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 .
Information Disclosure Statement
The references listed on the information disclosure statement filed on 1/27/2025 have been considered by the Examiner.
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.
Claim(s) 35 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Regarding claim(s) 35, the claim(s) do not fall within at least one of the four categories of patent eligible subject matter because they are directed toward a computing apparatus comprising: one or more computer readable storage media (i.e., apparatus that only comprises one or more computer readable storage media) and are not limited to non-transitory embodiments. Thus, the claim(s) encompass transitory embodiments of the computer readable storage media, which have been held to not fall within one of the four categories of patent eligible subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (“A transitory, propagating signal like Nuitjen’s is not a process, machine, manufacture, or composition of matter.’ … Thus, such a signal cannot be patentable subject matter.”). The claims may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. 101 by adding the limitation “non-transitory” to the claim. Such an amendment would not raise the issue of new matter because the specification supports a claim drawn to at least one non-transitory embodiment. Claims 36-40 are rejected as being dependent upon a rejected claim.
Claims 35-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In January, 2019 (updated October 2019), the USPTO released new examination guidelines setting forth a two-step inquiry for determining whether a claim is directed to non-statutory subject matter. According to the guidelines, a claim is directed to non-statutory subject matter if:
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), 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:
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon?
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application?
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
Using the two-step inquiry, it is clear that the claims are directed toward non-statutory subject matter, as shown below:
STEP 1: Do the claims fall within one of the statutory categories? Yes. Claims 35-40 are directed towards a computing apparatus, i.e., machine.
STEP 2A (PRONG 1): Is the claim directed to a law of nature, a natural phenomenon or an abstract idea? Yes, the claims are directed to an abstract idea.
With regard to STEP 2A (PRONG 1), the guidelines provide three groupings of subject matter that are considered abstract ideas:
Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;
Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
Mental processes – concepts that are practicably performed in the human mind (including an observation, evaluation, judgment, opinion).
The apparatus in claims 35-40 is a mental process that can be practicably performed in the human mind and, therefore, an abstract idea. With regard to independent claim 35, the apparatus (or computer implemented functionality) recites the steps of: (a) monitor an error between an actual velocity of the unmanned aerial vehicle and a velocity of a beacon that is in motion and (b) determine a computational weighting of flight objectives for computing flight instructions, wherein the computational weighting is based at least on the error between the actual velocity and the velocity of the beacon and a rate of change of the error. These limitations, under their broadest reasonable interpretation, cover performance of the limitations in the mind. 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). For example, a person can mentally monitor an error between an actual velocity of an UAV and a velocity of a beacon as well as determine a computational weighting of flight objectives for computing flight instructions, either mentally or using a pen and paper. The mere nominal recitation that instructions are being executed by a processor of the flight control system (i.e., computer) does not take the limitation out of the mental process grouping. Thus, the claim recites a mental process.
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? No, the claim does not recite additional elements that integrate the judicial exception into a practical application.
With regard to STEP 2A (prong 2), whether the claim recites additional elements that integrate the judicial exception into a practical application, the guidelines provide the following exemplary considerations that are indicative that an additional element (or combination of elements) may have integrated the judicial exception into a practical application:
an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element 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 claim as a whole is more than a drafting effort designed to monopolize the exception.
While the guidelines further state that the exemplary considerations are not an exhaustive list and that there may be other examples of integrating the exception into a practical application, the guidelines also list examples in which a judicial exception has not been integrated into a practical application:
an additional element merely recites the words “apply it” (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea;
an additional element adds insignificant extra-solution activity to the judicial exception; and
an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use.
Claim 10 recites the additional limitation of “one or more computer readable storage media having program instructions stored thereon that, when executed by one or more processors of a flight control system on-board an unmanned aerial vehicle”. The one or more computer readable storage media having program instructions executed by a processor is simply a computer recited at a high level of generality. The generic computer is used to perform the abstract idea. Using a computer as a tool to perform the abstract idea does not integrate the exception into a practical application. Outputting data is insignificant extra-solution activity. See MPEP 2106.05(g). Generate the flight instructions for an electromechanical system of the unmanned aerial vehicle based on the computational weighting, as claimed, is outputting data. Therefore, generate the flight instructions for an electromechanical system of the unmanned aerial vehicle based on the computational weighting is insignificant extra-solution activity. The Examiner notes generating flight instructions is just outputting flight instructions. However, the UAV is not being maneuvered or controlled based on the flight instructions. Therefore, claim 10 does not recite additional elements that integrate the judicial exception into a practical application.
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No, the claim does not recite additional elements that amount to significantly more than the judicial exception.
With regard to STEP 2B, whether the claims recite additional elements that provide significantly more than the recited judicial exception, the guidelines specify that the pre-guideline procedure is still in effect. Specifically, that examiners should continue to consider whether an additional element or combination of elements:
adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
The following computer functions have been recognized as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality): receiving or transmitting data over a network. See MPEP 2106.05(d)(II). Generate the flight instructions for an electromechanical system of the unmanned aerial vehicle based on the computational weighting is transmitting data over a network (i.e., from one computing device networked to another computing device). Therefore, the limitation “generate the flight instructions for an electromechanical system of the unmanned aerial vehicle based on the computational weighting” is well-understood, routine, conventional activity in the field and does not recite additional elements that amount to significantly more than the judicial exception.
CONCLUSION
Thus, since claim 35 is: (a) directed toward an abstract idea, (b) does not recite additional elements that integrate the judicial exception into a practical application, and (c) does not recite additional elements that amount to significantly more than the judicial exception, it is clear that claim 35 is directed towards non-statutory subject matter.
Further, dependent claims 36-40 further limit the abstract idea without integrating the abstract idea into practical application or adding significantly more. Each of the claimed limitations either expand upon or add either 1) new mental process, 2) a new additional element, 3) previously presented mental process, and/or 4) a previously presented additional element. As such, claims 36-40 are similarly rejected as being directed towards non-statutory subject matter.
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 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 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.
Claims 21-22, 28-29 and 35-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8 and 15 of US Patent No. 12210355 B2 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Application: 19/038,062
Application: 16/472,056
Claim 21:
An unmanned aerial vehicle comprising: a flight control system comprising program instructions which direct the flight control system to compute flight instructions for an electromechanical system of the unmanned aerial vehicle, wherein to compute the flight instructions, the program instructions direct the flight control system to: monitor an error between an actual velocity of the unmanned aerial vehicle and a velocity of a beacon that is in motion; determine a computational weighting of flight objectives for computing the flight instructions, wherein the computational weighting is based at least on the error between the actual velocity and the velocity of the beacon and a rate of change of the error; and generate the flight instructions for the electromechanical system based on the computational weighting; and the electromechanical system, wherein the electromechanical system maneuvers the unmanned aerial vehicle based on the flight instructions from the flight control system.
Claim 1:
An unmanned aerial vehicle comprising: a flight control system comprising program instructions which direct the flight control system to compute flight instructions for an electromechanical system of the unmanned aerial vehicle, wherein to compute the flight instructions, the program instructions direct the flight control system to: track a position of a beacon that is in motion; monitor a difference between an actual position of the unmanned aerial vehicle and a desired position of the unmanned aerial vehicle relative to the position of the beacon; monitor an error between an actual velocity of the unmanned aerial vehicle and a velocity of the beacon; and determine a computational weighting of flight objectives for computing the flight instructions, wherein the computational weighting is based at least on whether the difference between the actual position and the desired position exceeds a threshold, the error between the actual velocity and the velocity of the beacon, and a rate of change of the error, and wherein the flight objectives comprise a velocity objective and a position objective, wherein the velocity objective comprises matching the actual velocity to the velocity of the beacon; and command the electromechanical system based at least on the flight instructions; and the electromechanical system, wherein the electromechanical system maneuvers the unmanned aerial vehicle based on the flight instructions from the flight control system.
Claim 22:
The unmanned aerial vehicle of claim 21, wherein the flight objectives comprise at least a position objective and a velocity objective, wherein the position objective comprises maintaining the unmanned aerial vehicle in a desired position relative to the beacon.
Claim 1:
monitor a difference between an actual position of the unmanned aerial vehicle and a desired position of the unmanned aerial vehicle relative to the position of the beacon; and wherein the flight objectives comprise a velocity objective and a position objective
Claim 28:
A method of operating an unmanned aerial vehicle comprising a flight control system and an electromechanical system coupled with the flight control system, wherein the method comprises: the flight control system computing flight instructions for an electromechanical system of the unmanned aerial vehicle, wherein computing the flight instructions comprises: monitoring an error between an actual velocity of the unmanned aerial vehicle and a velocity of a beacon that is in motion; determining a computational weighting of flight objectives for computing the flight instructions, wherein the computational weighting is based at least on the error between the actual velocity and the velocity of the beacon and a rate of change of the error; and generating the flight instructions for the electromechanical system based on the computational weighting; and the electromechanical system maneuvering the unmanned aerial vehicle based on the flight instructions from the flight control system.
Claim 8:
A method of operating an unmanned aerial vehicle comprising a flight control system and an electromechanical system coupled with the flight control system, wherein the method comprises: the flight control system computing flight instructions for an electromechanical system of the unmanned aerial vehicle, wherein computing the flight instructions comprises: tracking a position of a beacon that is in motion; monitoring a difference between an actual position of the unmanned aerial vehicle and a desired position of the unmanned aerial vehicle relative to the position of the beacon; monitor an error between a velocity of the unmanned aerial vehicle and a velocity of the beacon; determining a computational weighting of flight objectives for computing the flight instructions, wherein the computational weighting is based at least on whether the difference between the actual position and the desired position exceeds a threshold, the error between the velocity of the unmanned aerial vehicle and the velocity of the beacon, and a rate of change of the error, and wherein the flight objectives comprise a velocity objective and a position objective, and wherein the velocity objective comprises matching the velocity of the unmanned aerial vehicle to the velocity of the beacon; and commanding the electromechanical system based at least on the one or more flight objectives; and the electromechanical system maneuvering the unmanned aerial vehicle based on the flight instructions from the flight control system.
Claim 29:
The method of claim 28, wherein the flight objectives comprise at least a position objective and a velocity objective, wherein the position objective comprises maintaining the unmanned aerial vehicle in a desired position relative to the beacon.
Claim 8:
monitoring a difference between an actual position of the unmanned aerial vehicle and a desired position of the unmanned aerial vehicle relative to the position of the beacon; and wherein the flight objectives comprise a velocity objective and a position objective
Claim 35:
A computing apparatus comprising: one or more computer readable storage media having program instructions stored thereon that, when executed by one or more processors of a flight control system on-board an unmanned aerial vehicle, direct the flight control system to at least: monitor an error between an actual velocity of the unmanned aerial vehicle and a velocity of a beacon that is in motion; determine a computational weighting of flight objectives for computing flight instructions, wherein the computational weighting is based at least on the error between the actual velocity and the velocity of the beacon and a rate of change of the error; and generate the flight instructions for an electromechanical system of the unmanned aerial vehicle based on the computational weighting.
Claim 15:
A computing apparatus comprising: one or more computer readable storage media having program instructions stored thereon that, when executed by one or more processors of a flight control system on-board an unmanned aerial vehicle, direct the flight control system to at least: track a position of a beacon that is in motion; monitor a difference between an actual position of the unmanned aerial vehicle and a desired position of the unmanned aerial vehicle relative to the position of the beacon; monitor an error between an actual velocity of the unmanned aerial vehicle and a velocity of the beacon; determine a computational weighting of flight objectives for computing flight instructions, wherein the computational weighting is based at least on whether the difference between the actual position and the desired position exceeds a threshold, the error between the actual velocity and the velocity of the beacon, and wherein the flight objectives comprise a velocity objective and a position objective, and wherein the velocity objective comprises matching the actual velocity to the velocity of the beacon; and generate flight instructions for an electromechanical system of the unmanned aerial vehicle based at least on the flight objectives and the computational weighting.
Claim 36:
The computing apparatus of claim 35, wherein the flight objectives comprise at least a position objective and a velocity objective, wherein the position objective comprises maintaining the unmanned aerial vehicle in a desired position relative to the beacon.
Claim 15:
monitor a difference between an actual position of the unmanned aerial vehicle and a desired position of the unmanned aerial vehicle relative to the position of the beacon; and wherein the flight objectives comprise a velocity objective and a position objective
This is a nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claim(s) 23-27 and 30-34 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Connor L Knight whose telephone number is (571)272-5817. The examiner can normally be reached Mon-Fri 8:30AM-4:30PM EST.
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, Anne Antonucci can be reached at (313)446-6519. 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.
/C.L.K/Examiner, Art Unit 3666
/ANNE MARIE ANTONUCCI/Supervisory Patent Examiner, Art Unit 3666
Prosecution Insights