DETAILED CORRESPONDENCE
Allowable Subject Matter
Claim(s) 11-12 is/are allowed.
Priority Status
Foreign priority benefit under 35 U.S.C. 119(a)-(d) is acknowledged.
Status of Claims
Claim(s) 1-12 is/are examined in this office 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 (i.e., changing from AIA to pre-AIA ) 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.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following Three-Prong Analysis will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Non-structural generic placeholders that may invoke § 112(f) or (pre-AIA 35 U.S.C. 112, sixth paragraph) are “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for”.1, 2
Structural placeholders that do not invoke § 112(f) or (pre-AIA 35 U.S.C. 112, sixth paragraph) are “circuit for,” “detent mechanism,” “digital detector for,” “reciprocating member,” “connector assembly,” “perforation,” “sealingly connected joints,” and “eyeglass hanger member.”3, 4
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“an information distribution device that” (see Claim 12. The Examiner takes the position “that” is an abbreviated alternative linking phrase to “so that” which is an alternative to “for”; therefore, the recited claim language “device that” is considered equivalent to said non-structural generic placeholder “device for”. The “device that” limitation when read in light of The Original Filed Disclosure corresponds to Fig. 1’s element 200.); and
“an information processing device that” (see Claim 12. The Examiner takes the position “that” is an abbreviated alternative linking phrase to “so that” which is an alternative to “for”; therefore, the recited claim language “device that” is considered equivalent to said non-structural generic placeholder “device for”. The “device that” limitation when read in light of The Original Filed Disclosure corresponds to Fig. 1’s element 100.).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
THIS SECTION IS NOT A REJECTION! The Examiner expresses that this particular section of the office action identifies and clarifies how the means-plus-function limitation(s) listed above are interpreted during examination and further acts as a formal statement on claim interpretation that is recorded into the prosecution history. If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Judicial Exception 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.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. (See MPEP § 2106.)
STEP 1 of the eligibility analysis asks: Is the claim to a process, machine, manufacture or composition of matter?
Yes for Claim(s) 1-10.
STEP 2A PRONG ONE asks does the claim recite an abstract idea, law of nature, or natural phenomenon?
Yes, because Claim(s) 1 recite(s) the following “method” step limitation(s):
“collecting vehicle information …” – (This/These step(s) is/are considered collecting information, analyzing it, and displaying certain results of the collection and analysis. See MPEP § 2106.04(a)(2) III Mental Process); and
“obtaining a road surface determination model by vehicle type …” – (In this step, “obtaining” is interpreted as collecting. This/These step(s) is/are considered collecting information, analyzing it, and displaying certain results of the collection and analysis. See MPEP § 2106.04(a)(2) III Mental Process).
Claim 6 is directed to the same invention and repeats the acts of Claim 1 and therefore analyzed in like manner.
STEP 2A PRONG TWO asks does the claim recite additional elements that integrate the judicial exception into a practical application?
No, because Claim(s) 1 recite(s) the following limitation(s):
“distributing the road surface determination model by vehicle type …” - (This/These step(s) is/are considered Arranging a hierarchy of groups and/or sorting information. See MPEP § 2106.05(d) Well-Understood, Routine, Conventional Activity);
“receiving road surface information …” – (This/These step(s) is/are considered Receiving or transmitting data over a network. See MPEP § 2106.05(d) Well-Understood, Routine, Conventional Activity.); and
“applying the road surface information to geographic information system (GIS) information” – (This/These step(s) is/are considered Selecting a particular data source or type of data to be manipulated. See MPEP § 2106.05(g) Insignificant Extra-Solution Activity).
Claim 6 is directed to the same invention and repeats the acts of Claim 1 and therefore analyzed in like manner.
The above limitations are recited at a high level of generality, i.e., as generic computer functions of collecting and/or processing data. These generic limitations are no more than mere instructions to apply the exception using generic computer components (e.g., “processor”; “memory”; “a non-transitory computer storage medium” and “network interface”). Accordingly, these 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. As a result, Claim(s) 1 is/are directed to the abstract idea.
Additionally, The Examiner refers to The Berkheimer Memorandum5 for submitting more evidence into the prosecution regarding what subject matter is/are well known in the technology. The Berkheimer Memorandum specifies The Examiner shall show one or more of the follow items:
“A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).” See Section III (A) (1).
“A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s).” See Section III (A) (2).
“A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).” See Section III (A) (3).
“A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s).” See Section III (A) (4).
In this particular case, The Examiner provides “A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s)” as required by Section III:
“Client-Server and network communication is well-known in the art of computers and networking.” (US 20050021745 A1, [0052])
“The electronic control unit 23 comprises a microprocessor including a central processing unit (CPU), a random access memory (RAM), a read-only memory (ROM), an A/D converter, and an input/output interface, all not shown, but well-known in the art.” (US 4741163)
“As is well-known in the art, software is stored on a computer-readable storage medium (including compact disc, computer diskette, and computer memory, etc.) with code, or instructions, which, when read and executed by a computer, causes the computer to perform a process or task.” (US 20120226548 A1, [0020])
“It is well known in the art to provide a vehicle display screen located within the vehicle.” (US 20130224721 A1)
“Conventionally, an in-vehicle microphone device mounted on a vehicle interior, for example, a vehicle interior ceiling, is widely known.” (JP 2016105557 A)
STEP 2B asks: Does the claim recite additional elements that amount to significantly more than the judicial exception?
No for Claim(s) 1 and 6. As discussed with respect to Step 2A Prong Two, the additional elements in the claims amount to no more than mere instructions to apply the exception using generic computer components. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using generic computer components cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Therefore, Claim(s) 1 and 6 is/are ineligible.
Dependent Claim(s) 2-5 and 7-10 are also ineligible because they do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
In summary, Claim(s) 1-10 is/are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Written Authorization Required for Internet Communication
MPEP § 502.03 II, “Without a written authorization by applicant in place, the USPTO will not respond via email to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence and response will be placed in the appropriate patent application by the examiner. Except for correspondence that only sets up an interview time, all correspondence between the Office and the applicant including applicant's representative must be placed in the appropriate patent application. If an email contains any information beyond scheduling an interview, such as an interview agenda, it must be placed in the application. The written authorization may be submitted via the USPTO patent electronic filing system, mail, or fax. It cannot be submitted by email.”
Contact Information
Primary Examiner Calvin Cheung’s contact information is listed at the bottom, and he is best reached MONDAY-THURSDAY, 0730-1730 ET. If attempts to reach the primary by telephone are unsuccessful, the primary’s supervisor, ERIN PIATESKI, is available at telephone number (571) 270-7429.
Applicants are encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice for scheduling an examiner interview that will be performed over telephone or video conferencing (using a USPTO supplied web-based collaboration tool).
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CALVIN CHEUNG/
Direct Office Number (571) 270-7041
Email and Fax send to Calvin.Cheung@USPTO.GOV
1 Federal Register /Vol. 76, No. 27 /Wednesday, February 9, 2011 /Notices located at http://www.gpo.gov/fdsys/pkg/FR-2011-02-09/pdf/2011-2841.pdf, center column, page 6 of 14.
2 MPEP § 2181 (I)(A), first paragraph
3 Federal Register /Vol. 76, No. 27 /Wednesday, February 9, 2011 /Notices located at http://www.gpo.gov/fdsys/pkg/FR-2011-02-09/pdf/2011-2841.pdf, center column, page 6 of 14.
4 MPEP § 2181 (I)(A), second paragraph
5 See https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-20180419.PDF
Prosecution Insights