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 .
Examiner’s Note
Examiner has cited particular paragraphs/columns and line numbers or figures in the references as applied to the claims below 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. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety 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. Applicant is reminded that the Examiner is entitled to give the broadest reasonable interpretation to the language of the claims. Furthermore, the Examiner is not limited to Applicants’ definition which is not specifically set forth in the claims.
Response to Amendment
The amendment filed 8/18/2026 has been entered. Claims 1, 2, 4, 5, and 7-9 remain pending in the application. Applicant’s amendments to the Claims have overcome each and every prior art rejection previously set forth in the Office Action mailed 5/18/2026.
Response to Arguments
Applicant’s arguments regarding the rejection under U.S.C 103, see pages 6-11, filed 8/18/2026, with respect to the prior art and the Niibe reference in particular have been fully considered and are persuasive. The prior art rejection of every claim has been withdrawn.
Applicant's arguments regarding the rejection under U.S.C. 101 filed 8/18/2026 have been fully considered but they are not persuasive. The applicant argues that the amended claim to now set a gain based on “an amount of regeneration of the electric motor and a gradient of a road surface on which the vehicle is traveling” integrate the idea into a practical application, by controlling a speaker based on the regeneration and gradient. However, the amended claims cannot integrate the abstract idea into a practical application, as an abstract idea cannot integrate itself into a practical application- only the additional elements of the claim. To set a gain according to an amount of regeneration of the electric motor and a gradient of a road surface on which the vehicle is traveling is still a mental process as previously explained in the prior rejection, the addition of the gradient adds another factor to the menta process but it remains one. Additionally, the claim as currently written does not recite the actual control of the speaker that would qualify as “controlling a speaker based on the regeneration and gradient”. Instead, the way it is written as outputting, to the speaker, a sound effect signal is instead the insignificant post-solution activity of transmitting the results of the gain determination to the speaker. Therefore, the examiner maintains the rejection under U.S.C. 101 is proper.
Claim Rejections - 35 USC § 101
Claims 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The determination of whether a claim recites patent ineligible subject matter is a 2 step inquiry.
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), see MPEP 2106.03, or
STEP 2: the claim recites a judicial exception, e.g. an abstract idea, without reciting additional elements that amount to significantly more than the judicial exception, as determined using the following analysis: see MPEP 2106.04
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon? see MPEP 2106.04(II)(A)(1)
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? see MPEP 2106.04(II)(A)(2)
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? see MPEP 2106.05
101 Analysis – Step 1
Claim 1 is directed to a device (i.e., a machine). Therefore, claim 1 is within at least one of the four statutory categories.
101 Analysis – Step 2A, Prong I
Regarding Prong I of the Step 2A analysis, 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. see MPEP 2106(A)(II)(1) and MPEP 2106.04(a)-(c)
Independent claim 1 includes limitations that recite an abstract idea (emphasized below [with the category of abstract idea in brackets]) and will be used as a representative claim for the remainder of the 101 rejection.
Claim 1 recites an active sound effect generating device for causing a speaker to output a sound effect into a cabin of a vehicle driven by an electric motor, the active sound effect generating device comprising
one or more processors that execute computer-executable instructions stored in a memory, wherein the one or more processors execute the computer- executable instructions to cause the active sound effect generating device to:
generate a first sound effect signal that is a signal for causing the speaker to output the sound effect; [abstract idea – mental process]
set a gain according to an amount of regeneration of the electric motor and a gradient of a road surface on which the vehicle is traveling; [abstract idea – mental process]
and output to the speaker a second sound effect signal generated by multiplying the first sound effect signal by the gain. [abstract idea – mental process, mathematical process]
wherein as an uphill gradient of the road surface becomes larger, the gain is smaller whereas as a downhill gradient of the road surface becomes larger, the gain is larger. [abstract idea – mental process, mathematical process]
The examiner submits that the foregoing bolded limitation(s) constitute a “mental process” because under its broadest reasonable interpretation, the claim covers limitations which may be performed in the human mind. Regarding the limitations of this claim, the limitations “generate a first sound effect signal that is a signal for causing the speaker to output the sound effect” in the context of this claim encompass a person determining a sound effect for use in a speaker. The limitations “set a gain according to an amount of regeneration of the electric motor and a gradient of a road surface on which the vehicle is traveling” in the context of this claim encompass a person determining a gain type, value, or the like based on battery regeneration. The limitations “generated by multiplying the first sound effect signal by the gain” in the context of this claim encompass a person multiplying two values, as well as represents an abstract idea mathematical formula/equation. Accordingly, the claim recites at least one abstract idea. The limitation “wherein as an uphill gradient of the road surface becomes larger, the gain is smaller whereas as a downhill gradient of the road surface becomes larger, the gain is larger” in the context of this claim encompass a person determining a value of gain based on knowing the gradient, as well as represents an abstract idea mathematical formula/equation by determining one value based on an input value.
101 Analysis – Step 2A, Prong II
Regarding Prong II of the Step 2A analysis, the claims are to be analyzed to determine whether the claim, as a whole, integrates the abstract into a practical application. see MPEP 2106.04(II)(A)(2) and MPEP 2106.04(d)(2). 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” [with a description of the additional limitations in brackets], while the bolded portions continue to represent the “abstract idea”.):
one or more processors that execute computer-executable instructions stored in a memory, wherein the one or more processors execute the computer- executable instructions to cause the active sound effect generating device to: [performing the abstract idea using a generic computer]
generate a first sound effect signal that is a signal for causing the speaker to output the sound effect; [abstract idea – mental process]
set a gain according to an amount of regeneration of the electric motor and a gradient of a road surface on which the vehicle is traveling; [abstract idea – mental process]
and output to the speaker a second sound effect signal [insignificant post-solution activity (post-solution results transmitting)] generated by multiplying the first sound effect signal by the gain. [abstract idea – mental process, mathematical process]
wherein as an uphill gradient of the road surface becomes larger, the gain is smaller whereas as a downhill gradient of the road surface becomes larger, the gain is larger. [abstract idea – mental process, mathematical process]
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 “one or more processors that execute computer-executable instructions stored in a memory, wherein the one or more processors execute the computer- executable instructions to cause the active sound effect generating device to:” are in the context of this claims recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of measuring a value and determining another value based on the measurement). The limitation to “and output to the speaker a second sound effect signal” is a mere post-solution activity of transmitting the results of a determination, in this case transmitting the results of the gain determination and multiplication against the sound.
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. See 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 Revised Guidance, 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 with respect to Step 2A Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception on a generic computer cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
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 receiving steps and the displaying step were considered to be insignificant 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 recites that the sensors are all conventional sensors mounted on the vehicle, and the specification does not provide any indication that the vehicle controller is anything other than a conventional computer within a vehicle. 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.
Thus, the claim is ineligible
Dependent claims 2, 4, 5, 7, and 8 do not recite any further limitations that cause the claim(s) to be patent eligible. Rather, the limitations of dependent claims are directed toward additional aspects of the judicial exception and/or well-understood, routine and conventional additional elements that do not integrate the judicial exception into a practical application. Therefore, dependent claims 2, 4, 5, 7, and 8 are not patent eligible under the same rationale as provided for in the rejection of Independent Claim 1.
Claim 9 is rejected for the same reasons as the representative Claim 1 above, as the claim is
substantially identical to the examined claims with only minor changes to the limitations; being a method rather than a device, changes which do not affect the analysis as demonstrated above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB D UNDERBAKKE whose telephone number is (571)272-6657. The examiner can normally be reached Monday-Friday 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jelani Smith can be reached at 571-270-3969. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB DANIEL UNDERBAKKE/Examiner, Art Unit 3662
/MAHMOUD S ISMAIL/Primary Examiner, Art Unit 3662
