The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION.
Claims 21-40 are pending and examined. Claims 1-20 are cancelled. Claims 21-40 are new.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over the following patents since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent.
claims 1-19 of US Patent 12300113,
claims 1-20 of US Patent 11276301,
claims 1-22 of US Patent 10453338,
claims 1-20 of US Patent 10360794,
claims 1-20 of US Patent 10089868,
claims 1-21 of US Patent 9836962.
Although the conflicting claims are not identical, they are not patentably distinct from each other because they disclose an apparatus of using telematics data at a computing device carried by a first vehicle, comprising: receiving, by the computing device, telematics data associated with operation of a second vehicle; identifying, by the computing device and based upon the telematics data, a location of a particular traffic event; determining, by the computing device, that the first vehicle is traveling to a destination along a first route that includes the location; and based on determining that the first vehicle is traveling along the first route: determining, by the computing device, a second route extending from proximate a current location of the first vehicle to the destination, wherein the second route avoids the location, generating, by the computing device, an instruction associated with the second route, and providing, by the computing device, the instruction to the first vehicle, the instruction causing an automatic steering mechanism of the first vehicle to change a direction of travel of the first vehicle such that the first vehicle travels from the first route to the second route.
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
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 21-40 are rejected under 35 U.S.C. §101 because the claimed invention is not directed to patent eligible subject matter.
Based upon consideration of all of the relevant factors with respect to the claim as a whole, the claim is determined to be directed to an abstract idea. The rationale for this determination is explained below:
When considering subject matter eligibility under 35 U.S.C. § 101 under the 2019 Revised Patent Subject Matter Eligibility Guidance, the Office is charged with determining whether the scope of the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter (Step 1).
If the claim falls within one of the statutory categories (Step 1), the Office must then determine the two-prong inquiry for Step 2A whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, or abstract idea), and if so, whether the claim is integrated into a practical application of the exception.
Claims 21-40 are rejected under 35 U.S.C. 101 because independent claim 9 is rejected under 35 USC §101. The claimed invention is directed to a method, which is one of the statutory categories of invention (Step 1: Yes), and independent claims 21, 31, and 37 are directed to a method, system, and apparatus, which are statutory categories of invention (Step 1: Yes).
The claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea). The abstract idea falls under “Mental Processes” Grouping. The independent claims and the other claims recite receiving telematics data, identifying a location, determining a first route, generating a second route, and providing instructions to modify operation of at least one component. The limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of “a computing device”. That is, other than reciting “by the omputing device” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “by the computing device” language, the claim encompasses a person looking at data collected and forming a simple judgement, or by a human using a pen and paper. The mere nominal recitation of by a device does not take the claim limitations out of the mental process grouping. Thus, the claim recites a mental process. (Step 2A – Prong 1: Judicial Exception Recited: Yes).
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. The limitation of receiving, identifying, determining, generating, and providing as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “a computing device” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “by the computing device” language, receiving, identifying, determining, generating, and providing in the context of this claim encompasses the user mental activity in operating an equipment, looking out at the environment and forming decision in the mind. (Step 2A, Prong 1: Judicial exception – Yes).
The claim is directed to the abstract idea (Step 2A—Prong 2: Practical Application?: No)
As discussed with respect to Step 2A Prong Two, the additional elements in the claim amount to no more than insignificant extra-solution activity.
Under the 2019 PEG, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B. Here, the communicating steps were considered to be extra-solution activity in Step 2A, and thus they are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field. The background discloses that collecting data of a vehicle is well known ([0003]). 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 (as it is here). Further, 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 displaying of data is a well understood, routine, and conventional function. Accordingly, a conclusion that the collecting step is well-understood, routine, conventional activity is supported under Berkheimer. The claim is ineligible (Step 2B: Inventive Concept?: No).
Analysis for Dependent Claims 22-30, 32-36, and 38-40:
Step 1: Determining if the claim(s) are directed a statutory class of invention (i.e., process, machine, manufacture, or composition of matter).
Claims 22-30 are directed to “a method”. The claim is directed to a process, which is a statutory category. (Step 1: yes)
Claims 32-36 are directed to “a system”. The claim is directed to a machine, which is a statutory category. (Step 1: yes)
Claims 38-40 are directed to “a tangible non-transitory computer readable medium. The claim is directed to a manufacture, which is a statutory category. (Step 1: yes)
Step 2A Prong One: Determining if the claim(s) recite a judicial exception (e.g., mathematical concepts, mental processes, certain methods of organizing human activity, fundamental economic practices, and “an idea of itself”.
Claims 22-30 recite additional limitations directed to a mental process. The same analysis of Step 2A Prong One for claim 21 applies. Claims 22-30 are directed to the judicial exception of a mental process.
Claims 32-36 recite additional limitations directed to a mental process. The same analysis of Step 2A Prong One for claim 31 applies. Claims 32-36 are directed to the judicial exception of a mental process.
Claims 38-40 recite additional limitations directed to a mental process. The same analysis of Step 2A Prong One for claim 37 applies. Claims 38-40 are directed to the judicial exception of a mental process.
Step 2A Prong Two: Determining if additional limitations within the claim(s) integrate the judicial exception into a practical application.
Claims 22-30 recite additional limitations, which viewed both individually and in combination, fail to integrate the judicial exception into a practical application. The same analysis of Step 2A Prong Two for claim 21 applies. Claims 22-30 are not integrated into a practical application.
Claims 32-36 recite additional limitations, which viewed both individually and in combination, fail to integrate the judicial exception into a practical application. The same analysis of Step 2A Prong Two for claim 31 applies. Claims 32-36 are not integrated into a practical application.
Claims 38-40 recite additional limitations, which viewed both individually and in combination, fail to integrate the judicial exception into a practical application. The same analysis of Step 2A Prong Two for claim 37 applies. Claims 38-40 are not integrated into a practical application.
Step 2B: Determining if the additional elements, taken individually and in combination, do not result in the claim, as a whole, amounting to significantly more than the judicial exception?
The additional elements in claims 22-30 fail to recite any additional elements, viewed both individually and as a whole, that amount to significantly more than the judicial exception. The same analysis applies in this step 2B as discussed in Step 2A Prong Two (see independent and dependent claim analysis). Claims 22-30 fail to claim anything significantly more than the judicial exception.
The additional elements in claims 32-36 fail to recite any additional elements, viewed both individually and as a whole, that amount to significantly more than the judicial exception. The same analysis applies in this step 2B as discussed in Step 2A Prong Two (see independent and dependent claim analysis). Claims 32-36 fail to claim anything significantly more than the judicial exception.
The additional elements in claims 38-40 fail to recite any additional elements, viewed both individually and as a whole, that amount to significantly more than the judicial exception. The same analysis applies in this step 2B as discussed in Step 2A Prong Two (see independent and dependent claim analysis). Claims 38-40 fail to claim anything significantly more than the judicial exception.
Conclusion:
Dependent claims 22-30, 32-36, and 38-40 do not include any other additional elements that are sufficient to amount to significantly more than the judicial exception. Therefore, the claims 21-40 are rejected under 35 U.S.C. §101 as being directed to non-statutory subject matter.
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.
Claims 28, 36 and 38 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 28, 36 and 38 are rejected because “extreme weather” as recited is unclear because extreme weather lacks objective standard. Appropriate correction is required.
Notice re prior art available under both pre-AIA and 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 for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection.
Claim Rejections - 35 USC §102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 21-23, and 25-40 are rejected under AIA 35 U.S.C. §102(a)(2) as being anticipated by Breed, US 2014/0210644 (A1).
As to claims 21, 31, and 37, Breed teaches a computer-implemented method, system, and tangible non-transitory computer readable medium of using telematics data at a computing device carried by a first vehicle, comprising:
receiving, by the computing device, telematics data associated with operation of a second vehicle (“generating information using a sensor system at a first vehicle about a condition of a surface on which the first vehicle is travelling”, abs);
identifying, by the computing device and based at least in part on the telematics
data, a location of a traffic event (“generating information using a sensor system at a first vehicle about a condition of a surface on which the first vehicle is travelling …the operator of the second vehicle is thereby notified of a potentially hazardous road surface condition ”, abs);
determining, by the computing device, that a first route along which the first
vehicle is currently traveling to a destination, includes the location (“a second vehicle and configured to wirelessly receive the surface condition information from the off-vehicle location based on location of the second vehicle”, ¶22); and
based at least in part on determining that the first route includes the location (“a second vehicle and configured to wirelessly receive the surface condition information from the off-vehicle location based on location of the second vehicle”, ¶22):
generating, by the computing device, an executable instruction indicating a second route extending from proximate a current location of the first vehicle to the
destination, wherein the second route avoids the location (“Since the road conditions will now be known to the system, an enhanced RtZF.RTM. system will be able to advise an operator not to travel or, alternately, it can pick an alternate route if certain roads have accidents or have iced over”, ¶208), and
providing, by the computing device, the executable instruction to a processor of the first vehicle, the executable instruction causing the processor of the first vehicle to modify operation of at least one component of the first vehicle based on the second route (“the operator of the second vehicle is thereby notified of a potentially hazardous road surface condition”, abs; “Processor 100A is coupled to the inertial reference unit and also is capable of performing the functions of vehicle control, such as via control of the brake system 70A, steering system 72A and throttle system 74A, crash sensing, rollover sensing, cassis control sensing, navigation functions and accident prevention as discussed herein”, ¶67; “Since the road conditions will now be known to the system, an enhanced RtZF.RTM. system will be able to … pick an alternate route if certain roads have accidents or have iced over”, ¶208).
As to claims 22, 32, and 39, Breed teaches the computer-implemented method, system, and tangible non-ransitory computer readable medium further comprising:
providing, by the computing device and on a display associated with the first
vehicle, a graphical user interface (GUI) including a text or graphical indication of at least one of:
the traffic event,
a location of the traffic event on a map, or
the second route (“displayed on the display can be in the form of non-critical information such as the location of the vehicle on a map, as selected by the vehicle operator and/or it can include warning or other emergency messages provided by the vehicle subsystems or from communication with other”, ¶53, “information about the presence of animals in proximity to the road, information about signs relating to the road, accidents, congestion, speed limits, route guidance, location-based services”, ¶153).
As to claims 23 and 33, Breed teaches the computer-implemented method, wherein the modifying operation of at least one component comprises:
generating an audible alert via an audio system of the first vehicle (“driver warning system 66 provides visual and/or audible warning messages to the driver or others that a hazard exists”, ¶36), or
generating a visual alert by operation of a screen or light of the first vehicle (“driver warning system 66 provides visual and/or audible warning messages to the driver or others that a hazard exists”, ¶36).
As to claim 24, Breed teaches the computer-implemented method, further comprising:
based at least in part on determining that the first route includes the location,
providing, by the computing device and via an audio interface of the first vehicle, audible driving directions for travel along the second route.
As to claim 25, Breed teaches the computer-implemented method, further comprising:
based on identifying the location of the traffic event, providing, by the computing
device, and via a mobile application running on the computing device, an alert indicating the location of the traffic event (“It is possible to transmitting from the off-vehicle location, a warning of a slippery road that is derived from the surface condition information received from the first vehicle, with a transmission of the warning of the slippery road being received by the second communications system on the second vehicle. A position determining system that determines the position of the first vehicle may be arranged on the first vehicle, in which case, the determined position of the first vehicle may be conveyed with the surface condition information from the first vehicle to the off-vehicle location. The location and surface condition information would be associated with one another at the first vehicle and transmitted together. Otherwise, the first vehicle location information and the surface condition information would be associated with one another at the off-vehicle location, for example, either when they are separately transmitted from the first vehicle or when the location of the first vehicle is determined by means other than at the first vehicle.”, ¶18).
As to claim 26, Breed teaches the computer-implemented method, wherein the computing device is a first computing device, and the telematics data is received from a second computing device associated with the second vehicle via peer-to-peer (P2P) wireless communications (“vehicle-to-vehicle communication except that it is line of sight. An advantage is that we can know when a particular vehicle will respond by range gating”, ¶82; “communication between vehicles (cars, trucks, buses, boats, ships, airplanes) is different in that devices are all peers and the communication generally depends on their proximity”, ¶103).
As to claim 27, Breed teaches the computer-implemented method, wherein the telematics data is received from a remote server via a communication network (“network server or mainframe computer, which may entail directing the information sources to respond to inquiries for information from the data facility or programming the information sources to automatically provide the information at set times. The probe vehicles 294 can also continually provide information limited only by the components of the transmission unit thereon. The data facility 300 can also be programmed to automatically access data channels on a regular basis to obtain current information about roads and weather. Although the data facility 300 gathers a large amount of information, not all of the information will be directed to the vehicle 294, i.e., only potential relevant information will be considered for each vehicle 294 in communication with the data facility 300. Thus, different subsets of the total available information will be generated for each host vehicle 294”, ¶199).
As to claims 28, 36, and 38, Breed teaches the computer-implemented method, system and tangible non-ransitory computer readable medium, wherein:
the telematics data is indicative of one or more of: Global Positioning System
(GPS) location, speed, lane information, time, turning, battery level, or telephone usage (“vehicle-to-vehicle communication will take place through a direct link or through an ad-hoc or mesh network, when Internet access becomes ubiquitous for vehicles, this communication could also take place via the Internet through a super wi-fi, Wi-Fi or Wimax or equivalent link. Additionally, the use of an ad-hoc or mesh network for vehicle-to-vehicle communication especially to sending: relative location, velocity and vehicle mass information for collision avoidance purposes; GPS, DGPS, PPS related information for location determination and error correction purposes; traffic congestion or road condition information; weather or weather related information”, ¶146), and the traffic event is indicative of the second vehicle experiencing one or more of:
high traffic conditions, road congestion, road construction, or extreme weather conditions (“vehicle-to-vehicle communication will take place through a direct link or through an ad-hoc or mesh network, when Internet access becomes ubiquitous for vehicles, this communication could also take place via the Internet through a super wi-fi, Wi-Fi or Wimax or equivalent link. Additionally, the use of an ad-hoc or mesh network for vehicle-to-vehicle communication especially to sending: relative location, velocity and vehicle mass information for collision avoidance purposes; GPS, DGPS, PPS related information for location determination and error correction purposes; traffic congestion or road condition information; weather or weather related information”, ¶146).
As to claims 29 and 35, Breed teaches the computer-implemented method, further comprising:
enabling, by the computing device, a reception of telematics data; and
providing, by the computing device and via a display associated with the first
vehicle, pricing adjustment information associated with a contract directed to the first vehicle, reception of telematics data is enabled.
As to claim 30, 34 and 40, Breed teaches the computer-implemented method, system and tangible non-transitory computer readable medium, further comprising:
providing, by the computing device and via peer-to-peer (P2P) wireless
communications, to an additional computing device of a third vehicle, information indicative of the traffic event, the location, or the second route (“communication between vehicles (cars, trucks, buses, boats, ships, airplanes) is different in that devices are all peers and the communication generally depends on their proximity”, ¶103),
wherein the third vehicle is within a threshold distance of the first vehicle (“vehicle-to-vehicle communication except that it is line of sight. An advantage is that we can know when a particular vehicle will respond by range gating”, ¶82).
Claim Rejections - 35 USC §103
The following is a quotation of 35 U.S.C. §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 of this title, 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 skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 24 is rejected under 35 U.S.C. §103 as being unpatentable over Breed, US 2014/0210644 (A1) in view of Myr, US 6480783 (B1).
As to claim 24, Breed does not explicitly teach the computer-implemented method, further comprising:
based at least in part on determining that the first route includes the location,
providing, by the computing device and via an audio interface of the first vehicle, audible driving directions for travel along the second route.
However, Myr, in the same field of endeavor, teaches real time vehicle guidance and forecasting system under traffic jam conditions in which audio guidance for a vehicle to travel to alternative route in view of traffic situations and slowdowns of the present location (Myr: title, Fig. 9 and related text, C6L66-C7L24). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the method and system as taught by Breed, with a reasonable expectation of success, to include based at least in part on determining that the first route includes the location, providing, by the computing device and via an audio interface of the first vehicle, audible driving directions for travel along the second route as taught by Myr to improve the safety of the vehicle road system (Breed: ¶31).
Examiner’s Note
The examiner has pointed out particular references contained in the prior art of record in the body of this action for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicant should consider the entire prior art as applicable as to the limitations of the claims. It is respectfully requested from the applicant, in preparing the response, to consider fully the entire references as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUEN WONG whose telephone number is (313)446-4851 EST. The examiner can normally be reached on M-F 9-5:30 EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Faris Almatrahi, can be reached on (313) 446-4821. 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 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.
/Yuen Wong/
Primary Examiner, Art Unit 3667
Prosecution Insights