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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
This Office Action is in response to the application filed 14 July 2025. Claims 1-20 are presently pending and are presented for examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 16 October 2025 is in compliance with the provisions of 37 CFR 1.97, 1.98. Accordingly, the IDS was considered.
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.
101 Analysis – Step 1
Claim 1 is directed to a computer-implemented method (i.e., a process). Therefore, claim 1 is within at least one of the four statutory categories.
101 Analysis – Step 2A, Prong I
Regarding Prong I of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether they recite subject matter that falls within one of the follow groups of abstract ideas: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes.
Independent claim 1 includes limitations that recite an abstract idea (emphasized below) and will be used as a representative claim for the remainder of the 101 rejection. Claim 1 recites:
A computer-implemented method comprising:
receiving a user request from a user for directions from an origin location to a destination location;
identifying a scenic point along a route between the origin location and the destination location;
transmitting first navigation directions to the user for the route from the origin location to the destination location, wherein the first navigation directions are displayed in a first map for the route and comprise the scenic point;
receiving an indication that the user intends to visit the scenic point;
determining a parking location proximate the scenic point; and
transmitting a second map to the user, wherein the second map comprises the parking location, and the second map is inset inside the first map.
The examiner submits that the foregoing bolded limitation(s) constitute a “mental process” because under its broadest reasonable interpretation, the claim covers performance of the limitation in the human mind. For example, “identifying...”, “determining…” in the context of this claim encompasses a person (e.g. a driver) looking at data collected and forming a simple judgement. Accordingly, the claim recites at least one abstract idea.
101 Analysis – Step 2A, Prong II
Regarding Prong II of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether the claim, as a whole, integrates the abstract into a practical application. As noted in the 2019 PEG, it must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.”
In the present case, the additional limitations beyond the above-noted abstract idea are as follows (where the underlined portions are the “additional limitations” while the bolded portions continue to represent the “abstract idea”):
A computer-implemented method comprising:
receiving a user request from a user for directions from an origin location to a destination location;
identifying a scenic point along a route between the origin location and the destination location;
transmitting first navigation directions to the user for the route from the origin location to the destination location, wherein the first navigation directions are displayed in a first map for the route and comprise the scenic point;
receiving an indication that the user intends to visit the scenic point;
determining a parking location proximate the scenic point; and
transmitting a second map to the user, wherein the second map comprises the parking location, and the second map is inset inside the first map.
For the following reason(s), the examiner submits that the above identified additional limitations do not integrate the above-noted abstract idea into a practical application.
Regarding the additional limitations of “receiving a user request...” “receiving an indication...”, “transmitting first navigation directions to the user…” and “transmitting a second map to the user…” the examiner submits that these limitations are insignificant extra-solution activities that merely use a computer to perform the process. In particular, the receiving steps from the sensors and/or from the external source are recited at a high level of generality (i.e. as a general means of gathering data for use in the identifying/determining steps), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The transmitting steps are also recited at a high level of generality (i.e. as a general means of displaying the identifying/determining results), and amounts to mere post solution displaying, which is a form of insignificant extra-solution activity.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitation(s) as an ordered combination or as a whole, the limitation(s) add nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole, reflect an improvement in the functioning of a computer or an improvement to another technology or technical field, apply or use the above-noted judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use 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 not more than a drafting effort designed to monopolize the exception (MPEP § 2106.05). Accordingly, the additional limitation(s) do/does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
101 Analysis – Step 2B
Regarding Step 2B of the 2019 PEG, representative independent claim 1 does not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application. As discussed above with respect to integration of the abstract idea into a practical application, the additional limitations of “receiving...”, “receiving...”, “transmitting…” and “transmitting...” the examiner submits that these limitations are insignificant extra-solution activities.
Further, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field. The additional limitations of “receiving...” and “receiving...” are well-understood, routine, and conventional activities because the background recites that the sensors/sources are all conventional sensors/sources. 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 collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner. The additional limitations of “transmitting...” are well-understood, routine, and conventional activities because 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. Hence, the claim is not patent eligible.
As per Claim 8.
Claim 8, an apparatus claim (a system), includes limitations analogous to claim 1 a process claim (a computer-implemented method), but adds one or more processors, one or more non-transitory computer-readable media storing computing instructions. These generically recited computer elements do not add significantly more to the abstract idea because, they merely amount to implementing the abstract idea on a computer.
Accordingly, claim 8 is rejected under 35 U.S.C. § 101 because the claim is directed to an abstract idea without significantly more.
As per Claim 15.
Claim 15, an apparatus claim (non-transitory computer-readable media), includes limitations analogous to claim 1 a process claim (a method), but adds one or more processors, one or more non-transitory computer-readable media storing computing instructions. These generically recited computer elements do not add significantly more to the abstract idea because, they merely amount to implementing the abstract idea on a computer.
Accordingly, claim 15 is rejected under 35 U.S.C. § 101 because the claim is directed to an abstract idea without significantly more.
Dependent claims 2-7, 9-14 and 16-20 do not recite any further limitations that cause the claims to be patent eligible. Rather, the limitations of dependent claims are directed toward additional aspects of the judicial exception and/or well-understood, routine and conventional additional elements that do not integrate the judicial exception into a practical application. Therefore, dependent claims 2-7, 9-14 and 16-20 are not patent eligible under the same rationale as provided for in the rejection of claims 1, 8 and 15.
Therefore, claims 1-20 are ineligible under 35 USC §101.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-5, 8-12 and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Poppen (US20110106429) in view of James (US20120022777), Shitamatsu (US20030216860) and Ihara (US20030069689).
As to claims 1, 8 and 15, Poppen teaches a computer-implemented method, a system and one or more non-transitory computer-readable medium storing computing instructions that, when executed by one or more processors, cause the one or more processors to perform operations, comprising:
receiving a user request from a user for directions from an origin location to a destination location (see at least Poppen para 0017-0018: …a user to specify a destination…a driver sets out on a lengthy road trip from…routing engine plots the best route…; also see Fig. 2 and related text);
identifying a point along a route between the origin location and the destination location (see at least Poppen para 0017-0020: …POI search…; also see claim 1, Fig. 2, Fig. 4 and related text);
transmitting first navigation directions to the user for the route from the origin location to the destination location, wherein the first navigation directions are displayed in a first map for the route and comprise the scenic point (see at least Poppen para 0017-0018: …user interface module displays the plotted route…; also see claim 1, Fig. 2 and related text);
receiving an indication that the user intends to visit the scenic point (see at least Poppen para 0020: … driver decides that the two minutes is an acceptable time, and therefore deviates to …; also see para 0027, Fig. 4 and related text);
transmitting a second map to the user (see at least Poppen para 0029: … receives 410 a selection of the POI, and then plots 412 a route to the selected POI…; Fig. 4).
Poppen further teaches one or more processors and memories (see at least Poppen para 0039-0041).
Poppen does not teach the point is a scenic point, determining a parking location proximate the scenic point; and wherein the second map comprises the parking location, and the second map is inset inside the first map.
James is directed to presenting audio information related to scenic points of interest (POIs) to a user traveling along a predetermined route. James teaches …the predetermined route may be generated by professional entities, organizations or individuals who have an interest in generating scenic tours… (see at least James, para 0019, also see claim 1, Fig. 2, Fig. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Poppen so as to include a scenic point of interest in view of James et al. with a reasonable expectation of success. Those having ordinary skill in the art would understand that information related to scenic POI along a predetermined route of James can be used in Poppen, as required by the claim. One of ordinary skill would have been motivated to combine Poppen and James because this would have achieved the desirable result of providing a method to generate a route for users with interest in scenic tours to see sites of interest along the predetermined route (see at least James, para 0019-0020).
Shitamatsu is directed to zones in which there are a plurality of POIS including at least one parking lot. Shitamatsu teaches …a plurality of POIs including at least one parking
lot and a route search device which sets a parking lot in a zone as a destination point and searches out a route to that parking lot based upon a road map (Shitamatsu para 0007-0009; Fig. 7, Fig. 14).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Poppen so as to include determining a parking location proximate the scenic point in view of Shitamatsu et al. with a reasonable expectation of success. Those having ordinary skill in the art would understand that information related to scenic POI along a predetermined route of Shitamatsu can be used in Poppen, as required by the claim. One of ordinary skill would have been motivated to combine Poppen and Shitamatsu because this would have achieved the desirable result of providing a method to guide the user to the parking lot of the POI so that the user can smoothly drive to the parking space of the POI which the user intended to visit (see at least Shitamatsu para 0005-0006).
Ihara is directed to a navigation device for Simultaneously displaying two screens of maps on a common display unit. Ihara teaches the display unit can display the second map to fill the predetermined display area and can display the first map over a part of the second map …the second map is displayed as a primary screen and the first map is displayed as a secondary screen in the primary screen …the display unit displays the first map at a position which is on the second map and does not interfere with the traveling route of the vehicle carrying the navigation device as a navigation object (Ihara para 0017-0022, para 0051; also see Fig. 5, Fig. 11 and related text).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Poppen so as to include wherein the second map comprises the parking location, and the second map is inset inside the first map in view of Ihara et al. with a reasonable expectation of success. Those having ordinary skill in the art would understand that the destination information can be displayed in a second map overlaying on the first map of Ihara can be used in Poppen, as required by the claim. One of ordinary skill would have been motivated to combine Poppen and Ihara because this would have achieved the desirable result of providing a method to inform the user about the environment near the destination, i.e., the route the parking lot of the POI, so that the user can smoothly drive to the parking space of the POI which the user intended to visit.
As to claims 2, 9 and 16, Poppen in view of James, Shitamatsu and Ihara teaches the computer-implemented method of claim 1, the system of claim 8 and the one or more non-transitory computer-readable medium of claim 15.
Ihara further teaches transmitting second navigation directions to the user for navigating to the park (Ihara Fig. 5, Fig. 11 and related text).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Poppen so as to include the above limitations in view of Ihara et al. with a reasonable expectation of success. One of ordinary skill would have been motivated to combine Poppen and Ihara because this would have achieved the desirable result of providing a method to inform the user about the environment near the destination, i.e., the route the parking lot of the POI, so that the user can smoothly drive to the parking space of the POI which the user intended to visit.
As to claims 3, 10 and 17, Poppen in view of James, Shitamatsu and Ihara teaches the computer-implemented method of claim 2, the system of claim 9 and the one or more non-transitory computer-readable medium of claim 16.
Ihara further teaches wherein the second navigation directions are inset inside the first map (Ihara Fig. 5, Fig. 11 and related text).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Poppen so as to include the above limitations in view of Ihara et al. with a reasonable expectation of success. One of ordinary skill would have been motivated to combine Poppen and Ihara because this would have achieved the desirable result of providing a method to inform the user about the environment near the destination, i.e., the route the parking lot of the POI, so that the user can smoothly drive to the parking space of the POI which the user intended to visit.
As to claims 4, 11 and 18, Poppen in view of James, Shitamatsu and Ihara teaches the computer-implemented method of claim 1, the system of claim 8 and the one or more non-transitory computer-readable medium of claim 15.
Poppen further teaches wherein identifying the scenic point along the route between the origin location and the destination location comprises:
identifying the scenic point along the route between the origin location and the destination location based on at least telemetry data and point of interest (POI) data (see at least Poppen para 0020-0026, also see Fig. 3, Fig. 4 and related text).
As to claims 5, 12 and 19, Poppen in view of James, Shitamatsu and Ihara teaches the computer-implemented method of claim 1, the system of claim 8 and the one or more non-transitory computer-readable medium of claim 15.
Shitamatsu further teaches wherein the parking location is determined based at least on being within a threshold distance of the scenic point (see at least Shitamatsu para 0032: a suitable parking lot is selected in a zone in which there are a plurality of POIs including at least one parking lot, and the position of this parking lot is defined as being a representative position for this zone. The latitude and longitude of the position of this parking lot are the positional information for the ZOI. The supplemental information for the ZOI is information for pre-sentation of a characteristic or representative POI within the zone. The POI information for the ZOI data is POI information related to representative institutions or shops within the zone).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Poppen so as to include the above limitations in view of Shitamatsu et al. with a reasonable expectation of success. One of ordinary skill would have been motivated to combine Poppen and Shitamatsu because this would have achieved the desirable result of providing a method to guide the user to the parking lot of the POI so that the user can smoothly drive to the parking space of the POI which the user intended to visit (see at least Shitamatsu para 0005-0006).
Claims 6-7, 13-14 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Poppen in view of James, Shitamatsu and Ihara as applied to claim 1 above, and further in view of Chan (US10019904).
As to claims 6 and 13, Poppen in view of James, Shitamatsu and Ihara teaches the computer-implemented method of claim 1 and the system of claim 8.
Poppen modified by James, Shitamatsu and Ihara does not teach wherein the parking location is determined based at least on a safe parking score assigned to the parking location exceeding a threshold safe parking score.
Chan is directed to identifying high risk parking lots. Chan teaches …may determine a score for each hazardous area identified, and if a score is greater than a predetermined threshold, then a vehicle with autonomous or self-driving functionality may automatically, or at the direction of a human driver or passenger, engage one or more autonomous features or systems at a predetermined distance from the hazardous area…Other hazardous areas may be associated with parking lots that have an abnormally high amount of vehicle collisions and/or vehicle theft. High risk parking lots may be identified and mapped (see at least Chan col 6, lines 4-54; also see col 22, lines 14-18, Fig. 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Poppen so as to include wherein the parking location is determined based at least on a safe parking score assigned to the parking location exceeding a threshold safe parking score in view of Chan et al. with a reasonable expectation of success. Those having ordinary skill in the art would understand that the identifying a safe parking location of Chan can be used in Poppen, as required by the claim. One of ordinary skill would have been motivated to combine Poppen and Chan because this would have achieved the desirable result of providing a parking system that will maximize safety and minimize driver concerns and involvement.
As to claims 7 and 14, Poppen in view of James, Shitamatsu, Ihara and Chan teaches the computer-implemented method of claim 6 and the system of claim 13.
Chan further teaches wherein the safe parking score is assigned to the parking location based on a risk of vehicle damage at the parking location (see at least Chan col 22 lines 14-18: A hazardous area may be a high risk intersection at an above-average risk of vehicle collision, a high risk portion of a road that is associated with an above-average risk of vehicle collision, or a high risk parking lot associated with an average risk of vehicle collision or theft).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Poppen so as to include the above limitations in view of Chan et al. with a reasonable expectation of success. One of ordinary skill would have been motivated to combine Poppen and Chan because this would have achieved the desirable result of providing a parking system that will maximize safety and minimize driver concerns and involvement.
As to claim 20, Poppen in view of James, Shitamatsu and Ihara teaches the one or more non-transitory computer-readable media of claim 15.
Chan further teaches the parking location is determined based at least on a safe parking score assigned to the parking location exceeding a threshold safe parking score; and the safe parking score is assigned to the parking location based on a risk of vehicle damage at the parking location (see at least Chan col 6, lines 4-54; also see col 22, lines 14-18, Fig. 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Poppen so as to include the above limitations in view of Chan et al. with a reasonable expectation of success. One of ordinary skill would have been motivated to combine Poppen and Chan because this would have achieved the desirable result of providing a parking system that will maximize safety and minimize driver concerns and involvement.
Examiner’s Notes
Examiner has cited particular columns/paragraph and line numbers in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention. This will assist in expediting compact prosecution. MPEP 714.02 recites: “Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP §2163.06. An amendment which does not comply with the provisions of 37 CFR 1.121(b), (c), (d), and (h) may be held not fully responsive. See MPEP § 714.” Amendments not pointing to specific support in the disclosure may be deemed as not complying with provisions of 37 C.F.R. 1.131(b), (c), (d), and (h) and therefore held not fully responsive. Generic statements such as "Applicants believe no new matter has been introduced" may be deemed insufficient.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONGYE LIANG whose telephone number is (571)272-5410. The examiner can normally be reached on Monday-Friday 9:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rachid Bendidi can be reached on (571) 272-4896. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONGYE LIANG/Primary Examiner, Art Unit 3664
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