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 Claims
Claims 12-22 of US Application No. 19/110,915, filed on 12 March 2025, are currently pending and have been examined. Applicant canceled claims 1-11 and added claims 12-22 via preliminary amendment.
Information Disclosure Statement
The Information Disclosure Statements filed on 12 March 2025 and 30 March 2026 have been considered. An initialed copy of form 1449 for each IDS is enclosed herewith.
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 12-22 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 12-22 are directed toward non-statutory subject matter, as shown below:
STEP 1: Does the claims fall within one of the statutory categories? Yes. Independent claim 12 is directed toward a process and independent claim 21 is directed toward a machine, which fall within one of the statutory categories.
STEP 2A (PRONG 1): Is the claim directed to a law of nature, a natural phenomenon or an abstract idea? Yes, independent claims 12 and 21 are directed to an abstract idea.
With regard to STEP 2A (PRONG 1), a claim that recites an abstract idea, a law of nature, or a natural phenomenon is directed to a judicial exception. 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).
See the 2019 Revised Patent Subject Matter Eligibility Guidance. With respect to mental processes, the courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer.
Independent claim 12 recites “generating a scheduled route comprising location coordinates of several target route points”, “determining a test run tolerance range or a target route tolerance range, wherein the test run tolerance range is determined by interpolation of the location coordinates of the several actual vehicle positions or by cartographically refined actual vehicle positions, and wherein the target route tolerance range is determined by interpolation of the location coordinates of the target route points or by cartographically refined target route points”, “determining a route coverage value by comparing the location coordinates of the target route points with the test run tolerance range, by comparing the location coordinates of the actual vehicle positions with the target route tolerance range, or by comparing the test run tolerance range with the target route tolerance range”, and “generating, responsive to the route coverage value being lower than a specified coverage threshold, an updated scheduled route for a further test run with the first test vehicle or a further test vehicle”. Independent claim 21 recites substantially similar limitations as claim 12. These limitations may be performed in the human mind. Therefore, claims 12 and 21 recite an abstract idea.
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? No, claims 12 and 21 do not recite additional elements that integrate the judicial exception into a practical application.
With regard to STEP 2A (prong 2), even when a judicial element is recited in the claim, an additional claim element(s) that integrates the judicial exception into a practical application of that exception renders the claim eligible under §101. 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.
In the instant application, claims 12 and 21 do not recite additional elements that integrate the judicial exception into a practical application of that exception. Claim 12 recites the additional elements “performing, by a first test vehicle, a test run along a measured route, wherein the measured route is selected based on the scheduled route, wherein, during the test run the first test vehicle detects vehicle environment data along the measured route using a sensor system of the first test vehicle, wherein, during the test run, the first test vehicle transmits telemetric data of the first test vehicle time-discretely to an external telemetric data collection unit, wherein the telemetric data comprises location coordinates of several actual vehicle positions reached by the first test vehicle”. Claim 21 recites substantially similar limitations. Claim 12 also recites “a processing unit” and “a telemetric data collection unit coupled to the processing unit”.
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. The processing unit and telemetric data collection unit, given their broadest reasonable interpretation, both encompass a computer. Using the processing unit and/or collection unit to generate a scheduled route, determine a test run tolerance range or target route tolerance range, determine a route coverage value, and generate an updated scheduled route is merely using a computer as a tool to perform abstract ideas.
Also as noted above, adding insignificant extra-solution activity to the judicial exception is indicative that the judicial exception has not been integrated into a practical application. Insignificant extra-solution activity includes data gathering and outputting. See MPEP 2106.05(g). Using a vehicle to perform a test run and collect data using a sensor system is data gathering. Transmitting the data to an external telemetric data collection unit is data outputting. Individually, these additional elements do not integrate the judicial exception into a practical application of that exception. Collectively these additional elements operate in the same manner as they operate individually. Therefore, these limitations do not integrate the judicial exception into a practical application of that exception.
Therefore, claims 12 and 21 do not recite additional elements that integrate the judicial exception into a practical application of that exception.
STEP 2B: Does the claims recite additional elements that amount to significantly more than the judicial exception? No, claims 12 and 21 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.
Claims 12 and 21 do not recite any specific limitation or combination of limitations that are not well-understood, routine, conventional (WURC) activity in the field.
Using a generic computer to perform generic computing functions is WURC activity. Generic computing functions include 1) performing repetitive calculations, 2) receiving, processing, and storing data, 3) electronically scanning or extracting data from a physical document, 4) electronic recordkeeping, 5) automating mental tasks, and 6) receiving or transmitting data over a network, e.g., using the Internet to gather data. See MPEP 2106.05(d)(II). The processing unit and data collection unit (claim 21) are recited at a high level of generality and, given their broadest reasonable interpretation, represent a generic computer. Transmitting the telemetric data to the data collection unit is transmitting data over a network. Collecting data from sensors of a test vehicle while the test vehicle traverses a test run is known in the art. Kawai (US 2020/0117189 A1), as just one example, discloses a data acquiring section 74 that acquires probe data of a vehicle. ¶ [0045]. The probe data includes data collected from sensors of the vehicle at positions actually travelled while driving. ¶ [0045]. These additional elements, both individually and in combination, are well-understood, routine, conventional activity in the field
CONCLUSION
Thus, since claims 12 and 21 (a) are directed toward an abstract idea, (b) do not recite additional elements that integrate the judicial exception into a practical application, and (c) do not recite additional elements that amount to significantly more than the judicial exception, it is clear that claims 1 and 8 are directed towards non-statutory subject matter.
Claims 13 and 14 further define a previously-identified abstract idea. However, even as further defined, the previously-identified abstract idea may still be performed mentally and. The claims do not recite any new additional elements. Therefore, the claims do not recite any additional elements that integrate the judicial exception into a practical application of that exception or amount to significantly more than the judicial exception for the same reasons as claims 12 and 21.
Claims 14-20 and 22 recite limitations that may be performed mentally. The claims do not recite any new additional elements. Therefore, the claims do not recite any additional elements that integrate the judicial exception into a practical application of that exception or amount to significantly more than the judicial exception for the same reasons as claims 12 and 21.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bennati et al. (US 2022/0136841 A1);
Roca Rosero et al. (US 2021/0041249 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON L TROOST whose telephone number is (571)270-5779. The examiner can normally be reached Mon-Fri 7:30am-4pm.
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/AARON L TROOST/Primary Examiner, Art Unit 3666
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