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 .
Reissue Applications
This application seeks to reissue US Patent No. 11,610,229 (“the ‘229 patent”). In a preliminary amendment, claims 1-2, 7-10, and 13-16 have been amended. This is a broadening reissue application.
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,610,229 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
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 application.
These 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.
Claim Interpretation – Preamble and Intended Use
The preambles of claims 1 and 9 are not given patentable weight. Language in a claim’s preamble which describes the purpose or intended use of the invention does not limit the claim when it does not result in a “manipulative difference between the claimed invention and the prior art.” MPEP 2111.02 II. The preambles of claims 1 and 9 recite: “A method for navigating a vehicle configured with exterior graphic messaging intended for viewing by occupants of other vehicles.” This describes the intended use of the invention. That the vehicle being navigated is “configured with exterior graphic messaging intended for viewing by occupants of other vehicles” does not provide any manipulative difference to the process steps recited in the claim. These preambles are therefore not granted patentable weight.
Claims 15 and 16 also include non-limiting language. A device claim is not limited by “claim language that does not limit a claim to a particular structure.” MPEP 2111.04 I. Claims 15 and 16 recite that the mobile device includes “a mobile device software application for facilitating navigation of a vehicle configured with exterior graphic messaging intended for viewing by occupants of other vehicles.” This language is only taken to require that the mobile device software application facilitates navigation of the vehicle. The fact that the vehicle has an exterior graphic message, and that this message is intended for viewing by occupants of other vehicles, provides no structural or functional limitation to the devices that are recited in claims 15 and 16.
Objection, 37 CFR 1.175 – Defective Reissue Declaration
This application is objected to for failing to comply with 37 CFR 1.175. The declaration that was filed with this application states that the “application is a broadening reissue, and the Applicant seeks to broaden claim 1, 9, 15, and 16.” This is not a sufficient error statement. When a reissue application is filed to correct errors in the claims, the errors in the claims must be identified in the declaration “by reference to the specific claim(s) and the specific claim language wherein lies the error.” MPEP 1414 II. The applicant is required to submit a supplemental declaration that conforms to the requirements of 37 CFR 1.175.
Claim Objections
Claims 15 and 16 are objected to because of the following informalities: the claims recite “send, to the computation platform, a request for vehicle data for the vehicle wherein based on the vehicle mobility data and traffic volume data.” Appropriate correction is required.
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 1-3, 5, 7-10, and 13-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 is representative, and includes the limitations “sending … mobility data related to at least locations of the vehicle at a plurality of times”; “sending … a request for vehicle data [that is, a route recommendation: see ‘229 patent throughout] … based on the mobility data and traffic volume”; “receiving … the vehicle data and navigating the vehicle in accordance with the vehicle data.” The claimed invention involves one party in a vehicle that informs another party of its locations, then requests a route recommendation based on past locations and traffic volume. Upon receiving the requested route recommendation, the party in the vehicle navigates the vehicle by following the recommended route. This amounts to mental processes of managing interactions and following instructions, which is an abstract idea See MPEP 2106.04(a)(2)(II)(C).
The claims are broad, and at their most fundamental level recite tailoring a route recommendation for a vehicle based on past locations and on traffic volume. This concept is similar to those that have been found by the courts to be abstract ideas. See Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015): (“information tailoring is ‘a fundamental ... practice long prevalent in our system....’”); and SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950 (Fed. Cir. 2014): (“comparing new and stored information and using rules to identify … options” is an abstract idea). Therefore the claims recite an abstract idea.
The claims include no limitations outside of the abstract idea that integrate the judicial exception into a practical application. Outside of the above-described abstract idea, the claims only recite the use of known technology, including a mobile device having a GPS receiver which is associated with the vehicle, and the device communicates with a computation platform using wireless signals. These limitations only generally link the abstract idea to a technological field. See MPEP 2106.05(f). There is no improvement to the technological field recited in the claims; instead, the claims only apply the judicial exception through the use of known computing tools. MPEP 2106.05(f).
The claims do not include additional elements that amount to significantly more than the judicial exception. Outside of the abstract idea, the claims recite a GPS receiver and mobile device associated with the vehicle that performs two-way communication with a computation platform using wireless signals. Official notice is taken that these elements were widely known at the time this invention was filed, thus amount to only well-understood, routine, conventional activity in the field. See MPEP 2106.05(d). As such, these claim elements do not amount to significantly more than the abstract idea.
Claims 9, 15, and 16 are also directed to abstract ideas without significantly more for reasons similar to those given above. Claims 15 and 16 include additional limitations, requiring a device that includes a display, processor, and a software application. Official notice is taken that these elements are likewise well-understood, routine, conventional activity in the field, and do not amount to significantly more than the abstract idea. See MPEP 2106.05(d).
Other than claims 4, 6, 11, and 12 (see below), the dependent claims recite only further abstract ideas and/or well-known elements that neither integrate the abstract idea into a practical application nor amount to significantly more than the abstract idea.
Claim 4 recites “the vehicle mobility data … is used to identify one or more of a plurality of road segments in which the vehicle was present and a number of potential visual impressions of the vehicle within the one or more of the plurality of road segments is estimated using traffic volume data associated with the plurality of road segments.” Claim 11 includes similar language. Estimating potential visual impression based on past vehicle locations and on traffic data describes a practical application that falls outside of the abstract idea. See e.g. ‘229 patent, 6:46-7:14. As such, these claims and their dependents are not rejected under §101.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 includes the following limitation: “sending, from the mobile device to the computation platform, a request for vehicle data for the vehicle generated by the mobile device application.” This limitation is indefinite because it is not clear what is “generated by the mobile device application” – the request, or the vehicle data for the vehicle.
Claim 5 includes the limitation “the number of potential visual impressions.” This term lacks antecedent basis in the claim.
Claim Rejection, 35 USC § 251 – Defective Reissue Declaration
Claims 1-16 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175. The nature of the defect in the declaration is set forth in the discussion above in this Office action.
Claim Rejection, 35 USC § 251 – Original Patent
Claims 1-16 are rejected for violating the original patent requirement of §251. Claims of a reissue application “must be for the same invention as that disclosed as being the invention in the original patent.” MPEP 1412.01 I. To satisfy the original patent requirement where a new invention is sought by reissue, "… the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention." Id., quoting Antares Pharma Inc., v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 1363.
The independent claims of this application have been broadened to cover an invention that is not described in the specification as a separate invention. Original claim 1 of the ‘229 patent recites that the mobile device requests and receives a route recommendation that “corresponds to vehicle routes associated with a higher number of viewing impression of the exterior graphic messaging by the occupants of other vehicles than other potential vehicle routes,” and navigating the vehicle in accordance with this route recommendation. Claim 1 has been amended in this reissue application to now only recite receiving and requesting “vehicle data,” and navigating according to this vehicle data. Claims 9, 15, and 16 have been amended similarly. By removing the limitations describing that a route recommendation is received that “corresponds to vehicle routes associated with a higher number of viewing impression of the exterior graphic messaging by the occupants of other vehicles than other potential vehicle routes,” the amended claims violate the original patent requirement.
The ‘229 patent describes throughout that the invention relates to increasing visual impressions of graphics that are displayed on the exterior of the vehicle. Estimating and increasing impressions is clearly “what the patentee objectively intended as the invention.” MPEP 1412.01 I. The specification does not clearly and unequivocally disclose a separate, broader invention of navigating a vehicle using data that is unrelated to viewing impressions. Because the claims have been amended to cover this broader invention, they violate the original patent requirement of §251.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-4, 6-11, and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Dukach, US 20040036622 in view of Lobsenz, US 20130246181.
Claim 1: Dukach discloses a method for navigating a vehicle configured with exterior graphic messaging intended for viewing by occupants of other vehicles (While this preamble language does not limit the claim, this is taught by Dukach. See Dukach Abstract and ¶396), the method including:
sending, from a mobile device associated with the vehicle and including a GPS receiver, wireless signals to a computation platform wherein the wireless signals include vehicle mobility data related to at least locations of the vehicle at a plurality of times wherein the vehicle mobility data is generated by a mobile device application executing on the mobile device (The mobile unit location history is mobility data that describes past locations of the vehicle, which are determined by a GPS receiver. Id. Abstract, ¶¶ 134 and 158. This location information is transmitted from the mobile device (therefore by software executing on the mobile device) to a central computation platform. Id. ¶143. Location information is sent by wireless signal. Id. ¶145. See also ¶391, where the vehicle reports its location when determining compensation for a journey.);
sending, from the mobile device to the computation platform, a request for vehicle data for the vehicle generated by the mobile device application wherein the vehicle data is based on the vehicle mobility data (A driver of a vehicle that contains external imaging is compensated for completing a particular trip based on times and locations of the vehicle and the value of displaying the external imaging. Id. ¶390. Upon completion of this journey, a routing recommendation, or vehicle data, is sent to the driver, indicating different routes that could be taken and the amount that those routes would earn the driver. Id. ¶394. Because the initial journey and route are determined based on a request from the driver (via the mobile device) – see ¶396 – the delivery of the vehicle data to the driver is based on receiving this request from the mobile device.);
receiving, from the computation platform, the vehicle data at the mobile device; and navigating the vehicle in accordance with the vehicle data provided by the mobile device application (The mobile unit receives and displays the route recommendation, or vehicle data, and the driver may “alter his driving patterns” (that is, navigate the vehicle in the future) in accordance with this information. Id. ¶¶ 394-395.).
Dukach fails to disclose that the vehicle data is based on traffic volume data.
However, Lobsenz discloses determining a number of exposures to a vehicle-mounted advertisement based on the traffic volume data (Traffic volume data is used to estimate exposure to a vehicle-mounted advertisements of various routes. Lobsenz ¶¶ 11-12 and 19).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Dukach with teachings found in Lobsenz. Dukach estimates the amount of money that a driver could have earned if a different route were taken. See Dukach ¶394. The POSITA would recognize that this estimation would be improved by taking into account traffic volume along those alternate routes, as taught in Lobsenz. Together, these references would have suggested to the POSITA to also take into account traffic volume data in the vehicle data (i.e. the route recommendation) when presenting alternate routes, as this would enable greater profit for the driver, greater revenue for the advertiser, and more accurate targeting and impression estimation. See e.g. Dukach ¶394 and Lobsenz ¶¶14-15. When Dukach is modified to rely in part on traffic volume when making route recommendations, the vehicle data is based on mobility data (Dukach ¶391) and traffic volume data (Lobsenz ¶¶11-12 and 19).
Claim 2: Dukach-Lobsenz discloses that the vehicle mobility data includes vehicle location data for the vehicle provided during navigation (Dukach ¶391).
Claim 3: Dukach-Lobsenz discloses that the vehicle mobility data is directed to a receiving application programming interface (API) and includes GPS location latitude and longitude and time and date data (Dukach ¶¶272-274 – data is transmitted and received through the platform API. GPS location information (known by the POSITA to include latitude and longitude) and time/date data is transmitted. Id. ¶¶ 134 and 391).
Claim 4: Dukach-Lobsenz discloses that the vehicle mobility data included within the wireless signals is sent to a receiving application programming interface (API) gateway (Dukach ¶¶272-274) and used to identify one or more of a plurality of road segments in which the vehicle was present and wherein a number of potential visual impressions of the vehicle within the one or more of the plurality of road segments is estimated using traffic volume data associated with the plurality of road segments (Dukach ¶¶ 390-391, Lobsenz ¶¶ 19 and 49. The POSITA would likewise have found it obvious to modify Dukach to determine the amount owed to a driver for completed trips using traffic volume data, as taught in Lobsenz, as this would result in a more accurate count of impressions.).
Claim 6: Dukach-Lobsenz discloses that a set of road segments traversed by the vehicle is determined based upon the mobility data and the number of potential impressions is determined using portions of the traffic volume data corresponding to the set of road segments (Dukach ¶¶ 391-395, Lobsenz ¶¶ 11-12 and 19).
Claim 7: Dukach-Lobsenz discloses sending the request for vehicle data to an application programming interface (API) (Dukach ¶272).
Claim 8: Dukach-Lobsenz discloses sending the vehicle mobility data to a receiving application programming interface (API) (Dukach ¶272).
Claim 9: Dukach discloses a method for navigating a vehicle configured with exterior graphic messaging intended for viewing by occupants of other vehicles (While this preamble language does not limit the claim, this is taught by Dukach. See Dukach Abstract and ¶396), the method including:
sending, from a mobile device associated with the vehicle and including a GPS receiver, wireless signals to a computation platform wherein the wireless signals include vehicle mobility data related to at least locations of the vehicle at a plurality of times (The mobile unit location history is mobility data that describes past locations of the vehicle, which are determined by a GPS receiver. Id. Abstract, ¶¶ 134 and 158. This location information is transmitted from the mobile device (therefore by software executing on the mobile device) to a central computation platform. Id. ¶143. Location information is sent by wireless signal. Id. ¶145. See also ¶391, where the vehicle reports its location when determining compensation for a journey.);
sending, from the mobile device to the computation platform, a request for vehicle data for the vehicle wherein the vehicle data is based on the vehicle mobility data (A driver of a vehicle that contains external imaging is compensated for completing a particular trip based on times and locations of the vehicle and the value of displaying the external imaging. Id. ¶390. Upon completion of this journey, a routing recommendation, or vehicle data, is sent to the driver, indicating different routes that could be taken and the amount that those routes would earn the driver. Id. ¶394. Because the initial journey and route are determined base on a request from the driver (via the mobile device) – see ¶396 – the delivery of the vehicle data to the driver is based on receiving this request from the mobile device.);
receiving, from the computation platform, the vehicle data at the mobile device; displaying, on a display of the mobile device, the vehicle data wherein the vehicle is navigated in accordance with the vehicle data (The mobile unit receives and displays the route recommendation, or vehicle data, and the driver navigates the vehicle based thereon. Id. ¶¶ 394-395.).
Dukach fails to disclose that the vehicle data is based on traffic volume data.
However, Lobsenz discloses determining a number of exposures to a vehicle-mounted advertisement based on the traffic volume data (Traffic volume data is used to estimate exposure to a vehicle-mounted advertisements of various routes. Lobsenz ¶¶ 11-12 and 19).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Dukach with teachings found in Lobsenz. Dukach estimates the amount of money that a driver could have earned if a different route were taken. See Dukach ¶394. The POSITA would recognize that this estimation would be improved by taking into account traffic volume along those alternate routes, as taught in Lobsenz. Together, these references would have suggested to the POSITA to also take into account traffic volume data in the vehicle data (i.e. the route recommendation) when presenting alternate routes, as this would enable greater profit for the driver, greater revenue for the advertiser, and more accurate targeting and impression estimation. See e.g. Dukach ¶394 and Lobsenz ¶¶14-15. When Dukach is modified to rely in part on traffic volume when making route recommendations, the vehicle data is based on mobility data (Dukach ¶391) and traffic volume data (Lobsenz ¶¶11-12 and 19).
Claims 10-11 and 13-14: see rejection of claims 2, 4, 7, and 8, respectively.
Claims 15 and 16: the Dukach-Lobsenz combination described above discloses a mobile device including:
a GPS receiver (Dukach Abstract and ¶158);
a processor (Dukach Fig. 1: 140); and
a mobile device software application (Dukach Fig. 1: 160) for facilitating navigation of a vehicle configured with exterior graphic messaging intended for viewing by occupants of other vehicles, the mobile device software application being executed by the processor and configured to perform the method of claims 1 and 9, respectively (see rejection of claims 1 and 9 above).
Claims 5 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Dukach-Lobsenz in view of Canaday, US 20060287918.
Claims 5 and 12: Dukach-Lobsenz fails to disclose that an estimated number of visual impressions is determined by modifying the number of potential visual impressions in accordance with an environmental filter wherein the environmental filter relates at least to an anticipated visibility of the vehicle to other vehicles present within one or more of a plurality of road segments.
However, Canaday discloses that an estimated number of visual impressions is determined by modifying a number of potential visual impressions in accordance with an environmental filter wherein the environmental filter relates at least to an anticipated visibility of the vehicle to other vehicles present within one or more of a plurality of road segments (The geographical environment in which a vehicle-mounted advertisement is located (e.g., obscuring landscape features) is used to modify the potential number of visual impressions of the advertisement. ¶35).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Dukach-Lobsenz with Canaday, the rationale being to generate more accurate impression information.
Relevant Prior Art
Prior art that is not relied upon in the above rejections, but is relevant to the claimed invention, includes:
Rowley, US 20060149461. Rowley teaches a system where a vehicle-based mobile unit sends past location information, or mobility data, to a platform. Rowley Abstract and ¶6. The platform uses this mobility data and traffic volume information to provide, upon request, a route recommendation to the mobile unit. Id. ¶¶ 20-21 and 34.
McGavran, US 20140278070, includes similar disclosures. See ¶¶219-226.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J HANCE whose telephone number is (571)270-5319. The examiner can normally be reached M-F 11:00am-7:00pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached at (571) 270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J HANCE/Primary Examiner, Art Unit 3992
Conferees:
/CHARLES R CRAVER/Reexamination Specialist, Art Unit 3992
/M.F/Supervisory Patent Examiner, Art Unit 3992