims are also submitted to be in condition for allowance in view of their dependencies and further combinations of recited features.
In view of the above, it is respectfully submitted that each and every pending claim of the present application (i.e., claims 1 and 3-20) is in condition for allowance
The Examiners Response:
Examiner has carefully considered Applicant’s amendments and arguments and respectfully disagrees. Regarding the claimed invention, the claims as of right now merely have steps which acquire information from vehicle sensors for use in mental processing steps such as calculating and estimating. See MPEP 2106.04(a)(2), a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016).
Furthermore, the addition of an electronic device (processor) that performs the recited mental steps cannot transform a patent-ineligible abstract idea into a patent-eligible invention, see MPEP 2106.04(a)(2), Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer"). Mental processes recited in claims that require computers are explained further below with respect to point C.…In contrast, claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include: a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016).
In addition, the currently amended limitation of “the on-vehicle electronic controller is configured to cause the vehicle to perform the operation based on the operation information” under broadest reasonable interpretation can be interpreted as extra-solution activity recited at a high level of generality and therefore not sufficient to integrate into a practical application. The current claim language does not specify what vehicle operation would occur and thus it could be interpreted as broadly as altering a vehicle screen, changing a display output, etc... Examiner suggests clarifying that the operation is defined to show an actual control of the vehicle in either its speed, braking, acceleration or trajectory to show a transformation of a particular article to a different state.
Finally, improving the abstract idea is not enough to integrate the abstract idea into a practical application, see Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a *new* abstract idea is still an abstract idea") (emphasis in original)….even if the steps are groundbreaking, innovative, or brilliant, the improvement is to the abstract idea rather than to computers or technology. See Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); accord SAP Am., 898 F.3d at 1163 (“No matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm. An advance of that nature is ineligible for patenting.”). As such, even in combination, these additional elements, under broadest reasonable interpretation, do not integrate the abstract idea into practical application because they do not impose any meaningful limitations on practicing the abstract idea.
Applicant’s amendments and/or arguments with respect to the rejection of Claims 1-20 under 35 USC 103 as set forth in the office action of 14 May 2026 have been considered and are persuasive. Therefore, the rejection of claims 1-20 under 35 USC 103 as set forth in the office action of 14 May 2026 has been withdrawn.
Claim Rejections - 35 USC § 112
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 3 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 3, it is unclear to the examiner what is meant by “to extract a second area in which a temporal variance value of the prediction error is larger than a second predetermined threshold among a plurality of areas of a temporally continuous image group”. The specification does not go into detail on a temporal variance value of the prediction error, instead from what the specification is saying, it seems the variance value would be separate from the prediction error as seen in [0060] “The output control unit 130 of the driving assistance apparatus 10 determines an area to which the attention of the driver is to be called or the like according to the attention state of the driver in each of the areas. That is, when it is estimated that the attention state of the driver is in an inappropriate state due to a bias or the like in the attention state of the driver based on the values of the prediction errors or the variance value, it is considered that there is an area to which the attention of the driver is little. Therefore, the output control unit 130 extracts an area estimated to attract little attention of the driver as an area to which it is necessary to call the attention of the driver or an area to which the attention needs to be paid to return the attention of the driver to an appropriate state.” The specification does not mention the term temporal and does not seem to link a temporal variance value to a prediction error. Examiner will interpret this limitation as the variance value being separate from the prediction error.
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 1-14 and 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
101 Analysis – Step 1
Claim 1 is directed to an apparatus, claim 19 is directed to a system and claim 20 is directed to a method. Therefore, claims 1, 19 and 20 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.
Independent claim 1 includes limitations that recite an abstract idea (emphasized below) and will be used as a representative claim for the remainder of the 101 rejection. The other analogous claims 19 and 20 are rejected for the same reasons as the representative claim 1 as discussed here. Claim 1 recites:
A driving assistance apparatus, comprising: a memory; and a processor coupled to the memory, and configured to:
calculate a prediction error that is a difference between a predicted image and an actual image, the predicted image being predicted from an image in a traveling direction of a vehicle captured by a vehicle exterior camera that captures a periphery of the vehicle, an actual situation being captured in the actual image;
estimate an attention state of a driver, based on the prediction error;
and output driving assistance information for prompting at least one of the attention state, a behavior change, or a consciousness change in relation to a driving manipulation, for driving at a time of estimating the attention state, based on the attention state,
wherein the processor is further configured to extract an area in which the prediction error is larger than a predetermined threshold among a plurality of areas in the image,
and estimates one or more attention states in which the area is at least one of biased from a center of the plurality of areas, concentrated on a part of the plurality of areas, or dispersed throughout,
the processor is further configured to output, to an on-vehicle electronic controller that controls the vehicle, operation information that is associated with the area and give an instruction on an operation of the vehicle,
and the on-vehicle electronic controller is configured to cause the vehicle to perform the operation based on the operation information.
The examiner submits that the foregoing bolded limitation(s) constitute a “mental process” because under its broadest reasonable interpretation, the claim covers performance of the limitation in the human mind. For example, “calculate …”, “estimate …” and “extract …” all the various data in the context of this claim encompasses a person looking at data collected (received, detected, etc.) and forming a simple judgement (determination, analysis, comparison, etc.) either mentally or using a pen and paper. Accordingly, the claim recites at least one abstract idea. The Examiner notes that under MPEP 2106.04(a)(2)(III), the courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). 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).
101 Analysis – Step 2A, Prong II
Regarding Prong II of the Step 2A analysis in the 2019 PEG, the claims are 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 computer 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 do not integrate a judicial exception into a “practical application.”
In the present case, the additional limitations beyond the above-noted abstract idea are as follows (where the underlined portions are the “additional limitations” while the bolded portions continue to represent the “abstract idea”):
A driving assistance apparatus, comprising: a memory; and a processor coupled to the memory, and configured to:
calculate a prediction error that is a difference between a predicted image and an actual image, the predicted image being predicted from an image in a traveling direction of a vehicle captured by a vehicle exterior camera that captures a periphery of the vehicle, an actual situation being captured in the actual image;
estimate an attention state of a driver, based on the prediction error;
and output driving assistance information for prompting at least one of the attention state, a behavior change, or a consciousness change in relation to a driving manipulation, for driving at a time of estimating the attention state, based on the attention state,
wherein the processor is further configured to extract an area in which the prediction error is larger than a predetermined threshold among a plurality of areas in the image,
and estimates one or more attention states in which the area is at least one of biased from a center of the plurality of areas, concentrated on a part of the plurality of areas, or dispersed throughout,
the processor is further configured to output, to an on-vehicle electronic controller that controls the vehicle, operation information that is associated with the area and give an instruction on an operation of the vehicle,
and the on-vehicle electronic controller is configured to cause the vehicle to perform the operation based on the operation information.
For the following reason(s), the examiner submits that the above identified additional limitations do not integrate the above-noted abstract idea into a practical application.
Regarding the additional limitations above, the examiner submits that these limitations are insignificant extra-solution activities that merely use a computer (processor) to perform the process. In particular, the capturing of images using sensor systems is recited at a high level of generality (i.e. as a general means of receiving information for use in the calculate and other steps), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The outputting and causing steps are recited at a high level of generality and amounts to mere post solution action, which is a form of insignificant extra-solution activity. Lastly, claims 1 and 19 further recite “A driving assistance apparatus, comprising: a memory; and a processor coupled to the memory, and configured to”, “on-vehicle electronic controller” and “A driving assistance system comprising: a memory; and a processor coupled to the memory, and configured to” merely describes how to generally “apply” the otherwise mental judgements in a generic or general purpose vehicle control environment. See Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”). The device(s) and processor(s) are recited at a high level of generality and merely automates the steps.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitation(s) 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, when considered as a whole, reflect an improvement in the functioning of a 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, 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 abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
101 Analysis – Step 2B
Regarding Step 2B of the 2019 PEG, 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 using a generic computer component. Generally applying an exception using a generic computer component cannot provide an inventive concept. And as discussed above, the additional limitations discussed above are insignificant extra-solution activities.
The additional limitation of outputting information is a well-understood, routine and conventional activities 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 over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner. Hence, the claim is not patent eligible.
Dependent claims 3-14 do not recite any further limitations that cause the claims to be patent eligible. Rather, the limitations of dependent claims are directed toward additional aspects of the judicial exception and/or additional elements that do not integrate the judicial exception into a practical application. The dependent claims listed above merely are defining terms or have additional steps such as “extract”, “estimates, and “output”. Therefore, dependent claims 3-14 are not patent eligible.
Therefore, claims 1, 3-14 and 18-20 are ineligible under 35 USC §101.
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 extension fee 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.
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/MOISES GASCA ALVA/Examiner, Art Unit 3667
/FARIS S ALMATRAHI/Supervisory Patent Examiner, Art Unit 3667
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