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 .
Response to Amendment
Applicant’s amendments to the independent claims have overcome the previous 101 rejections.
On page 15 (allowable subject matter section) of the non-final rejection, while allowable subject matter was indicated in claim 7, this was in regards to prior art (i.e. U.S.C 102 and U.S.C 103 type rejections) not in regards to U.S.C 101.
As was noted on in that section, claim 7 was rejected under U.S.C 101; as such newly added claim 15 contains both claims 1 and 7 limitations and it is still rejected under U.S.C 101 for the same reasons as claims 1 and 7 of the non-final rejection.
This section did not state that integrating claim 1 and 7 together would overcome the abstract idea rejection; it only indicated that no prior art was found to teach or render obvious the subject matter of claim 7.
Claim Rejections - 35 USC § 101
To summarize the below 101 rejections; newly added claim 15 is effectively equivalent (if broader) to the originally examined claims 1 and 7; originally examined claims 1 and 7 were rejected under U.S.C 101 as directed to an abstract idea; this still holds true for claim 15 and its dependents for the same reasons as the abstract idea 101 rejection of claims 1, 6 and 7 of the non-final rejection.
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 15-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding Claim 15,
On January 7, 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 claim 1 is directed toward non-statutory subject matter, as shown below:
STEP 1: Does claim 15 fall within one of the statutory categories? Yes. The claim is directed toward a device.
STEP 2A (PRONG 1): Is the claim directed to a law of nature, a natural phenomenon or an abstract idea? Yes, the claim is 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 device of claim 15 is directed a mental process that can be practicably performed in the human mind and, therefore, an abstract idea. It merely consists of having memory of predetermined scenarios (this is equivalent to a person having memory of how intersection layouts, the layout of merge ramps and highways, etc) and general purposes rules (this is equivalent to a person having memory of yield rules for vehicles, speed limits for certain areas (e.g. schools zones), etc).
Then based on a received route, dividing it into segments, which is a mental process which can be done mentally by thinking about the layout of the route and recognizing “segments” based on previous knowledge of intersection locations, merges, etc.
The assigning general scenarios to the corresponding route segments is a mental determination reasonably performed in the human mind at the level of generality claimed. E.g. a person could recognize that there is a 4-way intersection and thus think of general layout of 4-way intersections.
The “generate” an overall safety rule is a mental process which can be performed in the human mind in that one can think of all the individual (scenario safety rules) and mentally order them in the expected sequence in which one travels the route.
The person than can mentally confirm that each portion of their rule/solution connects validly with the following portion (e.g. they can confirm that the lane position at the end of one portion results in a valid lane such that they can reach start the next portion of the solution/rule)
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? No, the claim does not recite additional elements that integrate the judicial exception into a practical application.
With regard to STEP 2A (prong 2), whether the claim recites additional elements that integrate the judicial exception into a practical application, the guidelines provide the following exemplary considerations that are indicative that an additional element (or combination of elements) may have integrated the judicial exception into a practical application:
an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
While the guidelines further state that the exemplary considerations are not an exhaustive list and that there may be other examples of integrating the exception into a practical application, the guidelines also list examples in which a judicial exception has not been integrated into a practical application:
an additional element merely recites the words “apply it” (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea;
an additional element adds insignificant extra-solution activity to the judicial exception; and
an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use.
Claim 15 does not recite any of the exemplary considerations that are indicative of an abstract idea having been integrated into a practical application. While the claim does recite that the device physically is a memory and processor this is merely using a computer as a tool to perform the abstract idea. Additionally while the claim recites that the scenarios for an autonomously moving body “to execute a predetermined driving operation” this is merely linking the scenarios/rules to the field of autonomous navigation it is not actually positively claiming the execution of a driving operation only that the scenarios and rules are linked to this operation. (i.e. this limitation is a link to a field of use/technological environment at a high level of generality and not positively claiming a vehicle control response).
While the data is selected and transmitted, it is not transformed by any steps of the method, or used implement a specific control of the vehicle.
Also, as noted above, merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea is indicative that the judicial exception has not been integrated into a practical application. .
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No, the claim does not recite additional elements that amount to significantly more than the judicial exception.
With regard to STEP 2B, whether the claims recite additional elements that provide significantly more than the recited judicial exception, the guidelines specify that the pre-guideline procedure is still in effect. Specifically, that examiners should continue to consider whether an additional element or combination of elements:
adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
Claim 15 does not recite any specific limitation or combination of limitations that are not well-understood, routine, conventional (WURC) activity in the field. Receiving and performing determinations on data is a well-understood, routine, and conventional use of computers, such as the memory and processor in claim 15.
CONCLUSION
Thus, since claim 15 is: (a) directed toward an abstract idea, (b) does not recite additional elements that integrate the judicial exception into a practical application, and (c) does not recite additional elements that amount to significantly more than the judicial exception, it is clear that claim 1 is directed towards non-statutory subject matter.
Regarding Claim 16, the confirming of connectivity, at the level of generality recited specifically of a post condition of a preceding scenario satisfies a precondition of the following, it a mental determination reasonably performed in the human mind in that they can mentally think of the route and what they need to do at each section (intersection, merge, etc) and how the results of one segment (e.g. what lane a person’s car leaves an intersection through) affects an upcoming section (e.g. which side of the road is an upcoming exit on) and if there are points which there are connectivity issues (e.g. the ideal turn would result in being on the wrong side of the road for an upcoming merge).
Regarding Claims 17-18 the strengthening and relaxing of the rules as recited is amental process reasonably performed in the human mind, this would be equivalent to a person mentally prioritizing safely exiting an intersection in a proper lane (strengthen post-condition of preceding scenario) over being in a proper most lane for an upcoming exit (relaxing precondition for following).
Allowable Subject Matter
Claims 1-14 are allowed.
The following is an examiner’s statement of reasons for allowance: No valid prior art was found to teach or render obvious the safety rule generation method/system as recited in the independent claims. The previously cited prior art NPL has been excluded as valid prior art with the filing of the Affidavit under Rule 130(a) of the America Invents Act. Additionally applicant’s amendments to independent claims 1 and 13 now positively recite vehicle control based on the overall safety rule and thus provide specific machine integration and thus overcome the previous 101 abstract idea rejections of those claims.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH MICHAEL DUNNE whose telephone number is (571)270-7392. The examiner can normally be reached Mon-Thurs 8:30-6:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Navid Z Mehdizadeh can be reached at (571) 272-7691. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KENNETH M DUNNE/ Primary Examiner, Art Unit 3669
