Detailed Action
Notice of Pre-AIA or AIA status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
This Final Office action is responsive to the amendment and reply filed on October 9, 2025 (hereafter “Response”). The amendments to the claims are acknowledged and have been entered.
Claim 1 is now cancelled.
Claims 36–41, 43–45, 48, 52, and 56–58 are now amended.
New claims 60–61 are now added.
Claims 36–61 are pending in the application.
Response to Arguments
Subject Matter Eligibility
Claims 36–61 stand 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.
On pages 7–8, the Applicant argues that its amendment narrows the scope of claim 36 to make the last lines of the claim required elements. The Examiner agrees, and the rejection is now updated to address those lines that are now required.
On pages 8–10, the Applicant raises a “proactive” argument about the nexus between the upgrading/maintenance recited in the claim with the notification that the claimed invention provides. This argument is non-responsive to the rejection, because it is based on limitations that are not currently recited in the present claims. Specifically, the Applicant’s arguments attempt to distinguish “attended” upgrades from “unattended” upgrades (see Response 9), but the claim language that discusses attended versus unattended upgrades was only added to child application 16/897,148, not the present application 11/752,483. Unrecited claim elements cannot possibly transform a judicial exception into an eligible invention, because they are not part of the scope of the claim. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“the name of the game is the claim.”). Moreover, the rejection of the claims in this application does not rely on the so-called “nexus” argument for the notification to upgrade/maintain the at least one computer system.
For both these reasons and the reasons given in the rejection below, the claims stand rejected under 35 U.S.C. § 101 for reciting a judicial exception thereof, without significantly more.
Informalities
The Examiner agrees that the present amendment resolves the informalities raised in the previous office action, and therefore withdraws all of their corresponding objections. A new ground of objection is necessitated by the present amendment, and set forth below.
New Matter
The 35 U.S.C. § 112(a) rejections for claims 39 and 43 are hereby withdrawn in response to the Applicant’s amendment removing the new matter from the scope of those claims.
However, claims 52–55, 57, and 58 stand rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA ), first paragraph, for the same reasons given in the previous Office Action. The amendment does not fully remove the new matter of these claims, and the Applicant’s argument concerning the disclosure is non-responsive and tangential to the substance of the rejection. The Applicant contends that the language now “mirrors” the language of FIG. 4, but it doesn’t: the claim language still says to determine a change in the “obtained” user characteristic(s), which is exactly the problem raised in the rejection.
Neither the drawing of FIG. 4 nor the corresponding written description of block 406 say anything about the user characteristics obtained by block 404 changing. It simply provides that “a change in user characteristics may be detected” in general, without ever referencing back to the user characteristics of block 404. (Spec. ¶ 22). Notably, the Applicant did not use the phrase “a change in the obtained user characteristics,” or even “a change in the user characteristics” in paragraph 22 or in original claim 10. The word “obtained” did not appear until the Office presented the Applicant with reference that tracks changes in a user’s characteristics.
Block 406 merely detects a change that is relative to the obtained one or more user characteristics of the plurality of user characteristics. It does not detect changes inside the obtained user characteristics per se.
Accordingly, the rejection is maintained.
Indefiniteness and Improper Claim Form
The rejections under 35 U.S.C. §§ 112(b) and (d) are hereby withdrawn in response to the Applicant’s amendment correcting the problems raised in those rejections.
Anticipation
Claims 36–42 stand rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by U.S. Patent No. 6,711,557 B1 (“Palaniappan”). The Applicant’s arguments have been considered in light of the amendment to claim 36, but are not persuasive.
The Applicant argues that “Palaniappan is arranged differently than independent claim 36,” because Palaniappan’s disclosure of “set preferences and otherwise control operation of the update monitoring feature” is not the same as “identifying at least one behavior or habit of an operator of the electronic device from device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device and obtaining at least one user characteristic based on the identified at least one behavior or habit.” (Response 13). The Examiner disagrees.
Respectfully, the Applicant underestimates the breadth of the word “behavior.” Palaniappan’s set preferences explicitly describe how the user behaves in response to a need to download updates and install updates: “Whether to do either or both operations without user intervention or interaction, and whether they should be done by the background process or by the application, can be . . . set by the user as a preference, which can be recorded in the database.” Palaniappan col. 5 ll. 1–8.
Accordingly, this argument is not persuasive, and the rejection stands.
Claims 36, 43–46, 48–54, 56, 57, and 59–61 stand rejected under pre-AIA 35 U.S.C. § 102(e) as being anticipated by U.S. Patent Application Publication No. 2008/0201587 A1 (“Lee”).
The Applicant contends that “there is no description [in Lee] of intermediary steps performed between first reading the past usage data, and then knowing or predicting the impending incoming phone call, that could be reasonably relied on to argue disclosure, expressly or otherwise, of the claimed providing step of the claimed identifying of identifying at least one behavior or habit of an operator of the electronic device from device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device ... obtaining at least one user characteristic based on the identified at least one behavior or habit, the obtaining responsive to said detected event.” (Response 13–14).
This argument is not persuasive because none of the claims recite the so-called “intermediary steps performed between first reading the past usage data, and then knowing or predicting the impending incoming phone call,” so there is no need for the prior art to teach such steps in order to reach a conclusion of obviousness.
The Applicant also argues that Lee’s checking for scheduled or calendar events is “reading user inputs,” and that this is somehow different from “identifying at least one behavior or habit of an operator of the electronic device from device interactions that are sensed during a monitored time period.” (Response 14). This argument is not persuasive even on its face, because “user inputs” are indeed a type of device interaction. Moreover, the Written Description specifically defines the user’s habits and behaviors to be obtained from “a user’s daily schedule” (Spec. ¶ 13), and dependent claim 59 likewise does the same for the user’s characteristics.
The Applicant also argues that Lee’s “usage and/or historical data” cannot be mapped to the claimed “behavior or habit,” because Lee uses this data to determine power estimates. (Response 14). This argument is not persuasive because the claimed invention does exactly the same thing. Specifically, claim 36 identifies the behavior or habit of the user to predict when a user interaction is necessary to maintain at least one system, and dependent claim 48 clarifies that the scope of the user interaction to maintain the at least one system includes “coupling the portable electronic device to a power source.” “By definition, an independent claim is broader than a claim that depends from it, so if a dependent claim reads on a particular embodiment of the claimed invention, the corresponding independent claim must cover that embodiment as well.” Littelfuse, Inc. v. Mersen USA EP Corp., 29 F. 4th 1376, 1380 (Fed. Cir. 2022) (citing Baxalta Inc. v. Genentech, Inc., 972 F.3d 1341, 1346 (Fed. Cir. 2020)).
Accordingly, all grounds of rejection under 35 U.S.C. § 102 are maintained.
Obviousness
All of the Applicant’s arguments concerning the rejections under 35 U.S.C. § 103 rise or fall with the 35 U.S.C. § 102 rejections of each independent claim. Since those rejections are maintained, and the Applicant adds no additional reasons as to why these rejections should be withdrawn, they are maintained as well.
Accordingly, the Applicant’s request for a notice of allowance (Response 16) is respectfully denied.
Claim Objections
Claim 38 is missing a word (“wherein the maintained or upgraded ----_____ includes updating an operating system of the electronic device”).
Appropriate correction is required.
Claim Rejections – 35 U.S.C. § 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 36–61 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.
The Office applies a four-part test when examining claims for subject-matter eligibility under § 101. First, the claimed invention must be directed to one of the four statutory categories explicitly listed in § 101 (Step 1). MPEP § 2106(I.). Then, the claimed invention is analyzed to determine whether it is directed to one of § 101’s judicial exceptions (Step 2A, Prong One) absent a practical application (Step 2A, Prong Two), and without significantly more than the judicial exception (Step 2B). MPEP § 2106(I.).
With this framework in mind, the claims will now be analyzed for subject matter eligibility under § 101.
Claim 36
Step 1. Claim 36 provides for an “article” with at least one computer hardware component (a memory) and is thus a “machine” or “article of manufacture” within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Abstract ideas are a judicial exception to 35 U.S.C. § 101, and one category of abstract ideas recognized by the courts and the Office are mental processes, i.e., concepts performed in the human mind including an observation, evaluation, judgment, opinion. MPEP § 2106.04(a).
In the instant case, claim 36 is directed to a mental process of discovering a person’s interaction is necessary to “maintain or upgrade at least one system,” and comparing that need to characteristics that have been observed about that person to evaluate the best time to notify him or her.
Each and every element of claim 36, apart from the article and its memory, is an element of the judicial exception as described above. This includes the phrase “required to maintain or upgrade at least one system,” as well as the clause at the end of the claim.
Regarding the determination that user interaction is “required to maintain or upgrade at least one system,” this is simply a mental comparison of known information. It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
This is just as true for the step of “identifying at least one behavior or habit of a user of the electronic device from device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device.” It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
Regarding the “at least one system of the electronic device maintained or upgraded” clause at the end of the claim, the Federal Circuit recently found that “claims [] directed to updating toolbar software over a network . . . amounts to no more than invoking computers as a tool to perform the abstract ideas of collecting information, analyzing information, and presenting the results of the analysis in the software update context.” MyMail, Ltd. v. ooVoo, LLC, No. 2020-1825, 2021 U.S. App. LEXIS 24764, at *11 (Fed. Cir. Aug. 19, 2021) (nonprecedential) (emphasis added). While this decision was nonprecedential, it relies on the well-established precedent that “merely using a computer as a tool to perform [an abstract] concept.” MPEP § 2106.04(a)(2) (subsection (III.)(C.)); see also Uniloc USA, Inc. v. LG Elect’s USA, Inc., 957 F.3d 1303, 1306 (Fed. Cir. 2020) (“In cases involving software innovations,” inquiry of whether the claims are directed to an abstract idea “often turns on whether the claims focus on specific asserted improvements in computer capabilities or instead on a process or system that qualifies an abstract idea for which computers are invoked merely as a tool.”).
Here, the broadly recited act of “upgrading, or maintaining, the at least one system” clearly does not limit the claim scope to specific asserted improvements in computer capabilities. To the contrary, it appears to cover the entire genus of upgrading or maintaining a computer. But even assuming for the sake of argument that this limitation should be treated as an “additional element” for analysis under Prong Two and Step 2B, this rejection will show why claiming the entire genus of “upgrading or maintaining” a computer system is neither a practical application nor “significantly more” under 35 U.S.C. § 101.
In either case, for the reasons given above, claim 36 is understood to recite a judicial exception to 35 U.S.C. § 101.
Step 2A, Prong Two. The only additional element in claim 36 is the article itself, and its memory. This is tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to transform the judicial exception into a practical application.
Additionally, even if those reviewing this rejection disagree with the Examiner’s finding under prong one with respect to “the at least one system of the electronic device maintained or upgraded, in response to a user response to the provided notification, wherein the user response includes the required user interaction,” the Examiner also finds that this limitation fails to integrate the claim into a practical application because it is tantamount to mere instructions to apply the judicial exception. See MPEP § 2106.05(f).
Specifically, MPEP § 2106.05(f) identifies three factors for determining whether an additional element amounts to nothing more than a mere instruction to apply the exception to a computer, and in this case, all three factors resolve against a finding of practical application under Step 2A, Prong Two.
The first factor is “[w]hether the claim recites only the idea of a solution or outcome.” MPEP § 2106.05(f). “The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application.” MPEP § 2106.05(f). This factor clearly resolves against a practical application. The claim language covers any and all possible manner of “upgrading” or “maintaining” a system, and likewise for the “required user interaction.” There absolutely no detail about how the upgrade or the maintenance is performed in the claim language, or even in the specification (see Spec. ¶¶ 2 and 17 (last sentence)). The claim language literally names the entire genus of upgrading or maintaining, and likewise for the “required user interaction.”
The second factor is “[w]hether the claim invokes computers or other machinery merely as a tool to perform an existing process,” such as when a claim recites the “[u]se of a computer or other machinery in its ordinary capacity.” MPEP § 2106.05(f) (emphasis added). “Maintaining” a system, by definition, is necessarily an example of using a computer in its ordinary capacity. The same is true for broadly “updating” and providing “required inputs.”
The third factor is “[t]he particularity or generality of the application of the judicial exception.” MPEP § 2106.05(f). “A claim having broad applicability across many fields of endeavor may not provide meaningful limitations that integrate a judicial exception into a practical application or amount to significantly more.” MPEP § 2106.05(f). Once again, this factor resolves against a finding of a practical application. The claim language covers any and all possible manner of “upgrading” or “maintaining” a system, and likewise for the “required user interaction.” There absolutely no detail about how the upgrade or the maintenance is performed in the claim language, or even in the specification (see Spec. ¶¶ 2 and 17 (last sentence)). The claim language literally names the entire genus of upgrading or maintaining, and likewise for the “required user interaction.”
Step 2B. The only additional element in claim 36 is the article and its memory. This is tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to add significantly more to the judicial exception.
Additionally, even if those reviewing this rejection disagree with the Examiner’s finding under prong one with respect to “the at least one system of the electronic device maintained or upgraded, in response to a user response to the provided notification, wherein the user response includes the required user interaction,” the Examiner also finds that this limitation fails add significantly more to the judicial exception because it recites well-understood, routine, and conventional (“WURC”) activity.
The Berkheimer evidence in support of this finding of WURC activity is the Applicant’s specific admission that upgrading or maintaining a system is well-understood, routine, and conventional in the art on pages 8–10 of the July 10, 2024 Request for Continued Examination (and likewise in the supplemental filing of December 16, 2024) (hereafter “December 2024 Admitted Prior Art”). There, the Applicant admitted the following, all of which is evidence in the Record of well-understood, routine, and conventional activity:
Admission (1) “[O]ne or ordinary skill in the art would know that software upgrades to electronic devices may require user decisions and/or approval to proceed.” (December 2024 Admitted Prior Art page 8).
Admission (2) “One or ordinary skill in the art would also know that, the software upgrade may not proceed until the required user interaction occurs.” (December 2024 Admitted Prior Art page 8).
Admission (3) “One of ordinary skill in the art also knows that, in the particular technical environment and/or field of invention, a new software installation may improve functionality of the electronic device.” (December 2024 Admitted Prior Art page 8).
Admission (4) “One of ordinary skill in the art also knows that . . . This [i.e., improving the device via an update] may be through bug fixes and/or added features coming with the new software.” (December 2024 Admitted Prior Art page 8).
The above four admissions of what “one of ordinary skill in the art would know” prior to the invention therefore show that upgrading or maintaining a system was well-understood, routine, and conventional at the time of the claimed invention.
Accordingly, claim 36 is rejected under 35 U.S.C. § 101 for failing to recite significantly more than a judicial exception thereof.
Claim 37
Step 1. Claim 37 provides for an “article” with at least one computer hardware component (a memory) and is thus a “machine” or “article of manufacture” within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Abstract ideas are a judicial exception to 35 U.S.C. § 101, and one category of abstract ideas recognized by the courts and the Office are mental processes, i.e., concepts performed in the human mind including an observation, evaluation, judgment, opinion. MPEP § 2106.04(a).
In the instant case, claim 37 is directed to a mental process of discovering a person’s interaction is necessary to “maintain or upgrade at least one system,” and comparing that need to characteristics that have been observed about that person to evaluate the best time to notify him or her.
Each and every element of claim 37, apart from the article, its memory, and the step of updating software, is an element of the judicial exception as described above. This includes the phrase “required to maintain or upgrade at least one system,” as well as the “wherein” clause inherited from the parent claim.
Regarding the determination that user interaction is “required to maintain or upgrade at least one system,” this is simply a mental comparison of known information. It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
This is just as true for the step of “identifying at least one behavior or habit of a user of the electronic device from device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device.” It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
The final clause at the end of the claim fails to actually limit any particular step of the claim, because the wherein clause refers back to the “providing a notification” step. The Applicant isn’t actually claiming that the electronic device is maintained or upgraded in response to the user response; rather, the wherein clause is merely a description of the context in which the notification exists. Had the Applicant wanted to claim the act of maintaining or upgrading the system, it would have simply claimed that step, rather than using the word “wherein” to further describe a step (the provision of the notification) that occurs prior to the hypothetical act of maintaining or upgrading the at least one system.
Said differently, claim 37 does not include a step of “maintaining or upgrading at least one system of the electronic device in response to a user response to the provided notification,” so the claim does not require that step to be performed, nor does it require a memory storing instructions for the same. See MPEP § 2111.04.
Step 2A, Prong Two. The only additional elements in claim 37 are the article, its memory, and the software update. The article and its memory are tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to transform the judicial exception into a practical application. The software update is tangential to the solution of finding the right time to notify the user, and therefore, is considered to be “extra-solution activity.” Extra-solution activity does not transform a judicial exception into a practical application.
Step 2B. The only additional elements in claim 37 are the article, its memory, and the software update. The article and its memory are tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to add significantly more to the judicial exception.
The software update is well-understood, routine, and conventional. The evidence for this finding comes from the Applicant’s admissions on page 8 of the December 16, 2024 response, which include (1) an admission that “one or ordinary skill in the art would know that software and/or hardware maintenance of a electronic device, or upgrades to software of the electronic devices, may require user decisions and/or approval to proceed,” (2) an admission that “[o]ne or ordinary skill in the art would also know that, the software and/or hardware maintenance, or upgrades to software of the electronic device, may not proceed until the required user interaction occurs.”
The software update is also tangential to the solution of finding the right time to notify the user, and therefore, is considered to be “extra-solution activity.” Extra-solution activity does not transform a judicial exception into a practical application.
Accordingly, claim 37 is rejected under 35 U.S.C. § 101 for failing to recite significantly more than a judicial exception thereof.
Claim 38
Step 1. Claim 38 provides for an “article” with at least one computer hardware component (a memory) and is thus a “machine” or “article of manufacture” within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Abstract ideas are a judicial exception to 35 U.S.C. § 101, and one category of abstract ideas recognized by the courts and the Office are mental processes, i.e., concepts performed in the human mind including an observation, evaluation, judgment, opinion. MPEP § 2106.04(a).
In the instant case, claim 38 is directed to a mental process of discovering a person’s interaction is necessary to “maintain or upgrade at least one system,” and comparing that need to characteristics that have been observed about that person to evaluate the best time to notify him or her.
Each and every element of claim 38, apart from the article, its memory, and the step of updating the operating system, is an element of the judicial exception as described above. This includes the phrase “required to maintain or upgrade at least one system,” as well as the “wherein” clause inherited from the parent claim.
Regarding the determination that user interaction is “required to maintain or upgrade at least one system,” this is simply a mental comparison of known information. It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
This is just as true for the step of “identifying at least one behavior or habit of a user of the electronic device from device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device.” It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
The final clause at the end of the claim fails to actually limit any particular step of the claim, because the wherein clause refers back to the “providing a notification” step. The Applicant isn’t actually claiming that the electronic device is maintained or upgraded in response to the user response; rather, the wherein clause is merely a description of the context in which the notification exists. Had the Applicant wanted to claim the act of maintaining or upgrading the system, it would have simply claimed that step, rather than using the word “wherein” to further describe a step (the provision of the notification) that occurs prior to the hypothetical act of maintaining or upgrading the at least one system.
Said differently, claim 38 does not include a step of “maintaining or upgrading at least one system of the electronic device in response to a user response to the provided notification,” so the claim does not require that step to be performed, nor does it require a memory storing instructions for the same. See MPEP § 2111.04.
Step 2A, Prong Two. The only additional elements in claim 38 are the article, its memory, and the operating system update. The article and its memory are tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to transform the judicial exception into a practical application. The operating system update is tangential to the solution of finding the right time to notify the user, and therefore, is considered to be “extra-solution activity.” Extra-solution activity does not transform a judicial exception into a practical application.
Step 2B. The only additional elements in claim 38 are the article, its memory, and the operating system update. The article and its memory are tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to add significantly more to the judicial exception.
The operating system update is well-understood, routine, and conventional. The evidence for this finding comes from the Applicant’s admissions on page 8 of the December 16, 2024 response, which include (1) an admission that “one or ordinary skill in the art would know that software and/or hardware maintenance of a electronic device, or upgrades to software of the electronic devices, may require user decisions and/or approval to proceed,” (2) an admission that “[o]ne or ordinary skill in the art would also know that, the software and/or hardware maintenance, or upgrades to software of the electronic device, may not proceed until the required user interaction occurs.” The term “operating system” simply refers to a particular type of software, and thus, the Applicant’s admissions are just as applicable.
The operating system update is also tangential to the solution of finding the right time to notify the user, and therefore, is considered to be “extra-solution activity.” Extra-solution activity does not transform a judicial exception into a practical application.
Accordingly, claim 38 is rejected under 35 U.S.C. § 101 for failing to recite significantly more than a judicial exception thereof.
Claim 39
Step 1. Claim 39 provides for an “article” with at least one computer hardware component (a memory) and is thus a “machine” or “article of manufacture” within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Abstract ideas are a judicial exception to 35 U.S.C. § 101, and one category of abstract ideas recognized by the courts and the Office are mental processes, i.e., concepts performed in the human mind including an observation, evaluation, judgment, opinion. MPEP § 2106.04(a).
In the instant case, claim 39 is directed to a mental process of discovering a person’s interaction is necessary to “maintain or upgrade at least one system,” and comparing that need to characteristics that have been observed about that person to evaluate the best time to notify him or her.
Each and every element of claim 39, apart from the article, its memory, and the step of updating firmware, is an element of the judicial exception as described above. This includes the phrase “required to maintain or upgrade at least one system,” as well as the “wherein” clause inherited from the parent claim.
Regarding the determination that user interaction is “required to maintain or upgrade at least one system,” this is simply a mental comparison of known information. It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
This is just as true for the step of “identifying at least one behavior or habit of a user of the electronic device from device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device.” It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
The final clause at the end of the claim fails to actually limit any particular step of the claim, because the wherein clause refers back to the “providing a notification” step. The Applicant isn’t actually claiming that the electronic device is maintained or upgraded in response to the user response; rather, the wherein clause is merely a description of the context in which the notification exists. Had the Applicant wanted to claim the act of maintaining or upgrading the system, it would have simply claimed that step, rather than using the word “wherein” to further describe a step (the provision of the notification) that occurs prior to the hypothetical act of maintaining or upgrading the at least one system.
Said differently, claim 39 does not include a step of “maintaining or upgrading at least one system of the electronic device in response to a user response to the provided notification,” so the claim does not require that step to be performed, nor does it require a memory storing instructions for the same. See MPEP § 2111.04.
Step 2A, Prong Two. The only additional elements in claim 39 are the article, its memory, and the firmware update. The article and its memory are tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to transform the judicial exception into a practical application. The firmware update is tangential to the solution of finding the right time to notify the user, and therefore, is considered to be “extra-solution activity.” Extra-solution activity does not transform a judicial exception into a practical application.
Step 2B. The only additional elements in claim 39 are the article, its memory, and the software update. The article and its memory are tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to add significantly more to the judicial exception.
The firmware update is well-understood, routine, and conventional. The evidence for this finding comes from the Applicant’s admissions on page 8 of the December 16, 2024 response, which include (1) an admission that “one or ordinary skill in the art would know that software and/or hardware maintenance of a electronic device, or upgrades to software of the electronic devices, may require user decisions and/or approval to proceed,” (2) an admission that “[o]ne or ordinary skill in the art would also know that, the software and/or hardware maintenance, or upgrades to software of the electronic device, may not proceed until the required user interaction occurs.” Firmware is simply another form of software.
The firmware update is also tangential to the solution of finding the right time to notify the user, and therefore, is considered to be “extra-solution activity.” Extra-solution activity does not transform a judicial exception into a practical application.
Accordingly, claim 39 is rejected under 35 U.S.C. § 101 for failing to recite significantly more than a judicial exception thereof.
Claim 40
Steps 1 and 2A, Prong One. Claim 40 depends from claim 36, and therefore, all of the findings and rationale set forth in the rejection of claim 36 are hereby reincorporated by reference.
Step 2A, Prong Two. The only additional elements in claim 40 are the article, its memory, and the act of rebooting. The article and its memory are tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to transform the judicial exception into a practical application. The reboot is tangential to the solution of finding the right time to notify the user, and therefore, is considered to be “extra-solution activity.” Extra-solution activity does not transform a judicial exception into a practical application.
Step 2B. The only additional elements in claim 39 are the article, its memory, and the software update. The article and its memory are tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to add significantly more to the judicial exception.
The reboot is tangential to the solution of finding the right time to notify the user, and therefore, is considered to be “extra-solution activity.” Extra-solution activity does not transform a judicial exception into a practical application.
Accordingly, the claim fails to recite significantly more than a judicial exception to 35 U.S.C. § 101.
Claim 41
Steps 1 and 2A, Prong One. Claim 41 depends from claim 36, and therefore, all of the findings and rationale set forth in the rejection of claim 36 are hereby reincorporated by reference.
Step 2A, Prong Two. The only additional elements in claim 41 are the article, its memory, and the uploading or downloading of data. The article and its memory are tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to transform the judicial exception into a practical application. The uploading or downloading of data is tangential to the solution of finding the right time to notify the user, and therefore, is considered to be “extra-solution activity.” Extra-solution activity does not transform a judicial exception into a practical application.
Step 2B. The only additional elements in claim 39 are the article, its memory, and the deleting of data. The article and its memory are tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to add significantly more to the judicial exception.
The uploading or downloading of data is tangential to the solution of finding the right time to notify the user, and therefore, is considered to be “extra-solution activity.” Extra-solution activity does not transform a judicial exception into a practical application.
Accordingly, the claim fails to recite significantly more than a judicial exception to 35 U.S.C. § 101.
Claim 42
Steps 1 and 2A, Prong One. Claim 42 depends from claim 36, and therefore, all of the findings and rationale set forth in the rejection of claim 36 are hereby reincorporated by reference.
Step 2A, Prong Two. The only additional elements in claim 42 are the article, its memory, and the act of rebooting. The article and its memory are tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to transform the judicial exception into a practical application. The deleting of data is tangential to the solution of finding the right time to notify the user, and therefore, is considered to be “extra-solution activity.” Extra-solution activity does not transform a judicial exception into a practical application.
Step 2B. The only additional elements in claim 39 are the article, its memory, and the deleting of data. The article and its memory are tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to add significantly more to the judicial exception.
The deleting of data is tangential to the solution of finding the right time to notify the user, and therefore, is considered to be “extra-solution activity.” Extra-solution activity does not transform a judicial exception into a practical application.
Accordingly, the claim fails to recite significantly more than a judicial exception to 35 U.S.C. § 101.
Claim 43
Steps 1 and 2A, Prong One. Claim 43 depends from claim 36, and therefore, all of the findings and rationale set forth in the rejection of claim 36 are hereby reincorporated by reference.
Step 2A, Prong Two. The only additional elements in claim 43 are the article, its memory, and the hardware exception. The article and its memory are tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to transform the judicial exception into a practical application. The hardware exception is tangential to the solution of finding the right time to notify the user, and therefore, is considered to be “extra-solution activity.” Extra-solution activity does not transform a judicial exception into a practical application.
Step 2B. The only additional elements in claim 39 are the article, its memory, and the hardware exception. The article and its memory are tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to add significantly more to the judicial exception.
The hardware exception is tangential to the solution of finding the right time to notify the user, and therefore, is considered to be “extra-solution activity.” Extra-solution activity does not transform a judicial exception into a practical application.
Accordingly, the claim fails to recite significantly more than a judicial exception to 35 U.S.C. § 101.
Claim 44
Step 1. Claim 44 provides for an “article” with at least one computer hardware component (a memory) and is thus a “machine” or “article of manufacture” within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Abstract ideas are a judicial exception to 35 U.S.C. § 101, and one category of abstract ideas recognized by the courts and the Office are mental processes, i.e., concepts performed in the human mind including an observation, evaluation, judgment, opinion. MPEP § 2106.04(a).
In the instant case, claim 44 is directed to a mental process of discovering a person’s interaction is necessary to “maintain or upgrade at least one system,” cross-referencing the current or expected location of the device with locations known to be conducive to exchanging data or coupling a power source, and comparing the earlier-mentioned need to characteristics that have been observed about that person to evaluate the best time to notify him or her.
Each and every element of claim 44, apart from the article and its memory, is an element of the judicial exception as described above. This includes the phrase “required to maintain or upgrade at least one system,” as well as the “wherein” clause at the end of the claim.
Regarding the determination that user interaction is “required to maintain or upgrade at least one system,” this is simply a mental comparison of known information. It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
This is just as true for the step of “identifying at least one behavior or habit of a user of the electronic device from device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device.” It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
The final clause at the end of the claim fails to actually limit any particular step of the claim, because the wherein clause refers back to the “providing a notification” step. The Applicant isn’t actually claiming that the electronic device is maintained or upgraded in response to the user response; rather, the wherein clause is merely a description of the context in which the notification exists. Had the Applicant wanted to claim the act of maintaining or upgrading the system, it would have simply claimed that step, rather than using the word “wherein” to further describe a step (the provision of the notification) that occurs prior to the hypothetical act of maintaining or upgrading the at least one system.
Said differently, claim 44 does not include a step of “maintaining or upgrading at least one system of the electronic device in response to a user response to the provided notification,” so the claim does not require that step to be performed, nor does it require a memory storing instructions for the same. See MPEP § 2111.04.
Step 2A, Prong Two. The only additional element in claim 44 is the article and its memory. This is tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to transform the judicial exception into a practical application.
Step 2B. The only additional element in claim 44 is the article and its memory. This is tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to add significantly more to the judicial exception.
Accordingly, claim 44 is rejected under 35 U.S.C. § 101 for failing to recite significantly more than a judicial exception thereof.
Claim 45
Step 1. Claim 45 provides for an “article” with at least one computer hardware component (a memory) and is thus a “machine” or “article of manufacture” within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Abstract ideas are a judicial exception to 35 U.S.C. § 101, and one category of abstract ideas recognized by the courts and the Office are mental processes, i.e., concepts performed in the human mind including an observation, evaluation, judgment, opinion. MPEP § 2106.04(a).
In the instant case, claim 45 is directed to a mental process of discovering that it is necessary to “move the electronic device from one location to another” in order to “maintain or upgrade at least one system,” and comparing the earlier-mentioned need to characteristics that have been observed about that person to evaluate the best time to notify him or her.
Each and every element of claim 45, apart from the article and its memory, is an element of the judicial exception as described above. This includes the phrase “required to maintain or upgrade at least one system,” as well as the “wherein” clause at the end of the claim.
Regarding the determination that user interaction is “required to maintain or upgrade at least one system,” this is simply a mental comparison of known information. It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
This is just as true for the step of “identifying at least one behavior or habit of a user of the electronic device from device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device.” It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
The final clause at the end of the claim fails to actually limit any particular step of the claim, because the wherein clause refers back to the “providing a notification” step. The Applicant isn’t actually claiming that the electronic device is maintained or upgraded in response to the user response; rather, the wherein clause is merely a description of the context in which the notification exists. Had the Applicant wanted to claim the act of maintaining or upgrading the system, it would have simply claimed that step, rather than using the word “wherein” to further describe a step (the provision of the notification) that occurs prior to the hypothetical act of maintaining or upgrading the at least one system.
Said differently, claim 45 does not include a step of “maintaining or upgrading at least one system of the electronic device in response to a user response to the provided notification,” so the claim does not require that step to be performed, nor does it require a memory storing instructions for the same. See MPEP § 2111.04.
Step 2A, Prong Two. The only additional element in claim 45 is the article and its memory. This is tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to transform the judicial exception into a practical application.
Step 2B. The only additional element in claim 45 is the article and its memory. This is tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to add significantly more to the judicial exception.
Accordingly, claim 45 is rejected under 35 U.S.C. § 101 for failing to recite significantly more than a judicial exception thereof.
Claim 46
Step 1. Claim 46 provides for an “article” with at least one computer hardware component (a memory) and is thus a “machine” or “article of manufacture” within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Abstract ideas are a judicial exception to 35 U.S.C. § 101, and one category of abstract ideas recognized by the courts and the Office are mental processes, i.e., concepts performed in the human mind including an observation, evaluation, judgment, opinion. MPEP § 2106.04(a).
In the instant case, claim 46 is directed to a mental process of discovering that it is necessary to dock the electronic device in order to “maintain or upgrade at least one system,” and comparing the earlier-mentioned need to characteristics that have been observed about that person to evaluate the best time to notify him or her.
Each and every element of claim 46, apart from the article and its memory, is an element of the judicial exception as described above. This includes the phrase “required to maintain or upgrade at least one system,” as well as the “wherein” clause at the end of the claim.
Regarding the determination that user interaction is “required to maintain or upgrade at least one system,” this is simply a mental comparison of known information. It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
This is just as true for the step of “identifying at least one behavior or habit of a user of the electronic device from device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device.” It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
The final clause at the end of the claim fails to actually limit any particular step of the claim, because the wherein clause refers back to the “providing a notification” step. The Applicant isn’t actually claiming that the electronic device is maintained or upgraded in response to the user response; rather, the wherein clause is merely a description of the context in which the notification exists. Had the Applicant wanted to claim the act of maintaining or upgrading the system, it would have simply claimed that step, rather than using the word “wherein” to further describe a step (the provision of the notification) that occurs prior to the hypothetical act of maintaining or upgrading the at least one system.
Said differently, claim 46 does not include a step of “maintaining or upgrading at least one system of the electronic device in response to a user response to the provided notification,” so the claim does not require that step to be performed, nor does it require a memory storing instructions for the same. See MPEP § 2111.04.
Step 2A, Prong Two. The only additional element in claim 46 is the article and its memory. This is tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to transform the judicial exception into a practical application.
Step 2B. The only additional element in claim 46 is the article and its memory. This is tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to add significantly more to the judicial exception.
Accordingly, claim 46 is rejected under 35 U.S.C. § 101 for failing to recite significantly more than a judicial exception thereof.
Claim 47
The text of the rejection of claim 46 is hereby reincorporated by reference, with the phrase “in a cradle” added to the phrase “docking the electronic device.
Claim 48
Step 1. Claim 48 provides for an “article” with at least one computer hardware component (a memory) and is thus a “machine” or “article of manufacture” within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Abstract ideas are a judicial exception to 35 U.S.C. § 101, and one category of abstract ideas recognized by the courts and the Office are mental processes, i.e., concepts performed in the human mind including an observation, evaluation, judgment, opinion. MPEP § 2106.04(a).
In the instant case, claim 48 is directed to a mental process of discovering that it is necessary to couple the electronic device to a power source in order to “maintain or upgrade at least one system,” and comparing the earlier-mentioned need to characteristics that have been observed about that person to evaluate the best time to notify him or her.
Each and every element of claim 48, apart from the article and its memory, is an element of the judicial exception as described above. This includes the phrase “required to maintain or upgrade at least one system,” as well as the “wherein” clause at the end of the claim.
Regarding the determination that user interaction is “required to maintain or upgrade at least one system,” this is simply a mental comparison of known information. It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
This is just as true for the step of “identifying at least one behavior or habit of a user of the electronic device from device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device.” It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
The final clause at the end of the claim fails to actually limit any particular step of the claim, because the wherein clause refers back to the “providing a notification” step. The Applicant isn’t actually claiming that the electronic device is maintained or upgraded in response to the user response; rather, the wherein clause is merely a description of the context in which the notification exists. Had the Applicant wanted to claim the act of maintaining or upgrading the system, it would have simply claimed that step, rather than using the word “wherein” to further describe a step (the provision of the notification) that occurs prior to the hypothetical act of maintaining or upgrading the at least one system.
Said differently, claim 48 does not include a step of “maintaining or upgrading at least one system of the electronic device in response to a user response to the provided notification,” so the claim does not require that step to be performed, nor does it require a memory storing instructions for the same. See MPEP § 2111.04.
Step 2A, Prong Two. The only additional element in claim 48 is the article and its memory. This is tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to transform the judicial exception into a practical application.
Step 2B. The only additional element in claim 48 is the article and its memory. This is tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to add significantly more to the judicial exception.
Accordingly, claim 48 is rejected under 35 U.S.C. § 101 for failing to recite significantly more than a judicial exception thereof.
Claim 49
Steps 1 and 2A, Prong One. Claim 49 depends from claim 36, and therefore, all of the findings and rationale set forth in the rejection of claim 36 are hereby reincorporated by reference.
Step 2A, Prong Two. The only additional elements in claim 49 are the article, its memory, and the “adjusting at least one functionality.” The article and its memory are tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to transform the judicial exception into a practical application. The “functionality” adjustment is tangential to the solution of finding the right time to notify the user, and therefore, is considered to be “extra-solution activity.” Extra-solution activity does not transform a judicial exception into a practical application.
Step 2B. The only additional elements in claim 49 are the article, its memory, and the functionality adjustment. The article and its memory are tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to add significantly more to the judicial exception.
The functionality adjustment is tangential to the solution of finding the right time to notify the user, and therefore, is considered to be “extra-solution activity.” Extra-solution activity does not transform a judicial exception into a practical application.
Accordingly, the claim fails to recite significantly more than a judicial exception to 35 U.S.C. § 101.
Claim 50
The text of the rejection of claim 49 is hereby reincorporated by reference, with the word “functionality” replaced with “turning the functionality on or off.”
Claim 51
Step 1. Claim 51 provides for an “article” with at least one computer hardware component (a memory) and is thus a “machine” or “article of manufacture” within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Abstract ideas are a judicial exception to 35 U.S.C. § 101, and one category of abstract ideas recognized by the courts and the Office are mental processes, i.e., concepts performed in the human mind including an observation, evaluation, judgment, opinion. MPEP § 2106.04(a).
In the instant case, claim 51 is directed to a mental process of discovering that “hardware maintenance” is necessary in order to “maintain or upgrade at least one system,” and comparing the earlier-mentioned need to characteristics that have been observed about that person to evaluate the best time to notify him or her.
Each and every element of claim 51, apart from the article and its memory, is an element of the judicial exception as described above. This includes the phrase “required to maintain or upgrade at least one system,” as well as the “wherein” clause at the end of the claim.
Regarding the determination that user interaction is “required to maintain or upgrade at least one system,” this is simply a mental comparison of known information. It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
This is just as true for the step of “identifying at least one behavior or habit of a user of the electronic device from device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device.” It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
The final clause at the end of the claim fails to actually limit any particular step of the claim, because the wherein clause refers back to the “providing a notification” step. The Applicant isn’t actually claiming that the electronic device is maintained or upgraded in response to the user response; rather, the wherein clause is merely a description of the context in which the notification exists. Had the Applicant wanted to claim the act of maintaining or upgrading the system, it would have simply claimed that step, rather than using the word “wherein” to further describe a step (the provision of the notification) that occurs prior to the hypothetical act of maintaining or upgrading the at least one system.
Said differently, claim 51 does not include a step of “maintaining or upgrading at least one system of the electronic device in response to a user response to the provided notification,” so the claim does not require that step to be performed, nor does it require a memory storing instructions for the same. See MPEP § 2111.04.
Step 2A, Prong Two. The only additional element in claim 51 is the article and its memory. This is tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to transform the judicial exception into a practical application.
Step 2B. The only additional element in claim 51 is the article and its memory. This is tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to add significantly more to the judicial exception.
Accordingly, claim 51 is rejected under 35 U.S.C. § 101 for failing to recite significantly more than a judicial exception thereof.
Claim 52
Step 1. Claim 52 provides for an “article” with at least one computer hardware component (a memory) and is thus a “machine” or “article of manufacture” within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Abstract ideas are a judicial exception to 35 U.S.C. § 101, and one category of abstract ideas recognized by the courts and the Office are mental processes, i.e., concepts performed in the human mind including an observation, evaluation, judgment, opinion. MPEP § 2106.04(a).
In the instant case, claim 52 is directed to a mental process of discovering a need to “maintain or upgrade at least one system,” and comparing the earlier-mentioned need to changed characteristics that have been observed about that person to evaluate the best time to notify him or her.
Each and every element of claim 52, apart from the article and its memory, is an element of the judicial exception as described above. This includes the phrase “required to maintain or upgrade at least one system,” as well as the “wherein” clause at the end of the claim.
Regarding the determination that user interaction is “required to maintain or upgrade at least one system,” this is simply a mental comparison of known information. It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
This is just as true for the step of “identifying at least one behavior or habit of a user of the electronic device from device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device.” It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
The final clause at the end of the claim fails to actually limit any particular step of the claim, because the wherein clause refers back to the “providing a notification” step. The Applicant isn’t actually claiming that the electronic device is maintained or upgraded in response to the user response; rather, the wherein clause is merely a description of the context in which the notification exists. Had the Applicant wanted to claim the act of maintaining or upgrading the system, it would have simply claimed that step, rather than using the word “wherein” to further describe a step (the provision of the notification) that occurs prior to the hypothetical act of maintaining or upgrading the at least one system.
Said differently, claim 52 does not include a step of “maintaining or upgrading at least one system of the electronic device in response to a user response to the provided notification,” so the claim does not require that step to be performed, nor does it require a memory storing instructions for the same. See MPEP § 2111.04.
Step 2A, Prong Two. The only additional element in claim 52 is the article and its memory. This is tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to transform the judicial exception into a practical application.
Step 2B. The only additional element in claim 52 is the article and its memory. This is tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to add significantly more to the judicial exception.
Accordingly, claim 52 is rejected under 35 U.S.C. § 101 for failing to recite significantly more than a judicial exception thereof.
Claims 53–55
Claims 53–55 simply describe the nature of the data considered as part of the abstract idea described in the rejection of claim 52. Since the content of information does not change its character as abstract, claims 53–55 are rejected for the same reason as claim 52. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (23 “Information as such is an intangible . . . . Accordingly, we have treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas.”).
Claim 56
Step 1. Claim 56 provides for an “article” with at least one computer hardware component (a memory) and is thus a “machine” or “article of manufacture” within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Abstract ideas are a judicial exception to 35 U.S.C. § 101, and one category of abstract ideas recognized by the courts and the Office are mental processes, i.e., concepts performed in the human mind including an observation, evaluation, judgment, opinion. MPEP § 2106.04(a).
In the instant case, claim 56 is directed to a mental process of discovering a person’s interaction is necessary to “maintain or upgrade at least one system,” and comparing that need to characteristics that have been observed about that person to evaluate the best time to notify him or her.
Each and every element of claim 56, apart from the article and its memory, is an element of the judicial exception as described above. This includes the phrase “required to maintain or upgrade at least one system,” as well as the clause at the end of the claim.
Regarding the determination that user interaction is “required to maintain or upgrade at least one system,” this is simply a mental comparison of known information. It does not matter that the information concerns information about a computer, or even an “automatically-triggered event,” because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
This is just as true for the step of “identifying at least one behavior or habit of a user of the electronic device from device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device.” It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
The “at least one system of the electronic device maintained or upgraded” clause at the end of the claim fails to actually limit any particular step of the claim, because the wherein clause refers back to the “providing a notification” step. The Applicant isn’t actually claiming that the electronic device is maintained or upgraded in response to the user response; rather, the wherein clause is merely a description of the context in which the notification exists. Had the Applicant wanted to claim the act of maintaining or upgrading the system, it would have simply claimed that step, rather than using the word “wherein” to further describe a step (the provision of the notification) that occurs prior to the hypothetical act of maintaining or upgrading the at least one system.
Said differently, claim 36 does not include a step of “maintaining or upgrading at least one system of the electronic device in response to a user response to the provided notification,” so the claim does not require that step to be performed, nor does it require a memory storing instructions for the same. See MPEP § 2111.04.
Step 2A, Prong Two. The only additional element in claim 36 is the article and its memory. This is tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to transform the judicial exception into a practical application.
Step 2B. The only additional element in claim 56 is the article and its memory. This is tantamount to a bare instruction to apply the judicial exception to a general-purpose computer, and therefore, fails to add significantly more to the judicial exception.
Accordingly, claim 56 is rejected under 35 U.S.C. § 101 for failing to recite significantly more than a judicial exception thereof.
Claim 57
Step 1. Claim 57 includes the same hardware-based system of claim 36, and is thus a “machine” (or “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 57 incorporates the device of claim 36 by reference, and therefore, so too does this rejection incorporate the corresponding analysis for Step 2A, Prong One, set forth in the rejection of claim 36.
Claim 57 further specifies that the “providing the notification” step of claim 36 further includes, based on the obtained user characteristics, selecting which “type” of notification to provide or selecting a particular time at which to provide the notification. All of the foregoing falls within the judicial exception for the following reasons.
Claims can recite a mental process even if they are claimed as being performed on a computer. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)) In this case, claim 36 is directed to a mental process of observing characteristics about a person, and claim 57 is further directed to the mental process of using those observed characteristics to evaluate the best time or way to notify the person.
It is acknowledged that, based on the analysis above, claim 57 adds a second abstract idea to the existing abstract idea of its parent claim. The MPEP instructs examiners to treat claims that recite multiple abstract ideas as though they recite a single judicial exception, see MPEP § 2106.04(II.)(B.), and therefore, that is what is done for claim 57. That is, claim 57 recites two abstract ideas, and therefore, remains an abstract idea within the judicially recognized exception to the statute.
Step 2A, Prong Two. Claim 57 incorporates the system of claim 36 by reference, and therefore, so too does this rejection incorporate the corresponding analysis for Step 2A, Prong Two, set forth in the rejection of claim 36. Also, much like claim 36, the two additional steps recited in claim 57 are performed by the system. As previously explained, this phrase amounts to no more than a recitation of the words “apply it” to a generic electronic device, or mere instructions to implement the abstract idea on the electronic device.
Step 2B. Claim 57 incorporates the system of claim 36 by reference, and therefore, so too does this rejection incorporate the corresponding analysis for Step 2B, set forth in the rejection of claim 36. Also, much like claim 57, the two additional steps recited in claim 36 are performed by the system. As previously explained, this phrase amounts to no more than a recitation of the words “apply it” to a generic computer system, or mere instructions to implement the abstract idea on the computer system.
In view of the foregoing, Claim 57 is rejected under 35 U.S.C. § 101 for failing to claim significantly more than a judicial exception to 35 U.S.C. § 101.
Claim 58
Step 1. Claim 58 includes the same hardware-based system of claim 57, and is thus a “machine” (or possibly “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 58 incorporates the device of claim 57 by reference, and therefore, so too does this rejection incorporate the corresponding analysis for Step 2A, Prong One, set forth in the rejection of claim 57.
In addition to the foregoing, claim 58 tacks a second abstract mental process onto the steps of claim 57. The mental process of claim 58 includes all of the text below except for the stricken portions:
providing one of
In other words, the additional limitations of claim 58 recite the abstract idea of a mental process in which one of among two possible types of notifications are selected based on a simple comparison of a user characteristic to a criterion.
Step 2A, Prong Two. Claim 58 includes the following additional elements beyond the judicial exception: (1) the “system including a memory storing instructions” and electronic device inherited from claim 1, and (2) the character of the two types of notifications as “audible” and “visual.”
These elements, taken both individually and in combination, do not integrate the exception into a practical application of the above-described judicial exception. Individually, limitation (1) is a mere instruction to apply the abstract idea to a generic computer system, and limitation (2) is extra-solution activity because the character of the actual notification as being “audible” or “visual” amounts to necessary data outputting, and is tangential to the overall solution of providing different types of notifications in general during different circumstances. Looking at the limitations as a combination, they do not describe a practical application of the abstract idea: there is no claimed improvement in the functioning of a computer or other technology, there is no particular machine or manufacture that is integral to the claim, and there are no real world transformations between states.
Step 2B. Claim 58 does not include additional elements that are sufficient to amount to significantly more than the judicial exception for the same reasons the additional elements fail to recite a practical application. That is, limitation (1) is a mere instruction to apply the abstract idea to a generic computer system, and limitation (2) is extra-solution activity because the character of the actual notification as being “audible” or “visual” amounts to necessary data outputting, and is tangential to the overall solution of providing different types of notifications in general during different circumstances. Looking at the limitations as a combination, they do not describe a practical application of the abstract idea: there is no claimed improvement in the functioning of a computer or other technology, there is no particular machine or manufacture that is integral to the claim, and there are no real world transformations between states.
Claim 59
Claim 59 simply describes the nature of the data considered as part of the abstract idea described in the rejection of claim 36. Since the content of information does not change its character as abstract, claim 59 is rejected for the same reason as claim 36. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (23 “Information as such is an intangible . . . . Accordingly, we have treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas.”).
Claim 60
Step 1. Claim 60 provides for a “method” and is thus a “process” within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 60 recites, at best, two elements: (1) “employing” the article of claim 36, and (2) upgrading or maintaining at least one system of the same, but only “in response to the user response to the provided notification.”
Regarding element (1), the text of the rejection of claim 36 is hereby reincorporated by reference. The bare act of “employing” an ineligible article of manufacture does not make the article or the method any more eligible. Indeed, the insignificant act of “applying” ineligible subject matter to a bare computer is at the core of the Supreme Court’s holding in Alice Corp. v. CLS Bank Int’l.
Regarding element (2), the broadest reasonable interpretation of claim 60 does not require the act of upgrading or maintaining the system of the electronic device, because that act is contingent upon the unmet, non-required condition precedent of “in response to the user response to the provided notification.”
“The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met.” MPEP § 2111.04 (subsection II.). In this case, neither claim 60 nor its parent claim require the user to respond to the provided notification, they only say what would happen if the user were to respond to the notification. Consequently, since the condition precedent is not required in every run of the method, neither is its contingent step of upgrading or maintaining the system of the electronic device required, either. Optional elements of a claim cannot transform that claim into an eligible invention. Accordingly, claim 60 remains ineligible for at least this reason.
Step 2A, Prong Two. Even assuming for the sake of argument that element (2) was required in the scope of the claim, it still fails to describe a practical application of the judicial exception. “In cases involving software innovations, this inquiry often turns on whether the claims focus on specific asserted improvements in computer capabilities or instead on a process or system that qualifies an abstract idea for which computers are invoked merely as a tool.” Uniloc USA, Inc. v. LG Elect’s USA, Inc., 957 F.3d 1303, 1306 (Fed. Cir. 2020).
The broadly recited act of “upgrading, or maintaining, the at least one system” clearly does not limit the claim scope to “specific asserted improvements in computer capabilities.” To the contrary, it appears to cover the entire genus of upgrading or maintaining a computer. Indeed, that is why the Federal Circuit recently acknowledged that “updating toolbar software over a network,” even “without user intervention,” “amounts to no more than invoking computers as a tool to perform the abstract ideas of collecting information, analyzing information, and presenting the results of the analysis in the software update context.” MyMail, Ltd. v. ooVoo, LLC, No. 2020-1825, 2021 U.S. App. LEXIS 24764, at *11 (Fed. Cir. Aug. 19, 2021) (non-precedential) (emphasis added).
Step 2B. As discussed above, every element recited in claim 60 is part of the judicial exception itself, meaning there are no “additional elements” to analyze under step 2B, apart from the “article” of claim 36 mentioned only in the preamble of claim 60. To the extent the “article” is part of the claim, all of the findings and rationale from the rejection of claim 36 are hereby reincorporated by reference as applied to this claim.
Accordingly, claim 60 is rejected under 35 U.S.C. § 101 for failing to recite significantly more than an abstract idea.
Claim 61
Step 1. Claim 61 provides for a “method,” and is therefore a “process” within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Abstract ideas are a judicial exception to 35 U.S.C. § 101, and one category of abstract ideas recognized by the courts and the Office are mental processes, i.e., concepts performed in the human mind including an observation, evaluation, judgment, opinion. MPEP § 2106.04(a).
In the instant case, claim 61 is directed to a mental process of discovering a person’s interaction is necessary to “maintain or upgrade at least one system,” and comparing that need to characteristics that have been observed about that person to evaluate the best time to notify him or her.
Each and every element of claim 61 is an element of the judicial exception as described above. This includes the phrase “required to maintain or upgrade at least one system,” as well as the “maintaining or upgrading” clause at the end of the claim.
Regarding the determination that user interaction is “required to maintain or upgrade at least one system,” this is simply a mental comparison of known information. It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
This is just as true for the step of “identifying at least one behavior or habit of a user of the electronic device from device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device.” It does not matter that the information concerns information about a computer, because performing a mental process in a computer environment is still an abstract idea. MPEP § 2106.04(a)(2) (subsection (Ⅲ.)(C.)).
Regarding “maintaining or upgrading, the at least one system at a time,” this element is not outside the judicial exception for two reasons. First, claim 61 says that this step is only performed “in response to receiving a user response to the provided notification.” This means that the act of maintaining or upgrading the system is optional, since it is contingent upon the unmet, non-required condition precedent of “in response to the user response to the provided notification.”
“The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met.” MPEP § 2111.04 (subsection II.). In this case, claim 61 does not require the user to respond to the provided notification: it only says what would happen if the user were to respond to the notification. Consequently, since the condition precedent is not required in every run of the method, neither is its contingent step of upgrading or maintaining the system of the electronic device required, either. Optional elements of a claim cannot transform that claim into an eligible invention.
Second, even assuming for the sake of argument that the “maintaining or upgrading” step was a required element of the claim, it still fails to describe a practical application of the judicial exception.
“In cases involving software innovations, this inquiry often turns on whether the claims focus on specific asserted improvements in computer capabilities or instead on a process or system that qualifies an abstract idea for which computers are invoked merely as a tool.” Uniloc USA, Inc. v. LG Elect’s USA, Inc., 957 F.3d 1303, 1306 (Fed. Cir. 2020).
Here, the broadly recited act of “upgrading, or maintaining, the at least one system” clearly does not limit the claim scope to “specific asserted improvements in computer capabilities.” To the contrary, it appears to cover the entire genus of upgrading or maintaining a computer. Indeed, that is why the Federal Circuit recently acknowledged that “updating toolbar software over a network,” even “without user intervention,” “amounts to no more than invoking computers as a tool to perform the abstract ideas of collecting information, analyzing information, and presenting the results of the analysis in the software update context.” MyMail, Ltd. v. ooVoo, LLC, No. 2020-1825, 2021 U.S. App. LEXIS 24764, at *12 (Fed. Cir. Aug. 19, 2021) (non-precedential) (emphasis added).
Step 2A, Prong Two. For the reasons discussed above, claim 61 does not recite any required “additional elements” beyond the elements of the judicial exception itself, leaving nothing to analyze for consideration of a practical application or significantly more.
Additionally, even if those reviewing this rejection disagree with the Examiner’s finding under prong one with respect to “the at least one system of the electronic device maintained or upgraded, in response to a user response to the provided notification, wherein the user response includes the required user interaction,” the Examiner also finds that this limitation fails to integrate the claim into a practical application because it is tantamount to mere instructions to apply the judicial exception. See MPEP § 2106.05(f).
Specifically, MPEP § 2106.05(f) identifies three factors for determining whether an additional element amounts to nothing more than a mere instruction to apply the exception to a computer, and in this case, all three factors resolve against a finding of practical application under Step 2A, Prong Two.
The first factor is “[w]hether the claim recites only the idea of a solution or outcome.” MPEP § 2106.05(f). “The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application.” MPEP § 2106.05(f). This factor clearly resolves against a practical application. The claim language covers any and all possible manner of “upgrading” or “maintaining” a system, and likewise for the “required user interaction.” There absolutely no detail about how the upgrade or the maintenance is performed in the claim language, or even in the specification (see Spec. ¶¶ 2 and 17 (last sentence)). The claim language literally names the entire genus of upgrading or maintaining, and likewise for the “required user interaction.”
The second factor is “[w]hether the claim invokes computers or other machinery merely as a tool to perform an existing process,” such as when a claim recites the “[u]se of a computer or other machinery in its ordinary capacity.” MPEP § 2106.05(f) (emphasis added). “Maintaining” a system, by definition, is necessarily an example of using a computer in its ordinary capacity. The same is true for broadly “updating” and providing “required inputs.”
The third factor is “[t]he particularity or generality of the application of the judicial exception.” MPEP § 2106.05(f). “A claim having broad applicability across many fields of endeavor may not provide meaningful limitations that integrate a judicial exception into a practical application or amount to significantly more.” MPEP § 2106.05(f). Once again, this factor resolves against a finding of a practical application. The claim language covers any and all possible manner of “upgrading” or “maintaining” a system, and likewise for the “required user interaction.” There absolutely no detail about how the upgrade or the maintenance is performed in the claim language, or even in the specification (see Spec. ¶¶ 2 and 17 (last sentence)). The claim language literally names the entire genus of upgrading or maintaining, and likewise for the “required user interaction.”
Step 2B. Additionally, even if those reviewing this rejection disagree with the Examiner’s finding under prong one with respect to “the at least one system of the electronic device maintained or upgraded, in response to a user response to the provided notification, wherein the user response includes the required user interaction,” the Examiner also finds that this limitation fails add significantly more to the judicial exception because it recites well-understood, routine, and conventional (“WURC”) activity.
The Berkheimer evidence in support of this finding of WURC activity is the Applicant’s specific admission that upgrading or maintaining a system is well-understood, routine, and conventional in the art on pages 8–10 of the July 10, 2024 Request for Continued Examination (and likewise in the supplemental filing of December 16, 2024) (hereafter “December 2024 Admitted Prior Art”). There, the Applicant admitted the following, all of which is evidence in the Record of well-understood, routine, and conventional activity:
Admission (1) “[O]ne or ordinary skill in the art would know that software upgrades to electronic devices may require user decisions and/or approval to proceed.” (December 2024 Admitted Prior Art page 8).
Admission (2) “One or ordinary skill in the art would also know that, the software upgrade may not proceed until the required user interaction occurs.” (December 2024 Admitted Prior Art page 8).
Admission (3) “One of ordinary skill in the art also knows that, in the particular technical environment and/or field of invention, a new software installation may improve functionality of the electronic device.” (December 2024 Admitted Prior Art page 8).
Admission (4) “One of ordinary skill in the art also knows that . . . This [i.e., improving the device via an update] may be through bug fixes and/or added features coming with the new software.” (December 2024 Admitted Prior Art page 8).
The above four admissions of what “one of ordinary skill in the art would know” prior to the invention therefore show that upgrading or maintaining a system was well-understood, routine, and conventional at the time of the claimed invention.
Accordingly, claim 61 is rejected under 35 U.S.C. § 101 for failing to recite significantly more than a judicial exception thereof.
Claim Rejections – 35 U.S.C. § 112(a)
The following is a quotation of 35 U.S.C. § 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. § 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 52–55, 57, and 58 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 52–55, 57, and 58
The specification fails to disclose detecting a change in the “obtained” one or more user characteristics.
This limitation appears to be a misunderstanding of the original claim language, and block 406, and therefore, the two will be addressed together.
The written description of block 406 never says anything about the user characteristics obtained by block 404 changing. It simply provides that “a change in user characteristics may be detected” in general, without ever referencing back to the user characteristics of block 404. (Spec. ¶ 22). Notably, the Applicant did not use the phrase “a change in the obtained user characteristics,” or even “a change in the user characteristics” in paragraph 22 or in original claim 10. The word “obtained” did not appear until the Office presented the Applicant with reference that tracks changes in a user’s characteristics.
So, if the user characteristics obtained in block 404 did not change, then what “change” does block 406 detect? To answer that question, we can examine the Applicant’s working examples for block 406, and discover a pattern in which block 406 merely detects a change that is relative to the obtained one or more user characteristics of the plurality of user characteristics.
In a first working example, detecting a change in a user characteristic includes “detecting that a user is using the device at a time when user characteristics indicate that the user will not be using the device.” (Spec. ¶ 22). In this example, the obtained user characteristic itself has not changed, because it continues to “indicate that the user will not be using the device” at this particular time. Rather, the “change” that block 406 detects is that the current user characteristic of device usage is changed, relative to the unchanged record of the user’s schedule obtained at block 404.
In another working example, detecting a change in a user characteristic can include “detecting that a battery charge is low when user characteristics indicate that a user should have recently charged the device.” (Spec. ¶ 22). Once again, the obtained user characteristic itself has not changed, because it continues to “indicate that a user should have recently charged the device.” Rather, the “change” that block 406 detects in this example is that the current user characteristic at this time have changed, relative to the unchanged record of the how often the user ordinarily charges his device.
Similarly, original claim 10 never detected changes in user characteristics obtained after the claimed event. Claim 10 merely stores the user characteristics, detects an event, and then inspects the original user characteristics to see if there are any changes. This is quite different from what the Applicant is now claiming, in order to avoid a prior art reference, where the invention provides the user characteristics first, detects an event, and then, only after obtaining another set of user characteristics post-event, inspects the “obtained” user characteristics for changes, rather than the user characteristics that the invention originally “provided” at the beginning of the claim.
Accordingly, in view of the foregoing evidence, claims 52–55 and 57–58 are rejected for claiming new matter.
Claim Rejections – 35 U.S.C. § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
…
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Lee discloses claims 36, 43–46, 48–54, 56, 57, and 59–61.
Claims 36, 43–46, 48–54, 56, 57, and 59–61 are rejected under pre-AIA 35 U.S.C. § 102(e) as being anticipated by U.S. Patent Application Publication No. 2008/0201587 A1 (“Lee”).
Claim 36
Lee discloses:
An article
“FIG. 1 is a block diagram of electronic device 100 according to one embodiment of the invention. Device 100 is typically a portable or mobile electronic device. Device 100 can pertain to a computing device, a media player, a mobile telephone, a portable game player, portable workout manager, and the like.” Lee ¶ 26.
comprising memory having stored thereon, that, when executed, result in:
“Device 100 can include power manager 106. Power manager 106 can manage power consumption by device 100. In one embodiment, the power consumption of device 100 is managed by power manager 106 based on usage of device 100 by a user. Power manager 106 can be coupled to processor 102 so that power manager 106 can inform processor 102 of any power related information or actions to be performed. Although power manager 106 is shown in FIG. 1 as separate form processor 102, it should be understood that power manager 106 could also be part of or incorporated into processor 102.” Lee ¶ 28.
detecting an indication that user interaction with an electronic device is required to maintain or upgrade at least one system of the electronic device,
As shown in FIGS. 2 and 3–6,1 processes 200 and 500 each detect an indication (via decisions 208 or 508) “that the available battery power is not greater than the estimated power requirements,” Lee ¶ 37, and as such, detect that it is necessary for the user to either connect the device 100 to an external power source, Lee ¶ 40, or that it is necessary for the user to provide a user input that “request[s] or authorize[s] the electronic device to make further (or alternative) function or operational sacrifices in order to preserve the available battery power for the impending device usage.” Lee ¶ 41. Both cases at least fall within the scope of “maintaining” the device 100.
wherein the detection of the indication comprises an event in the electronic device;
Each of decisions 208 or 508 include “events” within the meaning of the claimed invention. In the case of process 200, the “event” is “[i]mpending device usage,” which “can be usage that is current, usage that is imminent, usage that is predicted to occur relatively soon, or usage that is previously scheduled, (e.g., via a calendar or schedule).” Lee ¶ 35. In the case of process 500, the claimed event corresponds to data concerning “duration of usage or activities, or other characteristics of the electronic device, user or scheduled activity.” Lee ¶ 48.
identifying at least one behavior or habit of a user of the electronic device from device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device;
Prior to the start of processes 200 or 500, device 100 is given a plurality of different types of information about a user that identify his historical usage of device 100 over time, such as “past usage data, a calendar entry, user input,” Lee ¶ 43, or, “a recent user selection (e.g., via a GUI),” Lee ¶ 46, as well as “workout data, such as performance data.” Lee ¶ 30.
obtaining at least one user characteristic based on the identified at least one behavior or habit, the obtaining responsive to said detected event;
Having determined that the available battery charge is inadequate, “user settings 112 can signal processor 102 that the user has certain preferences on how device 100 should operate when available battery charge is inadequate.” Lee ¶ 30.
providing a notification to invite user interaction in a manner synchronized with the at least one user characteristic, wherein the notification is provided responsive to the detected event;
Processor 102 may now perform either of blocks 210 or 410,2 albeit in accordance with the signal that user settings 112 sent to processor 102 responsive to determining the inadequate battery charge in either of decisions 208 or 508.
Importantly, as shown in FIG. 7, one of the user settings 112 include a “[u]ser selection control 712 [that] can request that the electronic device remind the user to charge the device if it is anticipated that the battery will need additional charge to satisfy likely future usage,” either in a manner that is “generally applicable across many potential usages,” or in a manner that is “directed to particular usages (e.g., run, phone call, etc.).” Lee ¶ 53.
Therefore, in cases where the signal from user settings 112 permit such notification, performance of step 210 includes executing a step 310 of presenting “a warning . . . on a display device associated with the electronic device. For example, the warning can notify the user of the electronic device that the impending device usage cannot be properly supported unless an external power source is utilized or the battery is further charged.” Lee ¶ 40. In addition to connecting to an external power source, a user of process 200 also has the option of responding with an input that changes the device’s power demands. Lee ¶ 41.
Similarly, in the case of process 500, “the user of the electronic device can be notified 510 that charging is recommended. Notification 510 to the user can further be provided to the user with sufficient advance notice so that sufficient amount of time for charging is provided. Still further, notification 510 can advise a user of the minimum, recommended or suggested duration of charging to be provided.” Lee ¶ 48. Similarly, process 500 also gives the user the option to respond with an input that alters the device’s power demands. See Lee ¶ 51.
and the at least one system of the electronic device maintained or upgraded, in response to a user response to the provided notification, wherein the user response includes the required user interaction.
“Next, decision 312 can determine whether the user of the electronic device has initiated power adjustments. Here, the user of the electronic device can make power adjustments to further reduce (or otherwise alter) power consumption by the electronic device. Here, the behavior of the electronic device can be modified 314 based on user input. For example, the user input may request or authorize the electronic device to make further (or alternative) function or operational sacrifices in order to preserve the available battery power for the impending device usage.” Lee ¶ 41. Alternatively, the user may simply follow the guidance “by coupling battery 104 to an AC outlet to allow a charge circuit (not shown) to charge battery 104.” Lee ¶ 27.
Claim 43
Lee discloses the article of claim 36,
wherein the event in the electronic device comprises a need for hardware service.
Specifically, Lee’s electronic device detects a time when its battery (which is part of the hardware) needs to be charged (a service for said hardware): “For example, if the future power requirements are that one (1) hour of video playback is needed on the electronic device for a 4:00 PM meeting, then the user can be notified at 3:00 PM that thirty (30) minutes of charging is needed prior to the 4:00 PM meeting.” Lee ¶ 50.
Claim 44
Lee discloses the article of claim 36,
wherein the electronic device comprises a portable electronic device,
“Device 100 is typically a portable or mobile electronic device. Device 100 can pertain to a computing device, a media player, a mobile telephone, a portable game player, portable workout manager, and the like.” Lee ¶ 26.
and wherein the event in the portable electronic device comprises the portable electronic device identifying that a current or expected location of the portable electronic device is conducive to: exchanging data with a remote device,
“[A] power estimate for the electronic device to complete the imminent user activity can be obtained 404. The power estimate can be dependent on the type of user activity. Examples of types of user activity depend on the particular device but can, for example, include wireless voice communications [and/or] data transfer.” Lee ¶ 46.
or coupling a power storage device of the electronic device to a power source.
“The notification regarding charging can also be sent to a user in advance of the future power requirements such that the user has adequate time to sufficiently charge the battery. For example, if the future power requirements are that one (1) hour of video playback is needed on the electronic device for a 4:00 PM meeting, then the user can be notified at 3:00 PM that thirty (30) minutes of charging is needed prior to the 4:00 PM meeting.” Lee ¶ 50. In other words, the device 100 has detected that charging is available now, but not later.
Claim 45
Lee discloses the article of claim 36,
wherein the electronic device comprises a portable electronic device,
“Device 100 is typically a portable or mobile electronic device. Device 100 can pertain to a computing device, a media player, a mobile telephone, a portable game player, portable workout manager, and the like.” Lee ¶ 26.
and wherein the required user interaction comprises moving the portable electronic device from one location to another.
“As one example, device 100 can be portable,” Lee ¶ 26, and its “battery 104 is rechargeable by coupling battery 104 to an AC outlet to allow a charge circuit (not shown) to charge battery 104.” Lee ¶ 27. Accordingly, when the device 100 determines its current charge capacity is inadequate, “[t]he notification can inform the user of the insufficient battery charge capacity and/or provide recommendations regarding charging battery 104,” Lee ¶ 32, by bringing the device to a location that is within the length of “a power cord coupled to an AC plug.” Lee ¶ 33.
Claim 46
Lee discloses the article of claim 45, wherein moving the electronic device from one location to another comprises
docking the electronic device.
“Although device 100 is powered by battery 114, in one embodiment, device 100 can also at times utilize power from AC power supplied via a power cord coupled to an AC plug. The AC power is also used to charge battery 114.” Lee ¶ 33.
Claim 48
Lee discloses the article of claim 36,
wherein the electronic device comprises a portable electronic device,
“Device 100 is typically a portable or mobile electronic device. Device 100 can pertain to a computing device, a media player, a mobile telephone, a portable game player, portable workout manager, and the like.” Lee ¶ 26.
wherein the required user interaction comprises coupling the portable electronic device to a power source,
“For example, the warning can notify the user of the electronic device that the impending device usage cannot be properly supported unless an external power source is utilized or the battery is further charged.” Lee ¶ 40.
and wherein a power storage device of the portable electronic device is recharging following the coupling.
“Typically, battery 104 is rechargeable by coupling battery 104 to an AC outlet to allow a charge circuit (not shown) to charge battery 104.” Lee ¶ 27.
Claim 49
Lee discloses the article of claim 36, wherein the instructions, when executed, further result in
adjusting at least one functionality of the at least one system.
“For example, when a battery powering the electronic device does not have sufficient stored energy to play the media content for thirty (30) minutes and then support the phone call for its likely duration, the power management can cease the media playback and/or alter the user that power conservation is required. Alternatively, the power management might permit the media playback to continue but without use of a display or with reduced volume.” Lee ¶ 43.
Interestingly, although not explicitly required by this claim language, Lee further teaches that the device 100 may solicit or receive user input to “request or authorize the electronic device to make further (or alternative) function or operational sacrifices in order to preserve the available battery power for the impending device usage.” Lee ¶ 41.
Claim 50
Lee discloses the article of claim 49,
wherein adjusting the at least one functionality comprises turning the at least one functionality on or off.
“For example, when a battery powering the electronic device does not have sufficient stored energy to play the media content for thirty (30) minutes and then support the phone call for its likely duration, the power management can cease the media playback and/or alter the user that power conservation is required. Alternatively, the power management might permit the media playback to continue but without use of a display.” Lee ¶ 43.
Claim 51
Lee discloses the article of claim 36,
wherein the required user interaction comprises hardware maintenance.
“For example, the warning can notify the user of the electronic device that the impending device usage cannot be properly supported unless an external power source is utilized or the battery is further charged.” Lee ¶ 40.
Claim 52
Lee discloses the article of claim 36, wherein the instructions, when executed, further result in:
determining that a change in the obtained at least one user characteristic corresponds to an activity from a predetermined set of activities;
“At least one of user settings 112 can pertain to a user setting regarding operation of device 100 when the charge capacity of battery 104 is diminished as compared to the power estimated to be required to satisfy the device usage requirements.” Lee ¶ 30. More specifically, the user settings may pertain to “power reduction preferences with respect to different usage activities for the electronic device,” such as “Run 702” and “Phone Call 704.” Lee ¶ 52.
wherein providing the notification to invite the required user interaction in the synchronized manner comprises providing the notification based on a result of the determining.
“[W]hen the battery charge capacity is inadequate to support the device usage requirements, a notification can be presented by device 100.” Lee ¶ 32.
Claim 53
Lee discloses the article of claim 52,
wherein the predetermined set of activities includes one or more activities conducive to downloading data.
“With respect to phone call 704 usage, user selection control 714 can authorize the electronic device to disable access to a local wireless network.” Lee ¶ 54.
Claim 54
Lee discloses the article of claim 52,
wherein the set of activities includes a user-specified activity and one or more additional activities that are different than the user-specified activity.
“Impending device usage can be . . . usage that is predicted to occur relatively soon, or usage that is previously scheduled, (e.g., via a calendar or schedule).” Lee ¶ 35. It should be understood that the “previously scheduled” activity is the user-specified one, whereas the predicted activity is the additional activity.
Claim 56
Lee discloses the article of claim 36,
wherein the event comprises an automatically-triggered event.
In the case of process 200, the “event” is “[i]mpending device usage,” which “can be usage that is current, usage that is imminent, usage that is predicted to occur relatively soon, or usage that is previously scheduled, (e.g., via a calendar or schedule).” Lee ¶ 35. In the case of process 500, the claimed event corresponds to data concerning “duration of usage or activities, or other characteristics of the electronic device, user or scheduled activity.” Lee ¶ 48.
Claim 57
Lee discloses the article of claim 36, wherein the providing the notification to invite the required user interaction in the synchronized manner includes:
providing a type of notification selected from a plurality of different types of notifications based on a detected change in the obtained at least one user characteristic;
One plurality of different types of notifications Lee discloses are that “charge reminders can be generally applicable across many potential usages as indicated in FIG. 7, or can be directed to particular usages (e.g., run, phone call, etc.).” Lee ¶ 53. Another different type of notification that Lee discloses is one that asks the user to disable specific functions of the device. See Lee ¶ 45.
or providing the notification at a time selected from a plurality of different times based on the detected change in the one or more user characteristics.
As shown in FIG. 7, the user preferences may include either a preference “that the electronic device warn the user when remaining call time is below a user-determined number of minutes.” Lee ¶ 54.
Claim 59
Lee discloses the article of claim 36,
wherein a user characteristic of the plurality of user characteristics is obtained by accessing an electronic calendar.
“A user of the electronic device may have an impending phone call to take using the electronic device in thirty (30) minutes. The electronic device can know or predict this by various means, including past usage data, a calendar entry, user input, etc. However, if the user is now playing back media content using the electronic device, the electronic device can manage its power utilization as needed.” Lee ¶ 43.
Claim 60
Lee discloses
A method employing the article of claim 36, the method comprising:
Lee discloses multiple processes (200 and 500), which employ an electronic device 100 to carry out said processes. See Lee ¶¶ 26, 28, 34, and 47.
upgrading, or maintaining, the at least one system of the electronic device, in response to the user response to the provided notification.
“Next, decision 312 can determine whether the user of the electronic device has initiated power adjustments. Here, the user of the electronic device can make power adjustments to further reduce (or otherwise alter) power consumption by the electronic device. Here, the behavior of the electronic device can be modified 314 based on user input. For example, the user input may request or authorize the electronic device to make further (or alternative) function or operational sacrifices in order to preserve the available battery power for the impending device usage.” Lee ¶ 41. Alternatively, the user may simply follow the guidance “by coupling battery 104 to an AC outlet to allow a charge circuit (not shown) to charge battery 104.” Lee ¶ 27.
Claim 61
Lee discloses:
A method, comprising:
“FIG. 2 is a flow diagram of power manager process 200 according to one embodiment of the invention,” Lee ¶ 34, and similarly, “FIG. 5 is a flow diagram of charge monitor process 500 according to [another] embodiment of the invention.” Lee ¶ 47.
To be clear, while this rejection provides claim mappings for two different embodiments, the rejection does not rely upon a combination of these two embodiments. Rather, both embodiments separately and independently anticipate the method of claim 61, and this rejection will provide a separate mapping for both embodiments to show how each individual embodiment discloses each and every element of the claim, for the sake of comprehensiveness and compact prosecution.
detecting an indication that user interaction with an electronic device is required to maintain or upgrade at least one system of the electronic device,
As shown in FIGS. 2 and 3–6,3 processes 200 and 500 each detect an indication (via decisions 208 or 508) “that the available battery power is not greater than the estimated power requirements,” Lee ¶ 37, and as such, detect that it is necessary for the user to either connect the device 100 to an external power source, Lee ¶ 40, or that it is necessary for the user to provide a user input that “request[s] or authorize[s] the electronic device to make further (or alternative) function or operational sacrifices in order to preserve the available battery power for the impending device usage.” Lee ¶ 41. Both cases at least fall within the scope of “maintaining” the device 100.
wherein the detection of the indication comprises an event in the electronic device;
Each of decisions 208 or 508 include “events” within the meaning of the claimed invention. In the case of process 200, the “event” is “[i]mpending device usage,” which “can be usage that is current, usage that is imminent, usage that is predicted to occur relatively soon, or usage that is previously scheduled, (e.g., via a calendar or schedule).” Lee ¶ 35. In the case of process 500, the claimed event corresponds to data concerning “duration of usage or activities, or other characteristics of the electronic device, user or scheduled activity.” Lee ¶ 48.
identifying at least one behavior or habit of a user of the electronic device from device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device;
Prior to the start of processes 200 or 500, device 100 is given a plurality of different types of information about a user that identify his historical usage of device 100 over time, such as “past usage data, a calendar entry, user input,” Lee ¶ 43, or, “a recent user selection (e.g., via a GUI),” Lee ¶ 46, as well as “workout data, such as performance data.” Lee ¶ 30.
obtaining at least one user characteristic based on the identified at least one behavior or habit, the obtaining responsive to said detected event;
Having determined that the available battery charge is inadequate, “user settings 112 can signal processor 102 that the user has certain preferences on how device 100 should operate when available battery charge is inadequate.” Lee ¶ 30.
providing a notification to invite user interaction in a manner synchronized with the at least one user characteristic, wherein the notification is provided responsive to the detected event;
Processor 102 may now perform either of blocks 210 or 410,4 albeit in accordance with the signal that user settings 112 sent to processor 102 responsive to determining the inadequate battery charge in either of decisions 208 or 508.
Importantly, as shown in FIG. 7, one of the user settings 112 include a “[u]ser selection control 712 [that] can request that the electronic device remind the user to charge the device if it is anticipated that the battery will need additional charge to satisfy likely future usage,” either in a manner that is “generally applicable across many potential usages,” or in a manner that is “directed to particular usages (e.g., run, phone call, etc.).” Lee ¶ 53.
Therefore, in cases where the signal from user settings 112 permit such notification, performance of step 210 includes executing a step 310 of presenting “a warning . . . on a display device associated with the electronic device. For example, the warning can notify the user of the electronic device that the impending device usage cannot be properly supported unless an external power source is utilized or the battery is further charged.” Lee ¶ 40. In addition to connecting to an external power source, a user of process 200 also has the option of responding with an input that changes the device’s power demands. Lee ¶ 41.
Similarly, in the case of process 500, “the user of the electronic device can be notified 510 that charging is recommended. Notification 510 to the user can further be provided to the user with sufficient advance notice so that sufficient amount of time for charging is provided. Still further, notification 510 can advise a user of the minimum, recommended or suggested duration of charging to be provided.” Lee ¶ 48. Similarly, process 500 also gives the user the option to respond with an input that alters the device’s power demands. See Lee ¶ 51.
and in response to receiving a user response to the provided notification, wherein the user response includes the required user interaction, maintaining or upgrading, the at least one system at a time;
“Next, decision 312 can determine whether the user of the electronic device has initiated power adjustments. Here, the user of the electronic device can make power adjustments to further reduce (or otherwise alter) power consumption by the electronic device. Here, the behavior of the electronic device can be modified 314 based on user input. For example, the user input may request or authorize the electronic device to make further (or alternative) function or operational sacrifices in order to preserve the available battery power for the impending device usage.” Lee ¶ 41. Alternatively, the user may simply follow the guidance “by coupling battery 104 to an AC outlet to allow a charge circuit (not shown) to charge battery 104.” Lee ¶ 27.
wherein if the response to the provided notification is not received, the required user interaction is not performed, and the at least one system is not maintained or upgraded at said time.
Lee discloses this conditional statement by further disclosing, “following decision 312 when the user does not make any power adjustments, power reduction process 300 can end,” rather than modifying the device’s behavior according to the input mentioned above. Lee ¶ 41.
That being said, the prior art does not need to disclose this element to anticipate the claim, because “the required user interaction is not performed, and the at least one system is not maintained or upgraded at said time” is a contingent limitation with an unmet condition precedent (“if the response to the provided notification is not received”). That is, claim 61 never requires a failure to respond to the notification, so anything that happens upon that condition is considered optional under the broadest reasonable interpretation of claim 61. MPEP § 2111.04 (subsection II.).
II. Palaniappan discloses claims 36–42.
Claims 36–42 are rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by U.S. Patent No. 6,711,557 B1 (“Palaniappan”).
Claim 36
Palaniappan discloses
An article comprising a memory having stored thereon instructions, that, when executed, result in:
“The invention [described in the Palaniappan patent] may be implemented in digital electronic circuitry, or in computer hardware, firmware, software, or in combinations of them. Apparatus of the invention may be implemented in a computer program product tangibly embodied in a machine-readable storage device for execution by a programmable processor; and method steps of the invention may be performed by a programmable processor executing a program of instructions to perform functions of the invention by operating on input data and generating output.” Palaniappan col. 7 ll. 40–50.
detecting an indication that user interaction with the electronic device is required to maintain or upgrade at least one system of the electronic device,
In response to detecting that a software update is available, one or more applications 50 determine “whether to ask the user before downloading and installing [an] update.” Palaniappan col. 4 ll. 35–36. As will be discussed in greater detail below, the applications 50 may be configured such that user consent is required before downloading and/or installing the update, and hence, the determination that an update is both available and requires user consent is indeed an indication that user interaction is required to maintain or upgrade at least one system of the client machine 10.
Note that to the extent this claim requires the user interaction to be with a “electronic device,” Palaniappan further discloses “[t]he client machine can be any digital electronic device configured for program installation and execution, including, by way of example, desktop and laptop personal computers, personal digital assistants, and web-enabled mobile telephones.” Palaniappan col. 8 ll. 10–15.
wherein the detection of the indication comprises an event in the electronic device;
“[W]hen the process [200] determines that an update is available, the corresponding application is notified on the client machine (step 260). The background process can do this by setting a flag in the database that the application examines at a time selected by the application, such as when the application next is executed, by sending a message to the application, or otherwise.” Palaniappan col. 4 ll. 27–34.
identifying at least one behavior or habit of a user of the electronic device from device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device;
During a time period when “a user interface window to open through which the user can set preferences and otherwise control operation of the update monitoring feature,” Palaniappan col. 3 ll. 23–26, those set preferences may be “recorded in [a] database” (and thus identified). Palaniappan col. 5 ll. 5–8. Notably, these set preferences explicitly describe how the user behaves in response to a need to download updates and install updates: “Whether to do either or both operations without user intervention or interaction, and whether they should be done by the background process or by the application, can be . . . set by the user as a preference, which can be recorded in the database.” Palaniappan col. 5 ll. 1–8.
obtaining at least one user characteristic from based on the identified at least one behavior or habit, the obtaining responsive to said detected event;
“As shown in FIG. 3, in one implementation, if an update exists (step 310, ‘yes’ branch), the application obtains a description and other information about the update from the database (step 320).” Palaniappan col. 4 ll. 45–48. This “other information” may further comprise information that was “set by the user as a preference, which can be recorded in the database” regarding “[w]hether to do either or both operations of” downloading or installing an update, with or without “user intervention or interaction, and whether they should be done by the background process or by the application.” Palaniappan col. 5 ll. 1–7.
providing a notification to invite user interaction in a manner synchronized with the at least one user characteristic,
Depending on the preferences mentioned above, the application “then presents descriptive information about the update to the user and asks the user whether to download, download and install, or skip the update (step 330).” Palaniappan col. 4 ll. 48–51.
wherein the notification is provided responsive to the detected event;
Step 330 is responsive to step 320 of reacting to the existence of an update. See Palaniappan col. 4 ll. 10–15 and 45–47.
and wherein the at least one system of the electronic device is maintained or upgraded, in response to a user response to the provided notification, wherein the user response includes the required user interaction.
“If the user requests a download, the application obtains the location of the update from the database and downloads the update (step 340). If the user requests download and install, the application also installs the update, or causes it to be installed (step 350).” Palaniappan col. 4 ll. 51–55.
Claim 37
Palaniappan discloses the article of claim 36, wherein the instructions, when executed, further result in
updating software of the electronic device in response to the user response.
“If the user requests download and install, the application also installs the update, or causes it to be installed (step 350).” Palaniappan col. 4 ll. 51–55.
Claim 38
Palaniappan discloses the article of claim 37,
wherein the maintained or upgraded includes updating an operating system of the electronic device.
“Additional meta-information can be included. For example, an XML file can include (a) tags to identify that a component or update should be placed in a system folder, such as the System folder on a MacOS operating system or a windows or win32 folder on a Microsoft Windows operating system.” Palaniappan col. 7 ll. 32–39.
Claim 39
Palaniappan discloses the article of claim 36, wherein the instructions, when executed, further result in
updating firmware of the electronic device in response to the user response.
“The invention may be implemented in digital electronic circuitry, or in computer hardware, firmware, software, or in combinations of them.” Palaniappan col. 7 ll. 40–43.
Claim 40
Palaniappan discloses the article of claim 36, wherein the instructions, when executed, further result in
rebooting the electronic device in response to the user response.
As shown in the table printed across columns 4–7, the metadata for each update may include an “InstallRestart” flag, which, when marked, “indicates that after installation, the user should be prompted to restart the OS before the component/update installation can take effect.” Palaniappan col. 7 ll. 9–11.
Claim 41
Palaniappan discloses the article of claim 36, wherein the instructions, when executed, further result in
uploading data from the electronic device, or downloading data from a data source remote from the electronic device, in response to the user response.
“If the user requests a download, the application obtains the location of the update from the database and downloads the update (step 340). If the user requests download and install, the application also installs the update, or causes it to be installed (step 350).” Palaniappan col. 4 ll. 51–55. As shown in FIG. 1, the data source for the update (updates 40 residing on server machine 20) are remote from client machine 10).
Claim 42
Palaniappan discloses the article of claim 36, wherein the instructions, when executed, further result in
deleting data in response to the user response.
As explained in the rejection of claim 36, Palaniappan discloses downloading and intalling an application update in response to the user response. Palaniappan col. 4 ll. 51–55. However, Palaniappan further discloses that “[t]he client-resident database is updated for each matching application (step 250) to include the current meta-information for all registered application.” Palaniappan col. 4 ll. 10–12. This necessarily means that the client-resident database replaces (and therefore deletes) its record of the old version of the software with a record of the new version of the software that it just updated (because without making this change, the new software would continuously try to keep updating itself). See Palaniappan col. 4 ll. 12–15 (“By comparing what the current information indicates should be installed with what is actually installed, the process determines whether an applicable update is available.”); see also col. 8 ll. 37–39.
Claim Rejections – 35 U.S.C. § 103
The following is a quotation of pre-AIA 35 U.S.C. § 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
I. Lee and Chen teach claim 47.
Claim 47 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Lee as applied to claim 46 above, and further in view of UK Patent Application No. GB 2386297 A (“Chen”).
Claim 47
Lee teaches the article of claim 46, but does not explicitly disclose “placing the electronic device in a cradle.”
Chen, however, teaches a portable handset 20, which, much like Lee and the claimed invention, instructs its user to charge its battery when the battery level is low, which is otherwise located away from the handset 20 during its operation. See Chen Abstract and FIG. 1A
Chen further teaches:
moving the electronic device from one location to another comprises placing the electronic device in a cradle.
As shown in FIGS. 1A and 1B, the handset 20 and the base station each instruct the user to dock the handset onto the base station for charging. Chen 5, ll. 22–25.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Lee’s device 100 with Chen’s base station according to known methods in order to yield the predictable result of a device 100 that is chargeable via docking with a base station.
The rationale for this conclusion of obviousness “is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art.” MPEP § 2143 (subsection (I.)(A.)) (citing KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 416 (2007)).
Consistent with the guidance provided at MPEP § 2143 (subsection (I.)(A.)), a preponderance of the evidence establishes the following findings of fact, which lead to the above conclusion of obviousness:
(1) The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. The evidence for this finding is provided in the mappings of each claim element to each respective prior art element in the rejections of claims 36, 46, and 47, above.
(2) One of ordinary skill in the art could have combined the elements as claimed by known methods, and in combination, each element merely performs the same function as it does separately. The evidence for this finding is that both references individually teach arrangements for charging a portable device’s battery using an external source of electricity, again, per the citations given above. Likewise, Chen provides the evidence that each element performs the same function in combination. That is, Chen teaches the combination of the portable device with the base station. Chen, further teaches that there are known base stations capable of supporting a wide variety of portable devices. See Chen 8, ll. 5–9.
(3) One of ordinary skill in the art would have recognized that the results of the combination were predictable. For the same reasons as given above with respect to the combination.
II. Lee and Horvitz-491 teach claim 55.
Claim 55 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Lee as applied to claim 54 above, and further in view of U.S. Patent Application Publication No. 2003/0014491 A1 (“Horzitz-491”).
Claim 55
Lee teaches the article of claim 54, but does not specify whether the one or more additional user-specified activities include the user being at home, the user being in the office, or the user driving.
However, Horvitz-491 teaches a system that determines a detected change in one or more user characteristics corresponds to an additional activity,
wherein the one or more additional user-specified activities include the user being at home, the user being in the office, or the user driving.
“According to one aspect of the invention, a user state identifier is provided to log comings and goings associated with users and to detect current and/or real-time states of the user (e.g., presence, attention, focus, goals, location) . . . . These events, in addition to an optional utilization of other sensors such as motion detectors, cameras and microphones that perform acoustic analysis of conversation or activity, can be employed to identify when a user leaves his or her office or home.” Horvitz-491 ¶ 33.
“Alternative applications of the system 10 can include finer grained inferences other than the notion of availability. For example, the system 10 can employ similar methods to reason about the amount of time until a user will be available for a particular kind of interaction or communications, based on patterns of availability and context. For example, the expected time until a user, who is currently traveling in automobile or other situation will be available for a voice and/or video conference can be determined by learning statistics and building models which can infer this particular kind of availability.” Horvitz-491 ¶ 56.
It would have been obvious to one of ordinary skill in the art at the time of the claimed invention to fortify Lee’s list of potential activities for a user to include the user being at or leaving home, being at or leaving the office, or traveling in an automobile, as taught by Horvitz-491. One would have been motivated to combine Horvitz-491 with Lee because “there is a need for a system and methodology to provide improved coordination between parties and to mitigate uncertainty associated with when and/or how long it will be before a message receiver responds to a particular message.” Horvitz-491 ¶ 5.
III. Lee and Kaminsky teach claim 58.
Claim 58 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Lee as applied to claim 57 above, and further in view of U.S. Patent No. 7,496,352 B2 (“Kaminsky”).
Claim 58
Lee teaches the article of claim 57, wherein the instructions, when executed, further result in:
providing one of an audible notification and a visual notification to invite the required user interaction in the case that a detected change in the obtained at least one user characteristic coincides with at least one predefined criterion;
“In one embodiment, the power management can alternatively or additionally notify the user of the electronic device through visual (e.g., via display) or audio means that power management is needed. The user can they make selection to influence or control power management.” Lee ¶ 44.
Lee does not appear to explicitly disclose whether the provision of the alternate versions of the notification (i.e., audible vs. visual) depends upon the existence or absence of the at least one predefined criterion.
Kaminsky, however, teaches a system configured to perform operations including:
providing one of an audible notification and a visual notification to invite the required user interaction in the case that a detected change in the obtained at least one user characteristic coincides with at least one predefined criterion;
As shown in FIG. 4, when the criteria for policy 5 is met, the telephone provides an audible notification. See Kaminsky FIG. 4.
and providing the other of the audible notification and the visual notification to invite the required user interaction in the case that the detected change in the obtained one or more user characteristics does not coincide with the at least one predefined criterion.
Additionally, when the criteria for policy 5 is not met (because the criteria for policy 7 is met instead), the telephone provides a visual notification of turning itself off. Kaminsky FIG. 4. Alternatively, the user may select a ring behavior that “displays a message for the user and allows the user to leave a room before the telephone starts to ring.” Kaminsky col. 7 ll. 9–12.
It would have been obvious to one of ordinary skill in the art at the time of the claimed invention to improve Lee’s device 100 with Kaminsky’s technique of alternating between audible and visual alerts depending on the circumstances of the user’s current context. One would have been motivated to combine Kaminsky with Lee because “a need exists for a method for automatically changing the telephone behavior so that the cellular telephone will not create a disturbance when the user forgets to manually change one or more settings on a cellular telephone.” Kaminsky col. 1 ll. 26–31.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Justin R. Blaufeld whose telephone number is (571)272-4372. The examiner can normally be reached M-F 9:00am - 4:00pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James K Trujillo can be reached at (571) 272-3677. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Justin R. Blaufeld
Primary Examiner
Art Unit 2151
/Justin R. Blaufeld/Primary Examiner, Art Unit 2151
1 FIGS. 3 and 6 each illustrate the sub-steps performed within a single step of respective processes 200 and 500.
2 Recall from earlier that block 210 is illustrated in greater detail in FIG. 3, see Lee ¶ 38, and likewise, block 410 is illustrated in greater detail in FIG. 5.
3 FIGS. 3 and 6 each illustrate the sub-steps performed within a single step of respective processes 200 and 500.
4 Recall from earlier that block 210 is illustrated in greater detail in FIG. 3, see Lee ¶ 38, and likewise, block 410 is illustrated in greater detail in FIG. 5.
Prosecution Insights