DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. This action is responsive to the following communication: a non-provisional Application filed on October 3, 2025. This application is a continuation (CON) of application 17/881,241, which claims a foreign priority to GB 2111274.3, filed on August 4, 2021. Therefore, the effective filing date of the instant claims is presumably August 4, 2021.
Information Disclosure Statement
3. The examiner acknowledges the information disclosure statement (IDS) submitted on October 3, 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of the Claims
4. Claims 1-15 are pending in the case; Claims 1, 10, and 15 are independent claims. This action is made non-final.
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.
5. Claims 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 1-9 are directed to a method; Claims 10-14 are directed to a system; and Claim 15 is directed to a vehicle, therefore, Claims 1-15 meet the requirements to be considered a statutory category (See MPEP § 2106.03).
Step 2A, prong one evaluation:
The abstract ideas (specifically, mental processes and/or mathematical concepts - calculations) in the rejected claims are as follows:
determining a path portion from a plurality of position estimates of the vehicle (Claim 1, and similarly, Claims 10 and 15); determining that the path includes a poor satellite signal zone (Claim 1, and similarly, Claims 10 and 15); identifying a predetermined path portion corresponding to the poor satellite signal zone in a database comprising information for a plurality of poor satellite signal zones (Claim 1, and similarly, Claims 10 and 15); providing the determined path by inserting the predetermined path portion corresponding to the poor satellite signal zone into the path portion (Claim 1, and similarly, Claims 10 and 15); choosing a corresponding path portion by determining a start of the poor satellite signal zone and an end of the poor satellite signal zone (Claim 6); combining at least one of multiple path portions or multiple predetermined path portions to provide the determined path (Claim 7);
calculating a distance travelled by the vehicle from the determined path (Claim 1, and similarly, Claims 10 and 15); calculating a toll charge for the vehicle based on the determined path taken by the vehicle (Claim 8); using the calculated distance travelled by the vehicle to calculate the toll charge (Claim 9, and similarly, Claim 13);
establishing an error on the positioning estimates and comparing the error to a threshold (Claim 2);
determining a start of the poor satellite signal zone from a last position estimate of the vehicle where the error does not exceed the threshold before the poor satellite signal, and determining an end of the poor satellite signal zone from a first position estimates of the vehicle where the error does not exceed the threshold after the poor satellite signal zone (Claim 3);
the predetermined path portion comprises a series of predetermined positions adjusted by accounting for a speed of the vehicle (Claim 4); applying an algorithm to align the path portion and the predetermined path portion (Claim 5);
The recited “determining,” “providing,” and “establishing” steps are mental processes that can easily be completed in the human mind; the recited “calculating” and “applying” appear to be simple mathematical concepts, namely calculations. While the claims recite that these steps are performed at least in part by a satellite positioning system (i.e., a computer), they do not preclude these steps from practically being performed in the mind. For example, the claims encompass a person analyzing the obtained position signals for a vehicle travel and determining that there are inaccuracies (either because of a weak signal, low confidence rating, erroneous data points, etc.) and determining the most probable route the vehicle took during the segments corresponding to inaccurate position signals, based on available/stored data for possible routes, and further encompass the person calculating the length of the route traveled, in view of the most probably route determination, for the entire trip. Therefore, the above-noted claims recite abstract ideas.
The additional elements, found in Claims 1-15, are grouped as follows:
receiving satellite signals from a satellite positioning system (Claim 1, and similarly, Claims 10 and 15); wherein at least one of the processors is located in a remote system, and the vehicle is arranged to transmit data to the remote system (Claim 11);
using a satellite positioning system (Claim 1, and similarly, Claims 10 and 15); wherein the remote system is arranged to determine the poor satellite signal zone (Claim 12);
retrieving the predetermined path portion from the database (Claim 1, and similarly, Claims 10 and 15);
the payment system receives information on, at least one of the determined path, the length of the determined path, or identification information of the vehicle which travelled along the determined path (Claim 14);
Step 2A, prong two evaluation:
The additional elements, individually and in combination, fail to integrate the abstract idea into a practical application. Additional elements of groups (a)-(d) merely apply the abstract idea to a technological environment (see MPEP § 2106.05(h)); additional elements of group (b) merely apply the abstract idea to one or more generic computing components (see MPEP § 2106.05(f)); additional elements of groups (a) and (c) are insignificant extra-solution activities – specifically, pre-solution activities of collecting/obtaining data (see MPEP § 2106.05(g)).
Step 2B:
The additional elements, individually and in combination, fail to amount to significantly more than the judicial exception because the Office takes Official Notice that they are well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality (see MPEP § 2106.05(d)), or else they are insignificant extra solution activities in the form of data collection and analysis (see MPEP § 2106.05(d)(II), listing numerous court decisions pertaining to observations, evaluations, judgements, and opinions, such as the findings from Electric Power Group (holding that collecting information, analyzing it, and outputting certain results of the collection and analysis was not significantly more than the judicial exception)).
Double Patenting
The nonstatutory 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 nonstatutory double patenting rejection is appropriate where the conflicting claims 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); In 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
6. Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,455,387 (hereinafter ‘387).
Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-15 of ‘387 disclose each limitation recited in instant Claims 1-15, respectively. For example, instant independent Claim 1, as illustrated below, corresponds to independent Claim 1 of ‘387 (note the minor differences between the claims (underlined); similar differences are applicable to instant Claims 10 and 15 as compared to Claims 10 and 15 of ‘387); instant Claims 2-9 and 11-14 are nearly identical to Claims 2-9 and 11-14 of ‘387, respectively.
Instant Claim 1:
1. A method of determining a path taken by a vehicle, comprising:
* receiving satellite signals from a satellite positioning system;
* determining a path portion from a plurality of position estimates of the vehicle using a satellite positioning system;
* determining that the path includes a poor satellite signal zone;
* identifying a predetermined path portion corresponding to the poor satellite signal zone in a database comprising information for a plurality of poor satellite signal zones;
* retrieving the predetermined path portion from the database;
* providing the determined path by inserting the predetermined path portion corresponding to the poor satellite signal zone into the path portion; and
* calculating a distance travelled by the vehicle from the determined path.
Claim 1 of ‘387:
1. A method of determining a path taken by a vehicle, comprising:
* receiving satellite signals from a satellite positioning system;
* determining a path portion from a plurality of position estimates of the vehicle using the satellite signals;
* using a database comprising information for a plurality of poor satellite signal zones to determine that the path portion includes a predetermined location of a poor satellite signal zone based on the plurality of position estimates;
* using the predetermined location of the poor satellite signal zone to identify a corresponding predetermined path portion in the database;
* retrieving the predetermined path portion from the database;
* providing the determined path by inserting the predetermined path portion corresponding to the poor satellite signal zone into the path portion; and
* calculating a distance travelled by the vehicle from the determined path.
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.
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.
The factual inquiries 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.
7. Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Novak, US 10,854,018 B2, issued on December 1, 2020, in view of Marolia et al. (hereinafter Marolia), US 2021/0173092 A1, published on June 10, 2021.
With respect to independent Claim 1, Novak teaches a method of determining a path taken by a vehicle, comprising:
receiving satellite signals from a satellite positioning system (see col. 4, line 50 -col. 5, line 13, showing that location data points corresponding to a traveling vehicle are obtained and analyzed in order to determine detailed information about the vehicle’s trip, such as the vehicle’s bearing, route, speed, etc.).
determining a path portion from a plurality of position estimates of the vehicle using a satellite positioning system (see col. 4, lines 50-67).
determining that the path includes a poor satellite signal zone (see col. 6, lines 28-48, col. 7, lines 26-43; see also col. 1, lines 59-65, col. 4, lines 59-67 (error value)).
identifying a predetermined path portion corresponding to the poor satellite signal zone in a database comprising information for a plurality of poor satellite signal zones (see col. 5, line 44 – col. 6, line 27, showing that a database is maintained which corresponds to location points along paths of transit and provides information about tolled roads (i.e., tunnels) with reference to the location points).
retrieving the predetermined path portion from the database (see col. 6, line 23 – col. 8, line 15, showing that for a given location point(s) that corresponds to bad service area (i.e., weak or inaccurate location signal), the database can be queried to determine if a toll road/tunnel exists in that area, and if more than one toll road/tunnel corresponds to the bad service area, a determination is made of the most probable path taken, based on the available accurate data and additionally extrapolated data).
providing the determined path by inserting the predetermined path portion corresponding to the poor satellite signal zone into the path portion (see Fig. 3, col. 7, line 60 – col. 8, line 15, col. 10, line 55 – col. 11, line 10, showing that bad service areas (i.e., location points that have a low confidence ranking or high error amount) are removed and replaced with the most probable route).
While Novak explicitly suggests calculating a toll for the vehicle’s trip (see col. 10, line 2 – col. 11, line 63), Novak does not appear to teach calculating a distance travelled by the vehicle from the determined path, as required by Claim 1. However, the teachings of Marolia can be relied upon for an explicit suggestion of this limitation. Marolia is directed towards error correction for GPS-based mileage tracking (see Marolia, Title, Abstract). Marolia discloses determining when a GPS signal is lost and reacquired, and storing available GPS signals before losing the GPS signal (first location) and after acquiring the GPS signal (second location) (see Marolia, Fig. 1, ¶ 0009). Marolia further discloses utilizing the stored signals to calculate the distance, using geospatial mapping data to plot the roadway route, between the first and second locations (see Marolia, ¶¶ 0012-14).
Accordingly, it would have been obvious to a skilled artisan, at the time the instant Application was filed, with a reasonable expectation of success, to explicitly incorporate the error correction for GPS-based mileage tracking of Marolia with the determination of the most probable route traveled through a bad service area as taught by Novak in order to accurately calculate the mileage traveled on a given trip and to allow a service provider to properly charge the user for their services (see Marolia, ¶¶ 0001-04, 0014).
With respect to dependent Claim 2, Novak in view of Marolia discloses the method of claim 1, as discussed above, and further suggests wherein determining that the path includes a poor satellite signal zone comprises establishing an error on the positioning estimates and comparing the error to a threshold (see Novak, Claim 1, determining … an error amount which exceeds an error threshold [and] detecting that the wireless signal capabilities of the driver computing device are diminished responsive to [this determination]).
With respect to dependent Claim 3, Novak in view of Marolia discloses the method of claim 2, as discussed above, and further suggests determining a start of the poor satellite signal zone from a last position estimate of the vehicle where the error does not exceed the threshold before the poor satellite signal, and determining an end of the poor satellite signal zone from a first position estimate of the vehicle where the error does not exceed the threshold after the poor satellite signal zone (see Novak, Fig. 3, col. 4, lines 50-67, col. 7, line 60 – col. 8, line 15, showing that low confidence location data points are deleted or removed (and replaced with the most likely path of travel); see also Marolia, Fig. 1, Claim 1).
With respect to dependent Claim 4, Novak in view of Marolia discloses the method of claim 1, as discussed above, and further suggests wherein the predetermined path portion comprises a series of predetermined positions adjusted by accounting for a speed of the vehicle (see Novak, col. 5, lines 1-13).
With respect to dependent Claim 5, Novak in view of Marolia discloses the method of claim 1, as discussed above, and further suggests providing the determined path by applying an algorithm to align the path portion and the predetermined path portion (see Novak, Fig. 3, col. 6, lines 23-61).
With respect to dependent Claim 6, Novak in view of Marolia discloses the method of claim 1, as discussed above, and further suggests wherein at least one poor satellite signal zone is associated with two or more predetermined path portions, the method comprising choosing a corresponding path portion by determining a start of the poor satellite signal zone and an end of the poor satellite signal (see Novak, Fig. 3, col. 11, lines 11-63; see also discussion of Claim 3, above).
With respect to dependent Claim 7, Novak in view of Marolia discloses the method of claim 1, as discussed above, and further suggests combining at least one of multiple path portions or multiple predetermined path portions to provide the determined path (see Novak, Fig. 3; see also Marolia, Fig. 1, ¶ 0009, showing that the calculated missing mileage is automatically added to the mileage calculation).
With respect to dependent Claim 8, Novak in view of Marolia discloses the method of claim 1, as discussed above, and further suggests calculating a toll charge for the vehicle based on the determined path taken by the vehicle (see Novak, col. 2, lines 20-29).
With respect to dependent Claim 9, Novak in view of Marolia discloses the method of claim 8, as discussed above, and further suggests using the calculated distance travelled by the vehicle to calculate the toll charge (see Novak, col. 2, lines 20-29; see also discussion of Claim 1, above).
With respect to Claims 10 and 13-15, these claims are directed to a system and a vehicle, respectively, and they recite limitations that correspond to the limitations recited in Claims 1, 8, and 9, respectively, thus they are rejected along the similar rationale as those claims.
With respect to dependent Claim 11, Novak in view of Marolia discloses the system of claim 10, as discussed above, and further suggests wherein at least one of the processors is located in a remote system, and the vehicle is arranged to transmit data to the remote system (see Novak, Fig. 1).
With respect to dependent Claim 12, Novak in view of Marolia discloses the system of claim 11, as discussed above, and further suggests wherein the remote system is arranged to determine the poor satellite signal zone (see Novak, Fig. 1, col. 6, lines 28-48).
A reference to specific paragraphs, columns, pages, or figures in a cited prior art reference is not limited to preferred embodiments or any specific examples. It is well settled that a prior art reference, in its entirety, must be considered for all that it expressly teaches and fairly suggests to one having ordinary skill in the art. Stated differently, a prior art disclosure reading on a limitation of Applicant's claim cannot be ignored on the ground that other embodiments disclosed were instead cited. Therefore, the Examiner's citation to a specific portion of a single prior art reference is not intended to exclusively dictate, but rather, to demonstrate an exemplary disclosure commensurate with the specific limitations being addressed. In re Heck, 699 F.2d 1331, 1332-33,216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006,1009, 158 USPQ 275, 277 (CCPA 1968)). In re: Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005); In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1782 (Fed. Cir. 1992); Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989); In re Fracalossi, 681 F.2d 792,794 n.1,215 USPQ 569, 570 n.1 (CCPA 1982); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
MacGougan et al. (US 10,955,556 B2) describes fast GPS recovery using map vector data and using the map vector data to more accurately represent the displayed map location while a vehicle is in a poor signal zone.
Yoo (US 2019/0025059 A1) suggests using a simulation satellite signal when there is a predicted signal interruption (i.e., a tunnel) in order to continuously provide/calculate global location of the vehicle.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DINO KUJUNDZIC whose telephone number is (571)270-5188. The examiner can normally be reached M-F 8am - 5pm.
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, Thomas Worden can be reached on 571-272-4876. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DINO KUJUNDZIC/Primary Examiner, Art Unit 3658
Prosecution Insights