CTNF 19/037,502 CTNF 85249 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Double Patenting 08-33 AIA 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 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); 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 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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer. 08-34 AIA Claim s 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-19 of U.S. Patent No. 12,243,356 B2 . Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-8 are being anticipated by claims 1-19 of U.S. Patent No. 12,243,356 B2 . Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 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 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim 1 A method for predicting maintenance/replacement period for a component of a vehicle, the vehicle comprising a power-assisted steering system including a steering actuator configured to assist in steering the vehicle at least as compensation for angular deviations of the road wheels caused by road disturbances, the method comprising: acquiring, over time, steering output data indicative of a magnitude and frequency of assisted steering as compensation for angular deviations of the road wheels caused by road disturbances ; comparing the acquired steering output data with stored component wear data, the stored component wear data being indicative of when maintenance/replacement of the component is due based on wear caused by road disturbances; and determining, based on the comparison of the acquired steering output data and the stored component wear data, whether or not maintenance/replacement of the component is due ; wherein: the stored component wear data includes one or more thresholds of a first parameter value; the steering output data includes first parameter values which have been converted from second parameter values generated by the steering actuator and being indicative of an assisted steering as compensation for road disturbances; the comparing the acquired steering output data with stored component wear data comprises comparing the first parameter values of the steering output data with the one or more thresholds; the determining whether or not maintenance/replacement of the component is due comprises determining that maintenance/replacement of the component is due when one or more of the converted first parameter values exceeds the one or more thresholds; and the first parameter values include vertical acceleration of the component as a function of number of repetitions . 101 Analysis - Step 1: Statutory category – Yes The claims recite a method. The claims fall within one of the four statutory categories. MPEP 2106.03 101 Analysis - Step 2A Prong one evaluation: Judicial Exception – Yes – Mental processes In Step 2A, Prong one of the 2019 Patent Eligibility Guidance (PEG), a claim is to be analyzed to determine whether it recites subject matter that falls within one of the following groups of abstract ideas: a) mathematical concepts, b) mental processes, and/or c) certain methods of organizing human activity. The Office submits that the foregoing bolded limitation(s) constitutes judicial exceptions in terms of “mental processes” because under its broadest reasonable interpretation, the limitations can be “performed in the human mind, or by a human using a pen and paper” to solve optimization problem. See MPEP 2106.04(a)(2)(III). The claim recites the limitations of “comparing the acquired steering output data …” and “determining, based on the comparison …”. These limitations, as drafted, are processes that, under their broadest reasonable interpretation, cover performance of the limitation in the mind but for the recitation of “a control unit”. That is, other than reciting “control unit” nothing in the claim precludes the steps from practically being performed in the mind. For example, but for the “control unit” language, the claim encompasses a user looking at steering output data to determine whether or not maintenance/replacement of the component is due. The mere nominal recitation of “control unit” does not take the claim limitations out of the mental process grouping. Thus, the claims recite a mental process. 101 Analysis - Step 2A Prong two evaluation: Practical Application - No In Step 2A, Prong two of the 2019 PEG, a claim is to be evaluated whether, as a whole, it integrates the recited judicial exception into a practical application. As noted in MPEP 2106.04(d), 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, such that the claim is more than a drafting effort designed to monopolize the judicial exception. The courts have indicated that additional elements such as: 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.” The Office submits that the foregoing underlined limitation(s) recite additional elements that do not integrate the recited judicial exception into a practical application. The claim recites additional elements of “a control unit” merely describes how to generally “apply” the otherwise mental judgements using a generic or general-purpose vehicle control environment, i.e. a computer. The “acquiring, over time, steering output data…” step is recited at a high level of generality (i.e. as a pre-solution activity of gathering data) and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The control unit is generic computer components and are recited at a high level of generality and is merely automates the acquiring/comparing/determining steps. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. 101 Analysis - Step 2B evaluation: Inventive concept - No In Step 2B of the 2019 PEG, a claim is to be evaluated as to whether the claim, as a whole, amounts to significantly more than the recited exception, i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. See MPEP 2106.05. 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 “acquiring …”, and “control unit” 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 specification does not provide any indication that the control unit 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 (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 acquiring step is well-understood, routine, conventional activity is supported under Berkheimer. Thus, the claim is ineligible. Dependent claims 2-8 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 well-understood, routine and conventional additional elements that do not integrate the judicial exception into a practical application. Therefore, dependent claims 2-8 are not patent eligible under the same rationale as provided for in the rejection of claim 1. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ce Li Li whose telephone number is (571)270-5564. The examiner can normally be reached M-F, 10AM-7PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter D Nolan can be reached on 571-270-7016. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. CE LI . LI Examiner Art Unit 3661 /PETER D NOLAN/Supervisory Patent Examiner, Art Unit 3661 Application/Control Number: 19/037,502 Page 2 Art Unit: 3661 Application/Control Number: 19/037,502 Page 3 Art Unit: 3661 Application/Control Number: 19/037,502 Page 4 Art Unit: 3661 Application/Control Number: 19/037,502 Page 5 Art Unit: 3661 Application/Control Number: 19/037,502 Page 6 Art Unit: 3661 Application/Control Number: 19/037,502 Page 7 Art Unit: 3661 Application/Control Number: 19/037,502 Page 8 Art Unit: 3661 Application/Control Number: 19/037,502 Page 9 Art Unit: 3661
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