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 .
Status of the Claims
This action is in response to the applicant’s filing on January 28, 2025. Claims 1-20 are pending and examined below.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on January 28, 2025 and March 14, 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 1 of the current application can be mapped directly to the limitations of claim 1 of U.S. Patent No. 12,235,124.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 2 of the current application can be mapped directly to the limitations of claim 3 of U.S. Patent No. 12,235,124.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 3 of the current application can be mapped directly to the limitations of claim 4 of U.S. Patent No. 12,235,124.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 4 of the current application can be mapped directly to the limitations of claim 7 of U.S. Patent No. 12,235,124.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 5 of the current application can be mapped directly to the limitations of claim 8 of U.S. Patent No. 12,235,124.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 6 of the current application can be mapped directly to the limitations of claim 9 of U.S. Patent No. 12,235,124.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 7 of the current application can be mapped directly to the limitations of claim 10 of U.S. Patent No. 12,235,124.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 8 of the current application can be mapped directly to the limitations of claim 11 of U.S. Patent No. 12,235,124.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 9 of the current application can be mapped directly to the limitations of claim 12 of U.S. Patent No. 12,235,124.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 10 of the current application can be mapped directly to the limitations of claim 13 of U.S. Patent No. 12,235,124.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 11 of the current application can be mapped directly to the limitations of claim 14 of U.S. Patent No. 12,235,124.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 12 of the current application can be mapped directly to the limitations of claim 15 of U.S. Patent No. 12,235,124.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 13 of the current application can be mapped directly to the limitations of claim 17 of U.S. Patent No. 12,235,124.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 17 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 14 of the current application can be mapped directly to the limitations of claims 3 and 17 of U.S. Patent No. 12,235,124. Also, it would have been obvious to one of ordinary skill in the art before the effective date of the present invention to modify the reference patent to combine the subject matter of claims 3 and 17 in order to achieve the benefits of both in a single embodiment.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 and 17 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 15 of the current application can be mapped directly to the limitations of claims 4 and 17 of U.S. Patent No. 12,235,124. Also, it would have been obvious to one of ordinary skill in the art before the effective date of the present invention to modify the reference patent to combine the subject matter of claims 4 and 17 in order to achieve the benefits of both in a single embodiment.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7 and 17 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 16 of the current application can be mapped directly to the limitations of claims 7 and 17 of U.S. Patent No. 12,235,124. Also, it would have been obvious to one of ordinary skill in the art before the effective date of the present invention to modify the reference patent to combine the subject matter of claims 7 and 17 in order to achieve the benefits of both in a single embodiment.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 17 of the current application can be mapped directly to the limitations of claim 18 of U.S. Patent No. 12,235,124.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 18 of the current application can be mapped directly to the limitations of claim 19 of U.S. Patent No. 12,235,124.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 19 of the current application can be mapped directly to the limitations of claim 20 of U.S. Patent No. 12,235,124.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. 12,235,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims cover the same inventive concept, and each of the limitations of claim 20 of the current application can be mapped directly to the limitations of claim 20 of U.S. Patent No. 12,235,124.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 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 claims 1 and 13 are directed toward non-statutory subject matter, as shown below:
STEP 1: Do claims 1 and 13 fall within one of the statutory categories? Yes. The claims are directed toward a machine and a process which falls within one of the statutory categories.
STEP 2A (PRONG 1): Are the claims 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 independent claims (claims 1 and 13) recite the limitation of “determine/determining a level of uncertainty indicating a likelihood as to where at least one of a pickup location or a drop off location will be for a point of interest of the trip at a particular point in time”. Under its broadest reasonable interpretation, this limitation, as drafted, can reasonably be performed in the human mind or by a human using a pen and paper, otherwise considered a mental process, which is an abstract idea. For example, the claim limitations encompass a person looking at (observing) the data and determines a level of uncertainty indicating a likelihood as to where at least one of a pickup location or a drop off location will be for a point of interest of the trip at a particular point in time. 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). As such, the claim encompasses a user (person) simply determining a level of uncertainty indicating a likelihood as to where at least one of a pickup location or a drop off location will be for a point of interest of the trip at a particular point in time in his/her mind or by a human using a pen and paper. The mere nominal recitation of one or more processors (claims 1 and 13) or a computing device (claim 13) does not take the claim limitation out of the mental processes grouping. Thus, the claim recites a mental process.
STEP 2A (PRONG 2): Do the claims recite additional elements that integrate the judicial exception into a practical application? No, the claims do 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.
Claims 1 and 13 do not recite any of the exemplary considerations that are indicative of an abstract idea having been integrated into a practical application. This judicial exception is not integrated into a practical application because the claim(s) recites additional elements of “in response to receiving inputs from one or more systems of a vehicle operating in an autonomous driving mode, generate/generating information regarding at least one of a condition or a situation relevant to a trip”, “cause/causing a representation of the determined level of uncertainty to be displayed on a map of a user interface using at least one of shading, highlighting, color, or a gradient”, one or more processors (claims 1 and 13), and a computing device (claim 13). The generating step is recited at a high level of generality and amounts to mere pre- or post-solution actions, which is a form of insignificant extra-solution activity. The causing step is recited at a high level of generality (i.e. as a general means of mere displaying of data) and amounts to mere post-solution actions, which is a form of insignificant extra-solution activity. Regarding the additional limitation(s) of “one or more processors” in claims 1 and 13 and “a computing device” in claim 13, the Examiner submits the limitations are merely tool(s) being used to perform the abstract idea (or instructions to implement the abstract idea on a computer). Further, the “one or more processors” and “a computing device” are recited at a high level of generality and amounts to no more than mere instructions to apply the exception using a generic computer. The component(s) merely automate(s) the aforementioned step(s) and thus do/does not integrate a judicial exception into a “practical application”. See MPEP 2106.05(f). These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of computers. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014). Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claims are directed to the abstract idea.
STEP 2B: Do the claims recite additional elements that amount to significantly more than the judicial exception? No, the claims do 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 claim(s) does/do not recite any specific limitation or combination of limitations that are not well-understood, routine, conventional (WURC) activity in the field. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of “the one or more processors” and “the computing device” amount to nothing more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the additional elements in the claims amount to no more than insignificant extra-solution activity. 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 performance of an action 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.
CONCLUSION
Thus, since claims 1 and 13 are: (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 claims 1 and 13 are directed towards non-statutory subject matter.
Examiner additionally notes claims 2-12 depend from claim 1 and claims 14-20 depend from claim 13.
Dependent claims 2-12 and 14-20 further limit the abstract idea without integrating the abstract idea into practical application or adding significantly more. For example, in claim 2, the additional limitations of “identifying a location variance based on one or more of traffic congestion, a street regulation, or a weather condition” is further step that, under their broadest reasonable interpretation, covers performance of the limitation in the mind or by a human using a pen and paper using a similar analysis applied to claims 1 and 13 above. As a further example, in claim 3, the “evaluating historical information associated with the point of interest” is further step that, under their broadest reasonable interpretation, covers performance of the limitation in the mind or by a human using a pen and paper using a similar analysis applied to claims 1 and 13 above.
As such, claims 1-20 are rejected under 35 USC 101 as being drawn to an abstract idea without significantly more, and thus are ineligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Flier et al. (US 20170059347 A1) regarding a system for determining candidate pick-up locations.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE S. PARK whose telephone number is (571)272-3151. The examiner can normally be reached Mon-Thurs 9:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anne M 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.
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/K.S.P./Examiner, Art Unit 3666
/ANNE MARIE ANTONUCCI/Supervisory Patent Examiner, Art Unit 3666