DETAILED ACTION
This non final office action is in response to applicant’s filing of application number 19/091680 on March 26, 2025. Claims 2-21 are pending and under examination.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The Information Disclosure Statements filed on June 30, 2025, March 4, 2026 and May 15, 2026 have been considered. Initialed copies of the Form 1449 are enclosed herewith.
Double Patenting
The non-statutory 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 non-statutory double patenting rejection is appropriate where the claims at issue 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); and /n 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 a non-statutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321 (b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http:/Awww.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to
http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 2-3 and 7 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 11/423,340. Although the conflicting claims are not identical, they are not patentably distinct from each other because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before". in re Karlson, 136 USPQ 184 (CCPA 1963).
Claims 2-3, 8, 10-13, 18-21 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-3, 5, 7, 10-14 and 19 of U.S. Patent No. 11/686,928. Although the conflicting claims are not identical, they are not patentably distinct from each other because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before". in re Karlson, 136 USPQ 184 (CCPA 1963).
Claims 2-21 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of patent No. 12/282,873. Although the conflicting claims are not identical, they are not patentably distinct from each other because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before". in re Karlson, 136 USPQ 184 (CCPA 1963).
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 2-21 are rejected under 35 U.S.C. 101 because the claimed invention is
directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Subject Matter Eligibility Standard
Under the 35 U.S.C. §101 subject matter eligibility two-part analysis, Step 1 addresses whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. See MPEP §2106.03. If the claim does fall within one of the statutory categories, it must then be determined in Step 2A [prong 1] whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). See MPEP §2106.04. If the claim is directed toward a judicial exception, it must then be determined in Step 2A [prong 2] whether the judicial exception is integrated into a practical application. See MPEP §2106.04(d). Finally, if the judicial exception is not integrated into a practical application, it must additionally be determined in Step 2B whether the claim recites "significantly more" than the abstract idea. See MPEP §2106.05.
Examiner’s note: The Office's 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) is currently found in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure (MPEP), specifically incorporated in MPEP §2106.03 through MPEP §2106.07(c).
Specifically, claims 2-11 are directed to a system (i.e. a machine). Claims 12-20 are directed to method claims (i.e., a process). Claim 21 is directed to a non-transitory storage medium. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea).
The claims recite the limitations in the abstract idea highlighted in non-bold.
Claim 2 as an example recites:
one or more processors; and
one or more memory resources storing instructions that, when executed by the one or more processors, cause the one or more processors to execute operations comprising:
receiving a transport request from a computing device associated with a requesting user;
transmitting a capability query based on the transport request to a third-party computing system of a third-party entity;
receiving a response from the third-party computing system, the response indicating a capability of one or more third-party autonomous vehicles (AVs) to respond to the transport request received from the computing device;
selecting the third-party entity to service the transport request based at least in part on the response from the third-party computing system; and
causing a third-party autonomous vehicle (AV) of the third-party entity to begin servicing the transport request.
Claims 3 and 13 further recite wherein the response comprises a proposed cost for the third-party AV to complete the transport request.
Claims 4 and 14 further recite wherein the operations further comprise:
transmitting a confirmation query to the third-party AV to specifically determine whether the third-party AV can service the transportation request.
Claims 5 and 15 further recite wherein the operations further comprise:
compiling third-party capability data regarding a capability of a third-party fleet of the third-party entity including the one or more third-party AVs in servicing individual transport requests, wherein selecting the third-party entity comprises selecting the third-party fleet of the third-party entity.
Claims 6 and 16 further recite wherein:
the third-party capability data indicates a safety record for the third-party fleet; and
the operations further comprise, based on the safety record, determining whether the third-party fleet is qualified as a candidate for a further transport request.
Claims 7 and 17 further recite further teaches wherein: the third-party capability data indicates autonomy road networks that the third-party fleet is capable of servicing; and the operations further comprise determining whether the third-party fleet is qualified as a candidate for a further transport request based on whether the further transport request requires travel outside of the autonomy road networks.
Claims 8 and 18 further recites wherein the operations further comprise:
storing on-board routing information for a third-party fleet of the third-party entity in a database, the on-board routing information indicating routes, roads, or lanes upon which the third-party fleet may operate within a transport service region.
Claims 9 and 19 further recite wherein receiving the transport request comprises receiving the transport request via a communication interface communicating with computing devices of requesting users in a transport region, the transport request describing a pick-up location and a destination in the transport region associated with the transport request.
Claims 10 and 20 further recites wherein the operations further comprise:
determining a subset of transport providers to service the transport request, the subset of the transport providers including the third-party entity; and
generating a ranking of the subset of transport providers based at least in part on an optimization score associated with each respective transport provider, the selecting of the third- party entity to service the transport request being based on the ranking.
Claim 11 further recites wherein selecting the third-party entity is based at least in part on an estimated time of arrival to a pick-up location for the transport request or an estimated time of drop-off of at a destination for the transport request.
Regarding claims 2, and 12, applicant is to be noted that the step or function of “receiving" are considered as data gathering functions. The step or function of “transmitting” data is an insignificant post-solution activity. The steps or functions of “selecting” and “causing” , involve mental processes and/or generic computer functions.
Claims 2, and 12 are found to include at least one judicial exception, that the resent claims recite steps that can be performed using the human mind, pen, and paper. According to the 2019 Revised Guidance, concepts performed in the human mind (including an observation, evaluation, judgement, or opinion) fall into the category of mental processes. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
The claims as a whole integrate the recited judicial exception(s) into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application.2019 PEG Section III(A)(2), 84 Fed. Reg. at 54-55. In particular, the claims recite the following bolded limitations understood to be additional limitations:
Claims 2 and 12 recite "a processor", a "memory" for storing data and “computing system”. In particular, the claimed "processor" is recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using a generic component.
Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claimed "processor" is also seen as generic computer components for identifying, retrieving, generating and transmitting data as the processor performs generic functions without an inventive concept as such do not amount to significantly more than the abstract idea.
The claimed processor as claimed elements is interpreted as being recited at a high level of generality and even if the claims recited in the affirmative. The type of data being manipulated does not impose meaningful limitations or render the idea less abstract. Looking at the elements as a combination does not add anything more than the elements analyzed individually.
Therefore, the claims do not amount to significantly more than the abstract idea itself. Applicant is reminded that a statutory claim would recite an automated machine implemented method or system with specific structures for performing the claimed invention so as to provide an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Each claim as a whole, does not amount to significantly more than the abstract idea itself. This is because each claim does not effect an improvement to another technology or technical field; the claim does not amount to an improvement to the functioning of a computer itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, claim 2 is directed to an abstract idea. The remaining independent claim 12 is also rejected under a similar rationale applied to claim 2 above.
The dependent claim(s) when analyzed and each taken as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations) fail(s) to establish that the claim(s) is/are not directed to an abstract idea.
The above recited limitations provide meaningful limitations that transforms the abstract idea into patent eligible. The claim as a whole effects an improvement to another technology or technical field. These limitations in combination provide meaningful limitations beyond generally linking the use of the abstract idea to a practical application.
Note: Claims 2-21 would be allowable if overcome the Double Patenting rejection and the 101 rejection.
Conclusion
7. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. As per attached PTO 892 form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROMAIN JEANTY whose telephone number is (571) 272-6732. The examiner can normally be reached M-F 9:00AM to 5:30PM.
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/RJ/
/Romain Jeanty/Primary Examiner, Art Unit 3624
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