S NON-FINAL OFFICE ACTION
REISSUE OF U.S. PATENT NO. 9,311,271
TABLE OF CONTENTS
1. ACKNOWLEDGEMENTS 4
2. ADDITIONAL TERMS 4
3. REISSUE PROCEDURAL REMINDERS 5
4. OTHER PROCEEDINGS 6
5. STATUS OF CLAIMS 6
6. PRIORITY AND AIA STATUS 7
7. INFORMATION CONSIDERED 10
8. PRIOR ART CITED 11
9. DECLARATION 11
10. SPECIFICATION 12
11. CLAIM OBJECTIONS 13
12. BROADEST REASONABLE INTERPRETATION (BRI) 14
13. CLAIM INTERPRETATION UNDER 35 USC § 112, SIXTH PARAGRAPH 16
13.1. Functional Phrase #1 or FP#1 18
13.1.1. Prong (A) 20
13.1.2. Prong (B) 23
13.1.3. Prong (C) 23
13.1.4. Corresponding Structure for FP#1 24
13.2. Functional Phrase #2 or FP#2 26
13.2.1. Prong (A) 27
13.2.2. Prong (B) 29
13.2.3. Prong (C) 29
13.2.4. Corresponding Structure for FP#2 29
13.3. Functional Phrase #3 or FP#3 31
13.3.1. Prong (A) 32
13.3.2. Prong (B) 34
13.3.3. Prong (C) 34
13.3.4. Corresponding Structure for FP#3 34
13.4. Functional Phrase #4 or FP#4 35
13.4.1. Prong (A) 36
13.4.2. Prong (B) 37
13.4.3. Prong (C) 38
13.4.4. Corresponding Structure for FP#4 38
14. CLAIM REJECTIONS – 35 USC § 251 (Improper Broadening) 39
15. CLAIM REJECTIONS – 35 USC § 251 (Defective Declaration) 41
16. CLAIM REJECTIONS – 35 USC § 251 (New Matter) 41
17. CLAIM REJECTIONS – 35 USC § 112, First Paragraph 42
17.1. New Matter 42
18. CLAIM REJECTIONS – 35 USC § 112, Second Paragraph 45
18.1. Insufficient Disclosure Of Corresponding Structure (Claims 1–24) 45
18.2. Improper Markush Group (Claims 1–5 and 8–16) 46
18.3. Contradictory Limitations (Claims 1–5 and 8–16) 47
18.4. Conclusion of 35 USC § 112, Second Paragraph Rejection 47
19. CLAIM REJECTIONS – 35 USC § 103 48
19.1. Obvious Over Amigo, in view of Collings and Collins 48
19.1.1. Claim 1 48
19.1.2. Claim 8 55
19.1.3. Claim 9 55
19.1.4. Claim 10 55
19.1.5. Claim 11 56
19.1.6. Claim 12 57
19.1.7. Claim 14 57
19.2. Obvious Over Amigo, in view of Collings, Collins, and Peng 58
19.2.1. Claim 2 58
19.3. Obvious Over Amigo, in view of Collings, Collins, and Tamir 59
19.3.1. Claim 3 59
19.4. Obvious Over Amigo, in view of Collings, Collins, and Choi 60
19.4.1. Claim 13 60
19.5. Obvious Over Amigo, in view of Collings, Collins, and McClellan 61
19.5.1. Claim 4 61
19.5.2. Claim 5 69
19.5.3. Claim 15 70
19.5.4. Claim 16 70
20. ALLOWABLE SUBJECT MATTER 70
21. CONCLUSION 71
ACKNOWLEDGEMENTS
This non-final Office action addresses U.S. reissue application No. 19/038,100 (“Instant Application”). Based upon a review of the Instant Application, the actual filing date is 27 January 2025 (“Actual Filing Date”).
The Instant Application is a reissue application of U.S. Patent No. 9,311,271 (“Patent Under Reissue” or “'271 Patent”) titled “METHOD AND SYSTEM FOR LOGGING VEHICLE BEHAVIOR.”
An application for the Patent Under Reissue was filed on 24 July 2013 (“Base Application Filing Date”) and assigned by the Office non-provisional U.S. patent application number 13/994,455 (“Base Application” or “'455 Application”) and issued on 12 April 2016 with claims 1–7 (“Originally Patented Claims”).
ADDITIONAL TERMS
The following terms may appear in this Office action and, unless expressly noted otherwise, are defined as follows:
“POSITA” refers to a Person of Ordinary Skill in the Art.
“BRI” refers to Broadest Reasonable Interpretation.
“MPEP” refers to Manual of Patent Examining Procedure, Ninth Edition, Rev. 01.2024.
“IFW” refers to Image File Wrapper.
“35 USC” refers to Title 35 of the United States Code.
“37 CFR” refers to Title 37 of the Code of Federal Regulations.
“AIA ” refers to America Invents Act.
“Original Application” means the prosecution history of the Base Application, including the applications in the patent family’s entire prosecution history. See MPEP § 1412.02.
“Original Disclosure” means the substantive sections of the Base Application (i.e., the abstract, drawings, specification, and original claims) that were present in the Base Application on the Base Application Filing Date.
“Applicant” (uppercase) refers to the Applicant of the Instant Application.
“applicant” (lowercase) refers to an applicant(s) generally.
“patent owner” (lowercase) refers to a patent owner(s) generally and not the Applicant.
“Examiner” (uppercase) refers to the Examiner of the Instant Application.
“examiner” (lowercase) refers to an examiner(s) generally, e.g. the examiner of the Base Application, or any examiner(s) other than the Examiner.
REISSUE PROCEDURAL REMINDERS
Disclosure of other proceedings. Applicant is reminded of the continuing obligation under 37 CFR § 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. Applicant is further reminded of the continuing obligation under 37 CFR § 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue appli-cation.
These disclosure obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 CFR § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
OTHER PROCEEDINGS
The following previous or concurrent proceedings involving the Patent Under Reissue have been found:
IPR2023-00911 (“'911 IPR”); and
IPR2023-00912 (“'912 IPR”).
STATUS OF CLAIMS
Claims 1–24, as set forth in the preliminary amendment filed on the Actual Filing Date, are currently pending (“Pending Claims”) and currently examined (“Examined Claims”).
Regarding the Examined Claims and as a result of this Office action:
Claims 1–24 are rejected under 35 USC § 251.
Claims 1–24 are rejected under 35 USC § 112, Second Paragraph.
Claims 1–5 and 8–16 are rejected under 35 USC § 112, First Paragraph.
Claims 1–5 and 8–16 are rejected under 35 USC § 103.
Claims 1–24 are objected to.
PRIORITY AND AIA STATUS
National Stage Information. Based upon a review of the Instant Application, the Base Application, and the Patent Under Reissue, the Examiner finds the Base Application is a National Stage entry of PCT/GB2011/052491 (“International Application”) having an international filing date of 15 December 2011 (“International Application Filing Date”). To the extent the disclosure of the International Application supports the Pending Claims under 35 USC § 112, the supported claims receive benefit of the International Application Filing Date.
Foreign Priority. Based upon a review of the Instant Application and the Patent Under Reissue, the Examiner finds the Instant Application contains a claim for benefit of foreign priority under 35 USC §§ 119(a)–(d) to the following foreign applications:
GB 1021292.6 (“P1”) filed on 15 December 2010 (“P1 Filing Date”);
GB 1101259.8 (“P2”) filed on 25 January 2011 (“P2 Filing Date”);
GB 1109759.9 (“P3”) filed on 10 June 2011 (“P3 Filing Date”); and
GB 1118777.0 (“P4”) filed on 31 October 2011 (“P4 Filing Date”).
To the extent the disclosure of P1 supports the Pending Claims under 35 USC § 112, the supported claims receive benefit of the P1 Filing Date.
To the extent the disclosure of P2 supports the Pending Claims under 35 USC § 112, the supported claims receive benefit of the P2 Filing Date.
To the extent the disclosure of P3 supports the Pending Claims under 35 USC § 112, the supported claims receive benefit of the P3 Filing Date.
To the extent the disclosure of P4 supports the Pending Claims under 35 USC § 112, the supported claims receive benefit of the P4 Filing Date.
However, Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 USC § 112(a) or the first paragraph of pre-AIA 35 USC § 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of P1, P2, P3, and P4 fails to provide adequate support or enablement in the manner provided by pre-AIA 35 USC § 112, first paragraph for one or more claims of the Examined Claims. In particular, each of P1, P2, P3, and P4 fails to provide adequate support or enablement in the manner provided by pre-AIA 35 USC 112, first paragraph for the following claim limitations:
(1) “determine, based on inputs received by the user interface and sensor data from the sensor set, a start of a driving period at which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, the driving period being defined by a duration from a start to an end of a vehicle journey of the vehicle” (claim 1);
(2) “determine, based on inputs received by the user interface and sensor data from the sensor set, a start of a driving period during which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, the driving period being defined by a duration from a start to an end of a vehicle journey of the vehicle” (claim 4);
(3) “process, using the processor, sensor data representing at least acceleration of the vehicle and position of the vehicle from the sensor set to generate derived driving information representing how safely the vehicle is being driven by the driver throughout the driving period, wherein the driving period is defined by a duration of a vehicle journey, and the derived driving information includes a driving score, and wherein the processing of the sensor data, by the processor, includes determining a driving incident occurring within the driving period by comparing the sensor data against at least one predetermined threshold value and detecting the driving incident when the sensor data exceeds the at least one predetermined threshold, the driving incident including at least one of harsh breaking, harsh acceleration, harsh swerving or a vehicle accident; generate the derived driving information without data from vehicle sensors throughout the driving period in which the mobile telecommunications device is removably attached to the vehicle and the vehicle is being driven by the driver, the derived driving information being based on inputs received by the user interface of the remote mobile telecommunications device and the sensor data […] the remote data logging server being further arranged to process the driving information logged to a corresponding account to generate a further driving score used to determine a risk profile for at least one of the vehicle and driver” (claim 6); and
(4) “process, using the processor, sensor data representing at least acceleration of the vehicle and position of the vehicle from the sensor set to generate derived driving information representing how safely the vehicle is being driven by the driver throughout the driving period, wherein the driving period is defined by a duration of a vehicle journey, and the derived driving information includes a driving score, and wherein the processing of the sensor data, by the processor, includes determining a driving incident occurring within the driving period by comparing the sensor data against at least one predetermined threshold value and detecting the driving incident when the sensor data exceeds the at least one predetermined threshold, the driving incident including at least one of harsh breaking, harsh acceleration, harsh swerving or a vehicle accident; generate the derived driving information without data from vehicle sensors throughout the driving period in which the mobile telecommunications device is removably attached to the vehicle and the vehicle is being driven by the driver, the derived driving information being based on inputs received by the user interface of the remote mobile telecommunications device and the sensor data […] the remote data logging server being further arranged to process the driving information logged to a corresponding account to generate a further driving score used to determine a risk profile for at least one of the vehicle and driver” (claim 7).
AIA Status. Because the P1 Filing Date, the P2 Filing Date, the P3 Filing Date, and/or the P4 Filing Date is before 16 March 2013, the America Invents Act First Inventor to File (“AIA -FITF”) provisions do not apply. Instead, the pre-AIA “First to Invent” provisions will govern this proceeding. See 35 USC § 100 (note). In the event the determination of the status of the application as subject to pre-AIA 35 USC §§ 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, would be the same under either status.
INFORMATION CONSIDERED
In accordance with MPEP § 1406, the Examiner has reviewed and considered the prior art cited or “of record” in the original prosecution of the Patent Under Reissue. Applicant is reminded that a listing of the information cited or “of record” in the original prosecution of the Patent Under Reissue has been considered in the Instant Application and need not be resubmitted.
PRIOR ART CITED
The following prior art patents and printed publications are cited in a prior art rejection:
U.S. Patent Application Publication 2011/0153367 A1 (“Amigo”);
U.S. Patent Application Publication 2011/0224868 A1 (“Collings”);
International Publication Number WO 2011/146466 A2 (“Collins”);
U.S. Patent Application Publication 2011/0307188 A1 (“Peng”);
U.S. Patent 7,821,421 (“Tamir”);
U.S. Patent Application Publication 2008/0319602 A1 (“McClellan”); and
U.S. Patent Application Publication 2010/0030540 A1 (“Choi”).
The prior art made of record and considered pertinent to Applicant’s disclosure, but not relied upon to reject the claims in this Office action, is listed on the attached document titled “Notice of Reference Cited” (PTO-892). Unless expressly noted otherwise by the Examiner, all documents listed on the PTO-892 are cited in their entirety.
DECLARATION
The reissue declaration filed with this application (“January 2025 Declaration”) is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR § 1.175 and MPEP § 1414.
Applicant is respectfully reminded, “the oath/declaration must specifically identify an error” and “[a]ny error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.” MPEP § 1414 II.C. (emphasis added).
The January 2025 Declaration states “Assignee/Applicant seeks to correct error through reissue by submitting the attached narrowing amendments accompanying this reissue application.”
Therefore, the January 2025 Declaration does not identify an error by reference to a specific claim and does not identify the error by reference to specific claim language wherein lies the error. Accordingly, the reissue declaration does not comply with 37 CFR § 1.175.
A reissue declaration, properly identifying at least one error which is relied upon to support the reissue application, is required in response to this Office action.
SPECIFICATION
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR § 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
In claim 1, the language “an application comprising computer-executable instructions downloaded onto the memory, wherein the computer-executable instructions, when executed by the processor, cause the mobile telecommunications device to: determine, based on inputs received by the user interface and sensor data from the sensor set, a start of a driving period at which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, the driving period being defined by a duration from a start to an end of a vehicle journey of the vehicle;” and
In claim 4, the language “an application comprising computer-executable instructions downloaded onto the memory, wherein the computer-executable instructions, when executed by the processor, cause the mobile telecommunications device to: determine, based on inputs received by the user interface and sensor data from the sensor set, a start of a driving period during which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, the driving period being defined by a duration from a start to an end of a vehicle journey of the vehicle.”
CLAIM OBJECTIONS
37 CFR § 1.173(d) states:
(d) Changes shown by markings. Any changes relative to the patent being reissued that are made to the specification, including the claims but excluding “Large Tables” (§ 1.58(c)), a “Computer Program Listing Appendix” (§ 1.96(c)), a “Sequence Listing” (§ 1.821(c)), and a “Sequence Listing XML” (§ 1.831(a)) upon filing or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined.
Based upon a review of the preliminary amendment filed on the Actual Filing Date, and in light of 37 CFR § 1.173(d), the Examiner finds amended claims 1–24 are improperly marked up. All matter to be added or deleted by reissue must be indicated by underlining and bracketing, respectively, in accordance with Rule 173(d). Furthermore, all changes must be made with respect to the claim language appearing in the Patent Under Reissue.1 Appropriate correction is required.
Furthermore, 37 CFR § 1.173(c) states:
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
“[P]ursuant to 37 CFR 1.173(c), each claim amendment must be accompanied by an explanation of the support in the disclosure of the patent for the amendment (i.e., support for all changes made in the claim(s), whether insertions or deletions).” MPEP § 1453 II.
Based upon a review of the preliminary amendment filed on the Actual Filing Date, the remarks of section C. of the preliminary amendment, and in light of 37 CFR § 1.173(c), the Examiner finds there is insufficient explanation of support in the remarks for the amended/new claims 1–24. Applicant’s indication of support in the specification for the claim amendments as a whole is not sufficient, and an explanation of support for each individual claim amendment is required, in accordance with Rule 1.173(c).
BROADEST REASONABLE INTERPRETATION (BRI)
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111, MPEP § 2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01 I. Moreover, it is improper to import claim limitations from the specification, e.g., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01 II. Therefore, unless otherwise noted below, the Examiner will interpret the limitations of the Pending Claims using the broadest reasonable interpretation.
After careful review of the original specification, the Examiner finds he cannot locate any lexicographic definitions (either express lexicographic definitions or implied lexicographic definitions) with the required clarity, deliberateness, and precision. Because the Examiner cannot locate any lexicographic definitions with the required clarity, deliberateness, and precision, the Examiner concludes that Applicant is not his own lexicographer. See MPEP § 2111.01 IV.
The Examiner hereby adopts the following interpretations under the broadest reasonable interpretation standard. In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), the Examiner points to these other sources to support his interpretation of the claims.2 Additionally, these interpretations are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language. Finally, the following list is not intended to be exhaustive in any way:
computer (n.) “Any device capable of processing information to produce a desired result. […].” Microsoft Computer Dictionary (5th Ed. 2002).
executable (adj.) “Of, pertaining to, or being a program file that can be run. Executable files have extensions such as .bat, .com, and .exe.” Microsoft Computer Dictionary (5th Ed. 2002).
instruction (n.) “An action statement in any computer language, most often in machine or assembly language. Most programs consist of two types of statements: declarations and instructions.” Microsoft Computer Dictionary (5th Ed. 2002).
application (n.) “A program designed to assist in the performance of a specific task, such as word processing, accounting, or inventory management.” Microsoft Computer Dictionary (5th Ed. 2002).
server (n.) “1. On a local area network (LAN), a computer running administrative software that controls access to the network and its resources, such as printers and disk drives, and provides resources to computers functioning as workstations on the network. 2. On the Internet or other network, a computer or program that responds to commands from a client. For example, a file server may contain an archive of data or program files; when a client submits a request for a file, the server transfers a copy of the file to the client.” Microsoft Computer Dictionary (5th Ed. 2002).
CLAIM INTERPRETATION UNDER 35 USC § 112, SIXTH PARAGRAPH
The following is a quotation of pre-AIA 35 USC § 112, Sixth Paragraph3:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
“Application of 35 U.S.C. 112[ ¶ 6] is driven by the claim language, not by applicant’s intent or mere statements to the contrary included in the specification or made during prosecution. See In re Donaldson Co., 16 F.3d at 1194, 29 USPQ2d at 1850 (stating that 35 U.S.C. 112, sixth paragraph ‘merely sets a limit on how broadly the PTO may construe means-plus-function language under the rubric of reasonable interpretation’).” MPEP § 2181 I.
“A claim limitation is presumed to invoke 35 U.S.C. 112[ ¶ 6] when it explicitly uses the term ‘means’ or ‘step’ and includes functional language. The presumption that 35 U.S.C. 112[ ¶ 6] applies is overcome when the limitation further includes the structure, material or acts necessary to perform the recited function.” MPEP § 2181 I.
“By contrast, a claim limitation that does not use the term ‘means’ or ‘step’ will trigger the rebuttable presumption that 35 U.S.C. 112[ ¶ 6] does not apply. […]. Even in the face of this presumption, the examiner should nonetheless consider whether the presumption is overcome. The presumption that 35 U.S.C. 112[ ¶ 6] does not apply to a claim limitation that does not use the term ‘means’ is overcome when ‘the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.’ Williamson[ v. Citrix Online, LLC], 792 F.3d [1339,] 1349[…] (Fed. Cir. 2015) (en banc) (quoting Watts v. XL Systems, Inc., 232 F.3d 877, 880, 56 USPQ2d 1836, 1838 (Fed. Cir. 2000).” MPEP § 2181 I. (internal quotations of Williamson removed).
However, “section 112, ¶ 6, […] with respect to steps, […] is implicated only when steps plus function without acts are present. […] claiming a step by itself, or even a series of steps, does not implicate section 112, ¶ 6.” O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583 (Fed. Cir. 1997) (emphasis in original).
In other words, “[m]erely claiming a step without recital of a function is not analogous to a means plus a function.” O.I. Corp. v. Tekmar Co., id. (emphasis added).
Accordingly, examiners will apply 35 U.S.C. 112[ ¶ 6] to a claim limitation if it meets the following 3-prong analysis:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
MPEP § 2181 I.
“Each claim must be independently reviewed in order to determine if it is subject to the requirements of section 112, ¶ 6.” O.I. Corp. v. Tekmar Co., id.
In view of the above MPEP and Federal Circuit guidance, the Examiner has evaluated each claim under the 3-Prong Analysis set forth in MPEP § 2181 I. to determine whether any of the claim elements are subject to the requirements of § 112 ¶ 6. In the sections that follow, the Examiner will identify each claim limitation that is subject to the requirements of § 112 ¶ 6.
Functional Phrase #1 or FP#1
The first functional phrase to be considered is “application comprising […] computer-executable instructions, when executed by the processor, cause the mobile telecommunications device to: [1] determine, based on inputs received by the user interface and sensor data from the sensor set, a start of a driving period at which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, the driving period being defined by a duration from a start to an end of a vehicle journey of the vehicle […] [and] to cause the mobile telecommunications device to [2] register the start of the driving period in response to an initialization input generated automatically in response to the sensor data having predetermined values, wherein the initialization input is generated in response to sensor data reflecting a detected speed of the vehicle above a predetermined threshold.” Claim 1 (“Functional Phrase #1” or “FP#1”).
For purpose of discussion below, FP#1 is broken into the following three parts:
“application comprising […] computer-executable instructions” (“Introductory Phrase of FP#1);
“when executed by the processor, cause the mobile telecommunications device to” (“Linking Phrase of FP#1); and
“[1] determine, based on inputs received by the user interface and sensor data from the sensor set, a start of a driving period at which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, the driving period being defined by a duration from a start to an end of a vehicle journey of the vehicle […] [and] to cause the mobile telecommunications device to [2] register the start of the driving period in response to an initialization input generated automatically in response to the sensor data having predetermined values, wherein the initialization input is generated in response to sensor data reflecting a detected speed of the vehicle above a predetermined threshold” (“Function of FP#1”).
Prong (A)
In accordance with the MPEP, Prong (A) requires “the claim limitation uses the term ‘means’ […] or a term used as a substitute for ‘means’ that is a generic placeholder […] for performing the claimed function.”4 MPEP § 2181 I. (“Prong (A)”).5
As an initial matter, the Examiner finds that FP#1 does not use the term “means.” Therefore the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112 ¶ 6 is not invoked can be overcome. “Even in the face of this presumption, the examiner should nonetheless consider whether the presumption is overcome.” MPEP § 2181 I.
With respect to the presumption that 35 USC § 112 ¶ 6 is not invoked, “[t]he question is not whether a claim term recites any structure but whether it recites sufficient structure—a claim term is subject to § 112 ¶ 6 if it recites ‘function without reciting sufficient structure for performing that function.’ Williamson, 792 F.3d at 1348 (emphasis added) (quoting Watts, 232 F.3d at 880). [Emphasis in original.]” Egenera, Inc. v. Cisco Systems, Inc., 972 F.3d 1367, 1374 (Fed. Cir. 2020).
“And, again, the question is not whether [the claim term] is utterly devoid of structure but whether the claim term recites sufficient structure to perform the claimed functions.” Egenera at 1374 (emphasis added).
To help understand the meaning of “sufficient structure,” the MPEP and the Federal Circuit have stated that:
Sufficient structure exists when the claim language specifies the exact structure that performs the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.
See MPEP § 2181 I. quoting TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008).
Moreover, in assessing whether or not FP#1 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#1 in isolation, but the entire FP#1 including the Function of FP#1. See MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1342 (Fed. Cir. 2019) (“In assessing whether the claim limitation is in means-plus-function format, we do not merely consider the introductory phrase (e.g., ‘mechanical control assembly’) in isolation, but look to the entire passage including functions performed by the introductory phrase.”).
Based upon the ordinary meaning of the claim language, a consultation of dictionaries, and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#1 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#1. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#1, the Examiner finds that the claim language itself within FP#1 does not recite an algorithm for accomplishing the Function of FP#1. The Examiner also finds that the remainder of claim 1 also does not recite a complete algorithm for accomplishing the Function of FP#1. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#1 is not expressly recited in claim 1.
Furthermore, the Examiner has looked to both general and subject matter specific dictionaries6 and finds no evidence that the Introductory Phrase of FP#1, i.e., the term “application comprising […] computer-executable instructions,” has achieved recognition as a term denoting structure for performing the Function of FP#1. See above section titled “BROADEST REASONABLE INTERPRETATION (BRI).”
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “application comprising […] computer-executable instructions” has achieved recognition as denoting structure for performing the Function of FP#1.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “application comprising […] computer-executable instructions” is not an art-recognized structure to perform the Function of FP#1, and claim 1 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “application comprising […] computer-executable instructions” is not an art-recognized structure to perform the Function of FP#1, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#1 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#1 does not include sufficient structure for performing the Function of FP#1. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “application comprising […] computer-executable instructions” is a generic placeholder for performing the Function of FP#1, and therefore FP#1 meets Prong (A).
Prong (B)
In accordance with the MPEP, Prong (B) requires “the term ‘means’ […] or the generic placeholder is modified by functional language, typically, but not always linked by the transition word ‘for’ […] or another linking word or phrase, such as ‘configured to’ or ‘so that.’” MPEP § 2181 I. (“Prong (B)”).
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#1 (generic placeholder) is modified by the Function of FP#1 (functional language) linked by the Linking Phrase of FP#1. Therefore, the Examiner concludes that FP#1 meets Prong (B).
Prong (C)
In accordance with the MPEP, Prong (C) requires “the term ‘means’ […] or the generic placeholder is not modified by sufficient structure […] for performing the claimed function.” MPEP § 2181 I. (“Prong (C)”).
Based upon a review of FP#1, and for reasons already discussed above, the Examiner finds that FP#1 does not contain sufficient structure for performing the entire Function of FP#1. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#1 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#1 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#1.
Because FP#1 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#1 meets Prong (C). Because FP#1 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#1 invokes § 112 ¶ 6.
Corresponding Structure for FP#1
“The next step in construing a means-plus-function claim limitation is to look to the specification and identify the corresponding structure for that function.” In re Aoyama, 656 F3d 1293, 1297 (Fed. Cir. 2011) quoting Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333 (Fed. Cir. 2004). “Under this second step, structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Aoyama, 656 F3d at 1297 quoting Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003).
Furthermore, if the claimed phase is meant to cover software, “[i]t is well-established that the corresponding structure for a function performed by a software algorithm is the algorithm itself.” EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 621 (Fed. Cir. 2015). In other words, “[i]f special programming is required for a general-purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies.” Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012).
Based upon a review of the Patent Under Reissue and the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#1 to sufficient corresponding structure (i.e., an algorithm) found in the specification. See at least the '271 Patent at C3:L25–38 and C18:L30–39 for the closest disclosure of an algorithm.7 First, there is no disclosure of the entire Function of FP#1 such that the Examiner could find anything clearly linked or associated with the Function of FP#1. For example, there is no disclosure of “determine […] a start of a driving period […] the driving period being defined by a duration from a start to an end of a vehicle journey of the vehicle” clearly linked or associated with corresponding structure (e.g., an algorithm). Second, there is no disclosure of an algorithm (software structure) describing how to determine the start of the driving period “defined by a duration from a start to an end of a vehicle journey of the vehicle,” as claimed, based on both user input from the user interface and input from sensor data. As a first example, there is no disclosure of a particular “predetermined threshold” that would satisfy “the driving period being defined by a duration from a start to an end of a vehicle journey of the vehicle,” as claimed. Figure 12 shows an example threshold as a speed of 45 mph; however, that particular threshold would not result in a determination of a start of a driving period as “a duration from a start to an end of a vehicle journey of the vehicle,” as claimed. As a second example, there is no disclosure of a particular input received by the user interface that would satisfy “the driving period being defined by a duration from a start to an end of a vehicle journey of the vehicle,” as claimed. At C3:L25–30 an example input is given as “the user manually executing the application;” however, that particular input would not necessarily result in a determination of a start of a driving period as “a duration from a start to an end of a vehicle journey of the vehicle,” as claimed. At C18:L30–39 another example input is given as “start of the driving period may be manually entered by the user via the […] GUI;” however, that particular input would also not necessarily result in a determination of a start of a driving period as “a duration from a start to an end of a vehicle journey of the vehicle,” as claimed.
Because each of the Patent Under Reissue and the Original Disclosure fails to clearly link or associate the Function of FP#1 to sufficient corresponding structure, claim 1 is indefinite under 35 USC § 112 ¶ 2. A rejection under 35 USC § 112 ¶ 2 is set forth below for claim 1. Even though claim 1 is indefinite because there is not a disclosure of sufficient corresponding structure, for applying the prior art, the Examiner will interpret the Function of FP#1 under the BRI as if the claim does not invoke 35 USC § 112 ¶ 6.
Functional Phrase #2 or FP#2
The second functional phrase to be considered is “application comprising […] computer-executable instructions, when executed by the processor, cause the mobile telecommunications device to: determine, based on inputs received by the user interface and sensor data from the sensor set, a start of a driving period during which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, the driving period being defined by a duration from a start to an end of a vehicle journey of the vehicle […] [and] the start of the driving period being determined in response to an initialization input generated automatically in response to the sensor data having a predetermined value.” Claim 4 (“Functional Phrase #2” or “FP#2”).
For purpose of discussion below, FP#2 is broken into the following three parts:
“application comprising […] computer-executable instructions” (“Introductory Phrase of FP#2);
“when executed by the processor, cause the mobile telecommunications device to” (“Linking Phrase of FP#2); and
“determine, based on inputs received by the user interface and sensor data from the sensor set, a start of a driving period during which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, the driving period being defined by a duration from a start to an end of a vehicle journey of the vehicle […] [and] the start of the driving period being determined in response to an initialization input generated automatically in response to the sensor data having a predetermined value” (“Function of FP#2”).
Prong (A)
As an initial matter, the Examiner finds that FP#2 does not use the term “means.” Therefore the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112 ¶ 6 is not invoked can be overcome.
Moreover, in assessing whether or not FP#2 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#2, but the entire FP#2 including the Function of FP#2.
Based upon consultation of dictionaries and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#2 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#2. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#2, the Examiner finds that the claim language itself within FP#2 does not recite an algorithm for accomplishing the Function of FP#2. The Examiner also finds that the remainder of claim 4 also does not recite an algorithm for accomplishing the Function of FP#2. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#2 is not expressly recited in claim 4.
Similar to the above analysis of FP#1, the Examiner has looked to both general and subject matter specific dictionaries and finds no evidence that the term “application comprising […] computer-executable instructions” has achieved recognition as a term denoting structure to perform the Function of FP#2. See above section titled “BROADEST REASONABLE INTERPRETATION (BRI).”
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “application comprising […] computer-executable instructions” has achieved recognition as denoting structure to perform the Function of FP#2.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “application comprising […] computer-executable instructions” is not an art-recognized structure to perform the Function of FP#2, and claim 4 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “application comprising […] computer-executable instructions” is not an art-recognized structure to perform the Function of FP#2, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#2 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#2 does not include sufficient structure for performing the Function of FP#2. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “application comprising […] computer-executable instructions” is a generic placeholder for performing the Function of FP#2, and therefore FP#2 meets Prong (A).
Prong (B)
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#2 (generic placeholder) is modified by the Function of FP#2 (functional language) linked by the Linking Phrase of FP#2. Therefore, the Examiner concludes that FP#2 meets Prong (B).
Prong (C)
Based upon a review of FP#2, and for reasons already discussed above, the Examiner finds that FP#2 does not contain sufficient structure for performing the entire Function of FP#2. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#2 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#2 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#2.
Because FP#2 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#2 meets Prong (C). Because FP#2 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#2 invokes § 112 ¶ 6.
Corresponding Structure for FP#2
Based upon a review of the Patent Under Reissue and the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#2 to sufficient corresponding structure (i.e., an algorithm) found in the specification. See at least the '271 Patent at C3:L25–38 and C18:L30–39 for the closest disclosure of an algorithm.8 First, there is no disclosure of the entire Function of FP#2 such that the Examiner could find anything clearly linked or associated with the Function of FP#2. For example, there is no disclosure of “determine […] a start of a driving period […] the driving period being defined by a duration from a start to an end of a vehicle journey of the vehicle” clearly linked or associated with corresponding structure (e.g., an algorithm). Second, there is no disclosure of an algorithm (software structure) describing how to determine the start of the driving period “defined by a duration from a start to an end of a vehicle journey of the vehicle,” as claimed, based on both user input from the user interface and input from sensor data. As a first example, there is no disclosure of a particular “predetermined value” that would satisfy “the driving period being defined by a duration from a start to an end of a vehicle journey of the vehicle,” as claimed. Figure 12 shows an example predetermined value as a speed of 45 mph; however, that particular value would not result in a determination of a start of a driving period as “a duration from a start to an end of a vehicle journey of the vehicle,” as claimed. As a second example, there is no disclosure of a particular input received by the user interface that would satisfy “the driving period being defined by a duration from a start to an end of a vehicle journey of the vehicle,” as claimed. At C3:L25–30 an example input is given as “the user manually executing the application;” however, that particular input would not necessarily result in a determination of a start of a driving period as “a duration from a start to an end of a vehicle journey of the vehicle,” as claimed. At C18:L30–39 another example input is given as “start of the driving period may be manually entered by the user via the […] GUI;” however, that particular input would also not necessarily result in a determination of a start of a driving period as “a duration from a start to an end of a vehicle journey of the vehicle,” as claimed.
Because each of the Patent Under Reissue and the Original Disclosure fails to clearly link or associate the Function of FP#2 to sufficient corresponding structure, claim 4 is indefinite under 35 USC § 112 ¶ 2. A rejection under 35 USC § 112 ¶ 2 is set forth below for claim 4. Even though claim 4 is indefinite because there is not a disclosure of sufficient corresponding structure, for applying the prior art, the Examiner will interpret the Function of FP#2 under the BRI as if the claim does not invoke 35 USC § 112 ¶ 6.
Functional Phrase #3 or FP#3
The third functional phrase to be considered is “application comprising […] computer-executable instructions, when executed by the processor, cause the mobile telecommunications device to: process, using the processor, sensor data representing at least acceleration of the vehicle and position of the vehicle from the sensor set to generate derived driving information […] and the derived driving information includes a driving score.” Claims 6 and 7 (“Functional Phrase #3” or “FP#3”).
For purpose of discussion below, FP#3 is broken into the following three parts:
“application comprising […] computer-executable instructions” (“Introductory Phrase of FP#3);
“when executed by the processor, cause the mobile telecommunications device to” (“Linking Phrase of FP#3); and
“process, using the processor, sensor data representing at least acceleration of the vehicle and position of the vehicle from the sensor set to generate derived driving information […] and the derived driving information includes a driving score” (“Function of FP#3”).
Prong (A)
As an initial matter, the Examiner finds that FP#3 does not use the term “means.” Therefore the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112 ¶ 6 is not invoked can be overcome.
Moreover, in assessing whether or not FP#3 meets Prong (A), the Examiner must not only consider the Introduct