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 Arguments
Subject Matter Eligibility
Claims 1–9, 21–24, and 29–38 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (an abstract idea) without significantly more. The Applicant’s traversal of this ground of rejection has been considered, including in light of the present amendment, but remains unpersuasive.
Regarding independent claims 1 and 20, the Applicant does not raise any arguments concerning the rejection. All of the Applicant’s remarks appear to focus on rejection of claim 29.1
The Applicant’s arguments concerning the 35 U.S.C. § 101 rejection of claim 29 (or the other independent claims) is not persuasive, because it is wholly limited to elements and steps that are not required to infringe the claimed invention. Specifically, the Applicant urges that “the original disclosure is concerned with, for example, systems that are designed to require attended software upgrades” that “require real-time user presence and input by the user.” (Response 9).
While the Examiner can certainly appreciate why a system or process which requires the user’s active participation during a meaningful sequence of software-updating operations (e.g., where the nature of the update changes and branches depending on the user’s answers at different times during the update) might be patent-eligible, the Applicant did not claim such a process. The relevant limitation reads as follows:
detecting an event that requires user interaction with the electronic device and, when performed, improves reliability or availability of the electronic device, or updates software of the electronic device, wherein the event comprises an attended event in the electronic device, the attended event being one that cannot be performed without the user interaction;
Detecting that an event involving an attended software update will occur is not the same as actually performing steps participating in the event. Nothing has changed with this amendment. The claimed invention is still merely gathering information about the existence of a condition in the electronic device, which condition includes the claimed “attended event.” As our reviewing court has warned, claim elements that merely collect information about a specific machine or function, in contrast to claim elements that actually require the specific elements of such a machine or function themselves, are directed to an abstract idea, despite the content of the information they collect: “The advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions.” Electric Power Group v. Alstom, 830 F.3d 1350, 1354 (Fed. Cir. 2016). “Collecting information,” including information about the state of a particular hardware system, “does not change its character as information,” and therefore, remains “within the realm of abstract ideas.” Id. at 1353.
Accordingly, the Examiner is not persuaded that the claimed invention recites patent-eligible subject matter. Therefore, for the reasons set forth in the rejection below, the claims stand rejected under 35 U.S.C. § 101 for reciting ineligible subject matter, as do the other independent claims for substantially the same reasons.
New Matter
The rejection of the claims under 35 U.S.C. § 112(a) based on the “obtained” language is hereby withdrawn, responsive to the Applicant removing the new matter from the claims involving the “obtained” one or more user characteristics.
However, claims 1–9, 20–24, and 29–38 stand 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, based on the continued recitation of “an event that requires user interaction to complete, and when performed, improves functionality of the electronic device” in claims 1–9, and “an event that requires user interaction to complete, and when performed, improves reliability or availability of the electronic device” in claims 29–38.
The Applicant contends that it “amended the claims along the lines of the Examiner’s suggestion” by removing “detecting an indication,” but the Examiner is unaware of any such suggestion. (See Non Final Office Action 42–44 ¶¶ 216–224 (March 12, 2025)).
Additional grounds of rejection for new matter, unrelated to this ground (and therefore not yet addressed in the Applicant’s remarks) are also raised for the first time herein.
Accordingly, the claims stand rejected for their recitation of new matter.
Double Patenting
The provisional double patenting rejection is hereby held in abeyance. The Examiner reserves the right to raise the rejection at a latter time if necessary (subject to the Office’s rules involving finality of office actions).
Prior Art Rejections
Claim(s) 1, 2, 4, 6, 8, 20–23, 32, 34, 36, and 38 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent Application Publication No. 2008/0201587 A1 (“Lee”) in view of U.S. Patent Application Publication No. 2007/0004385 A1 (“Horvitz-385”). The Applicant’s remarks have been considered, but are not persuasive.
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 providing a plurality of different types of user characteristics formed by implicitly profiling the operator’s interactions with the electronic device over time.” (Response 13). However, 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. Moreover, Horvitz-385 teaches exactly this, in an overlapping teaching provided in the rejection (yet never argued by the Applicant). Accordingly, this argument is not persuasive.
Claim 21 stands rejected under 35 U.S.C. § 102 as anticipated by Horzitz-385. The Applicant alleges that it “amended claim 21 to require performing one or more device operations to improve the functionality of the computing device in response to a user response to the notification, wherein the user response includes the required user interaction.” (Response 15). However, such an amendment fails to remove the unmet condition precedent: performing one or more device operations to improve the functionality of the computing device is only “required” “in response to a user response to the notification, wherein the user response includes the required user interaction.” There is never a separately recited step in claim 21 of affirmatively having the user respond to the notification; the claim only recites what must happen if the user responds.
Accordingly, the rejection under 35 U.S.C. § 102 is maintained.
In view of the foregoing, the Applicant’s request for a notice of allowance is respectfully denied.
Claim Objections
Claims 1, 21, 29 now recite “a electronic device,” as a result of the Applicant deleting the word “portable.” However, since the word “electronic” begins with a vowel sound, it must be preceded by the word “an” rather than “a.”
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.
In addition to claim 21, the rest of the claims are also rejected under 35 U.S.C. § 103(a) in view of newly cited prior art necessitated by the amendment. Accordingly, since all of the claims stand rejected, this application is not in condition for allowance.
Claims 1–9, 21–24, and 29–38 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 three 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 1
Step 1. Claim 1 provides for a “system” with at least one computer hardware component (a memory) and is thus a “machine” (or possibly “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 1 is directed to a mental process of observing characteristics about a person, observing requirements of an electronic device, and using the observed characteristics about the person to evaluate the best time to notify the person about the requirements of the electronic device. More specifically, all of the following text of claim 1, except for the text highlighted with italics, is considered to be part and parcel of the judicial exception itself. The reference numbers denote claim elements that are purely part of the judicial exception but warrant further discussion. Clam elements highlighted with italics font denote “additional elements” to the judicial exception. They will not ignored by this rejection, but are instead analyzed in Prong Two of step 2A, and in step 2B.
A system including a electronic device to [sense device interactions performed by an operator via a user interface of the electronic device,]¹ the system comprising a memory storing instructions operable to, when executed by at least one processor, perform operations including:
providing a plurality of different types of user characteristics formed by implicitly profiling the operator’s interactions with the electronic device over time, the plurality of different types of user characteristics including [data characterizing at least one user behavior or habit identified from ones of the device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device]²;
[detecting an event that requires user interaction to complete, and when performed, improves functionality of the electronic device, wherein the detected event comprises an attended event in the electronic device, the attended event being one that cannot be performed without user interaction]3;
obtaining at least one user characteristic of the plurality of different types of user characteristics responsive to said detected event;
detecting a change in one or more user characteristics of the plurality of different types of user characteristics; and
[synchronously managing one or more software or hardware systems of the electronic device]4 based on the detected change in the one or more user characteristics of the plurality of different types of user characteristics, including providing a notification to invite the user interaction in a manner synchronized with the detected change in the one or more user characteristics of the plurality of different types of user characteristics, wherein the notification is provided responsive to the detected event; and
in response to a user response to the notification, wherein the user response includes the user interaction, performing one or more device operations [to improve the functionality of the electronic device]5.
The clauses surrounded with brackets [ ] and superscript numerals are highlighted above to provide a reference for further discussion. Each of these four clauses are claim language that the Applicant contends to be “additional elements” beyond the judicial exception, but the Examiner respectfully disagrees, and contends that these clauses are part of the judicial exception for the following reasons.
Clause 1 recites the intended use of the electronic device “to sense device interactions performed by an operator via a user interface of the electronic device.” The intended use of an electronic device is part of the judicial exception because “using a computer as a tool to perform a mental process,” or even “performing a mental process in a computer environment” falls wholly within the judicial exception at Step 2A, prong two. MPEP § 2106.04(a)(2) (subsection (III.)(C.)). Therefore, using a generic “electronic device” to collect the data necessary for performing the claimed mental process is not an “additional element” within the framework for subject matter eligibility. Moreover, even if those reviewing this rejection disagree with the Examiner’s characterization of this limitation as part of the abstract idea per se, this rejection will also show why that limitation is neither a sufficient “practical application” at step 2A prong two, nor “significantly more” at step 2B.
Clause 2 is a description of the “data characterizing at least one user behavior or habit identified from ones of the device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device.” Limitations that merely describe data, including this one, are not an “additional element” to the judicial exception for two reasons. First, “information, including when limited to particular content” is simply treated as being “within the realm of abstract ideas,” because the content of information “does not change its character as information.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (citing Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12, 127 S. Ct. 1746, 167 L. Ed. 2d 737 (2007); Bayer AG v. Housey Pharms., Inc., 340 F.3d 1367, 1372 (Fed. Cir. 2003)). Accordingly, the content of the claimed “data” has no bearing on whether or not the Applicant is reciting a judicial exception. Second, to the extent the data in limitation 2 describes “commands issued to the electronic device,” this limitation does not actually require anyone to issue commands to the electronic device in order to be infringed. Rather, it merely requires reviewing a cold record of user activity that occurred prior to the activity performed by the claimed invention. Claim scope is not limited by language that suggests but dose not require steps. MPEP § 2111.04 (subsection I.).
Clause 3, despite the Applicant’s arguments to the contrary,2 is not directed to a system or process for conducting attended events (let alone “attended software upgrades”). Instead, clause 3 merely gathers information about the existence of a condition in the electronic device comprising the claimed attended event. As our reviewing court has warned, claim elements that merely collect information about a specific machine or function, in contrast to claim elements that actually require the specific elements of such a machine or function themselves, are directed to an abstract idea, despite the content of the information they collect: “The advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions.” Electric Power Group v. Alstom, 830 F.3d 1350, 1354 (Fed. Cir. 2016). “Collecting information,” including information about the state of a particular hardware system, “does not change its character as information,” and therefore, remains “within the realm of abstract ideas.” Id. at 1353.
With respect to clause 4, while the phrase “synchronously managing the one or more software or hardware systems” may sound technical in isolation, the rest of the claim and the specification (e.g., paragraph 13) reveal that limitation 4 is referring to the human user managing the electronic device’s software or hardware at a time that “synchronizes” with the human user’s convenience. “Synchronously” absolutely does not refer to any kind of electronic or mechanical synchrony. The invention is at the mercy of its human user to give it what it needs at a time that works for the user.
Finally, clause 5 is an example of “claim language that does not limit a claim to a particular structure,” and therefore, does not limit the scope of the claim. MPEP § 2111.04 (subsection I.). Specifically, clause 5 is merely a statement about the desired result of “performing one or more device operations.” That is, claim 1 requires computer instructions that include “performing one or more device operations,” whereas everything recited within clause 5, after the word “to” is nothing more than an explanation of why the system of claim 1 was programmed to perform the one or more operations in response to the user response to the notification. Clause 5 fails to limit claim 1 to a particular structure, because there is no “instruction” stored on a memory that embodies clause 5—clause 5 is merely a statement of utility.
Accordingly, since the balance of the claim recites an abstract idea, we move onto Prong Two of Step 2A.
Step 2A, Prong Two. Claim 1 recites three elements in addition to the judicial exception: (1) the generic computer system with a memory, (2) the electronic device, and (3) “performing one or more device operations” (near the end of claim 1), which claim 1 only implies (but does not explicitly say) are the operations that cause the “user interaction” from clause 3 to improve the functionality of the electronic device also recited in clause 3. These elements, taken both individually and in combination, do not integrate the exception into a practical application of the above-described judicial exception.
Additional elements (1) and (2) amount to no more than a recitation of the words “apply it” to a computer system and/or generic electronic device, or mere instructions to implement the abstract idea on the electronic device. The same is also true for additional element (3), although a further explanation is necessary to help understand why “improves functionality of the electronic device” via an “attended event” fails to do more than simply “apply” the abstract idea to a generic computer.
As the MPEP explains, “[i]f it is asserted that the invention improves upon conventional functioning of a computer,” then “the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.” MPEP § 2106.05(a) (emphasis added). Here, we come to two problems.
First, none of the details or examples the specification provides for “performing one or more device operations” that are responsive to the claimed “event” or “attended event”—such as updating software in an attended manner—would have been recognized by one of ordinary skill in the art as providing an improvement. This finding is not merely the Examiner’s opinion; it comes directly from attorney admission in the December 17, 2024 amendment’s remarks (hereafter “Dec. 2024 Remarks”):
Although Applicant is not required to labor to describe background already known to one of ordinary skill in the art, our original disclosure expressly describes that management of portable electronic devices may involve “providing a notification to invite user interaction with the device responsive to at least one event selected from the group comprising: a need for a battery recharge ... a need for device rebooting, a need for data downloading, a need for updating device software, a need for saving and/or deleting data..." See original claims 1 and 6 of the publication of the parent application (US Publication No. 20080294798).
Although our original disclosure expressly describes that events, such as "upgrading software," cannot occur, in at least some cases, until a "required user interaction" occurs, one or ordinary skill in the art would know that software upgrades to portable electronic devices may require user decisions and/or approval to proceed. One or ordinary skill in the art would also know that, the software upgrade may not proceed until the required user interaction occurs. 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 portable electronic device. This may be through bug fixes and/or added features coming with the new software.
(Dec. 2024 Remarks 10) (emphasis added).
In the latest amendment dated September 12, 2025 (hereafter “Response”), the Applicant doubles down on this admission of well-understood, routine, and conventional activity with respect to the so called “attended event” now recited in the claims:
[T]he original disclosure is concerned with, for example, systems that are designed to require attended software upgrades. These systems were widely used at the effective filing date, and are in fact still widely used today, as the Examiner must realize. An attended software upgrade may, for example, require real-time user presence and input by the user.
(Response 9).
Notably, with respect to “detecting an event that requires user interaction . . . wherein the detected event comprises an attended event,” each example the Specification provides as an “event,” as well as the so-called “attended events” (which are never explicitly discussed in the Specification), is an example of something the Applicant admits are “already known to one of ordinary skill in the art,” above. (See Original Claims 1 and 6 of the parent application, and Spec. ¶¶ 17, 18, and 21). By definition, a person of ordinary skill in the art cannot recognize something he or she already knows to be an “improvement.”
Second, while the specification asserts that an improvement exists, it does not say that the improvement comes from “performing one or more device operations” responsive to a user input required by an event or an attended event. Instead, the Specification alleges that the “improvement” comes from “managing a device such that a notification is synchronized with characteristics of the user, in order to improve user convenience and/or reliability and/or availability of the device.” (Spec. ¶¶ 13 and 18). In other words, the specification’s recognition of an “improvement” is in the timing of the notification, not the claimed “event” or “attended event.” And, as already explained earlier in this rejection, the timing of the notification is not implemented in a novel or computer-specific way; it is carried out using a generic computer implementation of a mental process of observing characteristics about a person, and using those observed characteristics to evaluate the best time to notify the person.
Furthermore, to the extent that one might argue the use of an electronic device “to sense device interactions performed by an operator via a user interface of the electronic device” is beyond the judicial exception, this limitation describes nothing more than extra-solution activity, because it wholly concerns data gathering necessary for thinking through the abstract mental process.
Putting it together, we are left with an abstract mental process, generically “applied” to a general-purpose computer, in which an operator’s past behavior—collected during the course of extra-solution activity—is taken into account when considering the best way to notify the operator of an event. The additional limitations do not describe a practical application sufficient to transform the judicial exception into an eligible claim, nor do they recite an improvement to computer or other technology.
Step 2B. Each of the additional elements of claim 1 (i.e., those highlighted in italics) fail to describe significantly more than the identified abstract idea, when looked at both individually and as a whole. In this case, each and every limitation italicized above 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. That is, almost every limitation above literally says the phrase “by the electronic device,” which is a generic directive to “apply it” to the electronic device.
Furthermore, to the extent that one might argue the use of an electronic device “to sense device interactions performed by an operator via a user interface of the electronic device” is beyond the judicial exception, this limitation describes nothing more than extra-solution activity, because it wholly concerns data gathering necessary for thinking through the abstract mental process.
In addition to all of the foregoing, the Examiner also finds that “detecting an event that requires user interaction . . . wherein the detected event comprises an attended event in the electronic device” is well-understood, routine, and conventional. The evidence for this finding was furnished by the Applicant, on page 10 of the December 17, 2024 Response and on page 9 of the present Response, where the Applicant provides several admissions that each of the embodiments falling within the scope of the claimed “event” were “already known to one of ordinary skill in the art.”
In view of the foregoing, claim 1 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 2
Step 1. Claim 2 includes the same hardware-based system of claim 1, and is thus a “machine” (or possibly “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 2 incorporates the device of claim 1 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 1. Claim 2 adds two additional steps to the method performed by the device of claim 1, but the two additional steps describe their own, abstract mental process tacked onto the abstract mental process of claim 1:
determining that the detected change in the one or more user characteristics corresponds to an activity from a predetermined set of activities;
wherein providing the notification to invite the user interaction in the synchronized manner comprises providing the notification based on a result of the determining.
Claims can recite a mental process even if they are claimed as being performed on a computer. MPEP § 2106.04(a)(2)(III.)(C.). In this case, the additional mental process of claim 1 is effectively an instruction to repeat the mental process any time the underlying data being processed is different. Without a computer, the abstract mental process simply involves creating a paper file for a user, recording updated notes on the user (the claimed “user characteristics”) using pen and paper, and then repeating the abstract mental process based on those new notes.
It is acknowledged that, based on the analysis above, claim 2 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 2. That is, claim 2 recites two abstract ideas, and therefore, remains an abstract idea within the judicially recognized exception to the statute.
Step 2A, Prong Two. Claim 2 incorporates the system of claim 1 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 1. Also, much like claim 1, the two additional steps recited in claim 2 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 2 incorporates the system of claim 1 by reference, and therefore, so too does this rejection incorporate the corresponding analysis for Step 2B, set forth in the rejection of claim 1. Also, much like claim 1, the two additional steps recited in claim 2 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.
In view of the foregoing, Claim 2 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 3
Step 1. Claim 3 includes the same hardware-based system of claim 2, and is thus a “machine” (or possibly “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 3 incorporates the device of claim 2 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 2.
Claim 3 further specifies that “the predetermined set of activities includes one or more activities conducive to downloading data.” Importantly, claim 3 does not actually involve downloading any data. Instead, claim 3 merely specifies that, when performing the mental process in claim 2 of matching a user characteristic to a corresponding activity, one of those possible activities can include activities conducive to downloading data. This is wholly within the abstract mental process itself. For example, a person following a news story about a security breach in one of his applications might mentally determine that such a detected change corresponds to the activity of connecting to the Internet to download an update. The claim does not require a person to actually download the update, it merely calls for someone to make the mental connection between the change in circumstances and the need to download data.
Step 2A, Prong Two. Claim 3 incorporates the system of claim 2 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 2. Claim 3 adds no other steps beyond the abstract idea itself for the reasons given above, leaving nothing to analyze at Prong Two.
Step 2B. Claim 3 incorporates the system of claim 2 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 2. Claim 3 adds no other steps beyond the abstract idea itself for the reasons given above, leaving nothing to analyze at Prong Two.
In view of the foregoing, Claim 3 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 4
Step 1. Claim 4 includes the same hardware-based system of claim 2, and is thus a “machine” (or possibly “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 4 incorporates the system of claim 2 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 1. Claim 4 also provides a further description of the data that is available for comparison in claim 2. But, a narrower description of the data output falls squarely within the abstract idea itself, i.e., it is not considered an “additional element” for the other prongs, because limiting information to particular content does not change its character as information. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Step 2A, Prong Two. Claim 4 incorporates the system of claim 2 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 2.
Step 2B. Claim 4 incorporates the system of claim 2 by reference, and therefore, so too does this rejection incorporate the corresponding analysis for Step 2B, set forth in the rejection of claim 2.
In view of the foregoing, Claim 4 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 5
Step 1. Claim 5 includes the same hardware-based system of claim 4, and is thus a “machine” (or possibly “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 5 incorporates the system of claim 4 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 1. Claim 5 also provides a further description of the data that is available for comparison in claim 4. But, a narrower description of the data output falls squarely within the abstract idea itself, i.e., it is not considered an “additional element” for the other prongs, because limiting information to particular content does not change its character as information. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Step 2A, Prong Two. Claim 5 incorporates the system of claim 4 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 4.
Step 2B. Claim 5 incorporates the system of claim 4 by reference, and therefore, so too does this rejection incorporate the corresponding analysis for Step 2B, set forth in the rejection of claim 4.
In view of the foregoing, Claim 5 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 6
Step 1. Claim 6 includes the same hardware-based system of claim 1, and is thus a “machine” (or possibly “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 6 incorporates the device of claim 1 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 1. Claim 6 also provides a further description of the situations in which the abstract mental process is performed, i.e., “wherein the detected event comprises an automatically-triggered event.”
The nature of the “event” that is considered as part of the mental process of claim 1 does not make the mental process any less of an abstract idea. Irrespective of what triggers the event, the claimed invention remains fully performable as a mental process, because the source of the event does not change the way in which the claimed invention detects the event.
Step 2A, Prong Two. Claim 6 incorporates the system of claim 1 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 1. All of claim 6’s additional elements fall within Prong One, and therefore require no further analysis at this step.
Step 2B. Claim 6 incorporates the system of claim 1 by reference, and therefore, so too does this rejection incorporate the corresponding analysis for Step 2B, set forth in the rejection of claim 1. All of claim 6’s additional elements fall within Prong One, and therefore require no further analysis at this step.
In view of the foregoing, Claim 6 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 7
Step 1. Claim 7 includes the same hardware-based system of claim 6, and is thus a “machine” (or possibly “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 7 incorporates the device of claim 6 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 6. Claim 7 also provides a further description of the situations in which the abstract mental process is performed, i.e., “wherein the automatically-triggered event comprises an operating system update.” The nature of the “event” that is considered as part of the mental process of claim 6 does not make the mental process any less of an abstract idea. Irrespective of what triggers the event, the claimed invention remains fully performable as a mental process, because the source of the event does not change the way in which the claimed invention detects the event.
Step 2A, Prong Two. Claim 7 incorporates the system of claim 6 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 6. All of claim 7’s additional elements fall within Prong One, and therefore require no further analysis at this step.
Step 2B. Claim 7 incorporates the system of claim 6 by reference, and therefore, so too does this rejection incorporate the corresponding analysis for Step 2B, set forth in the rejection of claim 6. All of claim 7’s additional elements fall within Prong One, and therefore require no further analysis at this step.
In view of the foregoing, Claim 7 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 8
Step 1. Claim 8 includes the same hardware-based system of claim 1, and is thus a “machine” (or possibly “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 8 incorporates the device of claim 1 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 1.
Claim 8 further specifies that the “providing the notification” step of claim 1 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)(III.)(C.).
In this case, claim 1 is directed to a mental process of observing characteristics about a person, and claim 8 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 8 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 8. That is, claim 8 recites two abstract ideas, and therefore, remains an abstract idea within the judicially recognized exception to the statute.
Step 2A, Prong Two. Claim 8 incorporates the system of claim 1 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 1. Also, much like claim 1, the two additional steps recited in claim 8 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 8 incorporates the system of claim 1 by reference, and therefore, so too does this rejection incorporate the corresponding analysis for Step 2B, set forth in the rejection of claim 1. Also, much like claim 1, the two additional steps recited in claim 8 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 8 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 9
Step 1. Claim 9 includes the same hardware-based system of claim 8, and is thus a “machine” (or possibly “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 9 incorporates the device of claim 8 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 8. In addition to the foregoing, claim 9 tacks a second abstract mental process onto the steps of claim 8. The mental process of claim 9 includes all of the text below except for the stricken portions:
providing one
providing the other
In other words, the additional limitations of claim 9 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 9 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 9 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 20
Step 1. Claim 20 includes the same hardware-based system of claim 1, and is thus a “machine” (or possibly “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 20 incorporates the device of claim 1 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 1.
Step 2A, Prong Two. Claim 20 incorporates the system of claim 1 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 1. In addition, claim 20 further includes a description of the source of data for the claimed user characteristics. Such a description is nothing more than insignificant extra-solution activity, because it amounts to a description of mere data gathering, and is nominally related to the overall invention’s use of that data.
Step 2B. Claim 20 incorporates the system of claim 1 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 1. In addition, claim 20 further includes a description of the source of data for the claimed user characteristics. Such a description is nothing more than insignificant extra-solution activity, because it amounts to a description of mere data gathering, and is nominally related to the overall invention’s use of that data.
In view of the foregoing, Claim 20 is rejected under 35 U.S.C. § 101 for failing to claim significantly more than a judicial exception to 35 U.S.C. § 101.
Claims 21–24
Claims 21–24 are directed to the same methods that the systems of respective claims 1, 2, 8, and 9 perform, and are therefore rejected according to the same findings and rationale as provided above (except that at step 1, claims 21–24 are a found to be a process rather than a machine).
Claim 29
Step 1. Claim 29 provides for a “system” with at least one computer hardware component (a memory) and is thus a “machine” (or possibly “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 29 is directed to a mental process of observing characteristics about a person, and using those observed characteristics to evaluate the best time to notify the person. More specifically, all of the following text of claim 29, except for the text highlighted with italics, is considered to be part and parcel of the judicial exception itself. The reference numbers denote claim elements that are purely part of the judicial exception but warrant further discussion. Claim elements highlighted with italics font denote “additional elements” to the judicial exception. They will not ignored by this rejection, but are instead analyzed in Prong Two of step 2A, and in step 2B.
A system comprising a memory storing instructions operable to, in response to execution of the stored instructions, perform operations including:
providing a plurality of different types of user characteristics including [data characterizing at least one user behavior or habit identified from ones device interactions, involving a person and a electronic device, that are sensed during a monitored time period]¹;
[detecting an event that requires user interaction with the electronic device and, when performed, improves reliability or availability of the electronic device, or updates software of the electronic device, wherein the detection of the indication comprises an attended event in the electronic device, the attended event being one that cannot be performed without the user interaction]2;
in response to detecting said indication, detecting a change in one or more user characteristics of the plurality of different types of user characteristics; and
[managing one or more software or hardware systems of the electronic device]3 based on the detected change in the one or more user characteristics of the plurality of different types of user, including:
providing a notification to invite the user interaction in a manner synchronized with the detected change in the one or more user characteristics of the plurality of different types of user characteristics, wherein the notification is provided responsive to the detected event; and
in response to a user response to the notification, wherein the user response includes the user interaction: the availability or reliability of the electronic device is improved, or the electronic device performs the software update.
The clauses surrounded with brackets [ ] and superscript numerals are highlighted above to provide a reference for further discussion. Each of these four clauses are claim language that the Applicant contends to be “additional elements” beyond the judicial exception, but the Examiner respectfully disagrees, and contends that these clauses are part of the judicial exception for the following reasons.
Clause 1 is a description of the “data characterizing at least one user behavior or habit identified from ones of the device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device.” Limitations that merely describe data, including this one, are not an “additional element” to the judicial exception for two reasons. First, “information, including when limited to particular content” is simply treated as being “within the realm of abstract ideas,” because the content of information “does not change its character as information.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (citing Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 451 n.12, 127 S. Ct. 1746, 167 L. Ed. 2d 737 (2007); Bayer AG v. Housey Pharms., Inc., 340 F.3d 1367, 1372 (Fed. Cir. 2003)). Accordingly, the content of the claimed “data” has no bearing on whether or not the Applicant is reciting a judicial exception.
Second, to the extent the data in clause 1 describes “commands issued to the electronic device,” this limitation does not actually require anyone to issue commands to the electronic device in order to be infringed. Rather, it merely requires reviewing a cold record of user activity that occurred prior to the activity performed by the claimed invention. Claim scope is not limited by language that suggests but does not require steps. MPEP § 2111.04 (subsection I.).
Clause 3, despite the Applicant’s arguments to the contrary,3 is not directed to a system or process for conducting attended events (let alone “attended software upgrades”). Instead, clause 3 merely gathers information about the existence of a condition in the electronic device comprising the claimed attended event. As our reviewing court has warned, claim elements that merely collect information about a specific machine or function, in contrast to claim elements that actually require the specific elements of such a machine or function themselves, are directed to an abstract idea, despite the content of the information they collect: “The advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions.” Electric Power Group v. Alstom, 830 F.3d 1350, 1354 (Fed. Cir. 2016). “Collecting information,” including information about the state of a particular hardware system, “does not change its character as information,” and therefore, remains “within the realm of abstract ideas.” Id. at 1353.
With respect to clause 3, while the phrase “managing the one or more software or hardware systems” may sound technical in isolation, the rest of the claim and the specification (e.g., paragraph 13) reveal that limitation 3 is referring to the human user managing the electronic device’s software or hardware at a time that “synchronizes” with the human user’s convenience. “Synchronously” absolutely does not refer to any kind of electronic or mechanical synchrony. The invention is at the mercy of its human user to give it what it needs at a time that works for the user.
Accordingly, since the balance of the claim recites an abstract idea, we move onto Prong Two of Step 2A.
Step 2A, Prong Two. Claim 29 recites three elements in addition to the judicial exception: (1) the generic computer system with a memory, (2) the electronic device, and (3) “the availability or reliability of the portable electronic device is improved, or the portable electronic device performs the software update,” in response to the user’s acceptance of the suggestion to do the same.
These elements, taken both individually and in combination, do not integrate the exception into a practical application of the above-described judicial exception. Additional elements (1) and (2) amount to no more than a recitation of the words “apply it” to a computer system and/or generic electronic device, or mere instructions to implement the abstract idea on the electronic device. The same is also true for additional element (3), although a further explanation is necessary to help understand why “improve reliability or availability of the electronic device, or update software of the electronic device,” fails to do more than simply “apply” the abstract idea to a generic computer.
As the MPEP explains, “[i]f it is asserted that the invention improves upon conventional functioning of a computer,” then “the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.” MPEP § 2106.05(a) (emphasis added). Here, we come to two problems.
First, none of the details or examples the specification provides for “performing one or more device operations” that are responsive to the claimed “event” or “attended event”—such as updating software in an attended manner—would have been recognized by one of ordinary skill in the art as providing an improvement. This finding is not merely the Examiner’s opinion; it comes directly from attorney admission in the December 17, 2024 amendment’s remarks (hereafter “Dec. 2024 Remarks”):
Although Applicant is not required to labor to describe background already known to one of ordinary skill in the art, our original disclosure expressly describes that management of portable electronic devices may involve “providing a notification to invite user interaction with the device responsive to at least one event selected from the group comprising: a need for a battery recharge ... a need for device rebooting, a need for data downloading, a need for updating device software, a need for saving and/or deleting data..." See original claims 1 and 6 of the publication of the parent application (US Publication No. 20080294798).
Although our original disclosure expressly describes that events, such as "upgrading software," cannot occur, in at least some cases, until a "required user interaction" occurs, one or ordinary skill in the art would know that software upgrades to portable electronic devices may require user decisions and/or approval to proceed. One or ordinary skill in the art would also know that, the software upgrade may not proceed until the required user interaction occurs. 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 portable electronic device. This may be through bug fixes and/or added features coming with the new software.
(Dec. 2024 Remarks 10) (emphasis added).
In the latest amendment dated September 12, 2025 (hereafter “Response”), the Applicant doubles down on this admission of well-understood, routine, and conventional activity with respect to the so called “attended event” now recited in the claims:
[T]he original disclosure is concerned with, for example, systems that are designed to require attended software upgrades. These systems were widely used at the effective filing date, and are in fact still widely used today, as the Examiner must realize. An attended software upgrade may, for example, require real-time user presence and input by the user.
(Response 9).
Notably, with respect to “detecting an event that requires user interaction . . . wherein the detected event comprises an attended event,” each example the Specification provides as an “event,” as well as the so-called “attended events” (which are never explicitly discussed in the Specification), is an example of something the Applicant admits are “already known to one of ordinary skill in the art,” above. (See Original Claims 1 and 6 of the parent application, and Spec. ¶¶ 17, 18, and 21). By definition, a person of ordinary skill in the art cannot recognize something he or she already knows to be an “improvement.”
Second, while the specification asserts that an improvement exists, it does not say that the improvement comes from “detecting an event . . . wherein the detected event comprises an attended event.” Instead, the Specification alleges that the “improvement” comes from “managing a device such that a notification is synchronized with characteristics of the user, in order to improve user convenience and/or reliability and/or availability of the device.” (Spec. ¶¶ 13 and 18). In other words, the specification’s recognition of an “improvement” is in the timing of the notification, not the claimed “attended event.” And, as already explained earlier in this rejection, the timing of the notification is not implemented in a novel or computer-specific way; it is carried out using a generic computer implementation of a mental process of observing characteristics about a person, and using those observed characteristics to evaluate the best time to notify the person.
Putting it together, we are left with an abstract mental process, generically “applied” to a general-purpose computer, in which an operator’s past behavior—collected during the course of extra-solution activity—is taken into account when considering the best way to notify the operator of an event. The additional limitations do not describe a practical application sufficient to transform the judicial exception into an eligible claim, nor do they recite an improvement to computer or other technology.
Step 2B. Each of the additional elements of claim 1 (i.e., those highlighted in italics) fail to describe significantly more than the identified abstract idea, when looked at both individually and as a whole. In this case, each and every limitation italicized above 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. That is, almost every limitation above literally says the phrase “by the electronic device,” which is a generic directive to “apply it” to the electronic device.
In addition to all of the foregoing, the Examiner also finds that “detecting an event that requires user interaction . . . wherein the detected event comprises an attended event in the electronic device” is well-understood, routine, and conventional. The evidence for this finding was furnished by the Applicant, on page 10 of the December 17, 2024 Response and on page 9 of the present Response, where the Applicant provides several admissions that each of the embodiments falling within the scope of the claimed “event” were “already known to one of ordinary skill in the art.”
In view of the foregoing, claim 29 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 30
Step 1. Claim 30 includes the same hardware-based system of claim 29, and is thus a “machine” (or possibly “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 30 incorporates the device of claim 29 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 29. Claim 30 adds two additional steps to the method performed by the device of Claim 29, but the two additional steps describe their own, abstract mental process tacked onto the abstract mental process of Claim 29:
determining that the detected change in the one or more user characteristics corresponds to an activity from a predetermined set of activities; wherein providing the notification to invite the user interaction in the synchronized manner comprises providing the notification based on a result of the determining.
Claims can recite a mental process even if they are claimed as being performed on a computer. MPEP § 2106.04(a)(2)(III.)(C.). In this case, the additional mental process of Claim 29 is effectively an instruction to repeat the mental process any time the underlying data being processed is different. Without a computer, the abstract mental process simply involves creating a paper file for a user, recording updated notes on the user (the claimed “user characteristics”) using pen and paper, and then repeating the abstract mental process based on those new notes. It is acknowledged that, based on the analysis above, claim 30 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 30. That is, claim 30 recites two abstract ideas, and therefore, remains an abstract idea within the judicially recognized exception to the statute.
Step 2A, Prong Two. Claim 30 incorporates the system of Claim 29 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 29. Also, much like Claim 29, the two additional steps recited in Claim 30 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 30 incorporates the system of Claim 29 by reference, and therefore, so too does this rejection incorporate the corresponding analysis for Step 2B, set forth in the rejection of Claim 29. Also, much like Claim 29, the two additional steps 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.
In view of the foregoing, Claim 30 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 31
Step 1. Claim 31 includes the same hardware-based system of Claim 30, and is thus a “machine” (or possibly “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 31 incorporates the device of Claim 30 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 30. Claim 31 further specifies that “the predetermined set of activities includes one or more activities conducive to downloading data.” Importantly, Claim 31 does not actually involve downloading any data. Instead, Claim 31 merely specifies that, when performing the mental process in Claim 30 of matching a user characteristic to a corresponding activity, one of those possible activities can include activities conducive to downloading data. This is wholly within the abstract mental process itself. For example, a person following a news story about a security breach in one of his applications might mentally determine that such a detected change corresponds to the activity of connecting to the Internet to download an update. The claim does not require a person to actually download the update, it merely calls for someone to make the mental connection between the change in circumstances and the need to download data.
Step 2A, Prong Two. Claim 31 incorporates the system of Claim 30 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 30. Claim 31 adds no other steps beyond the abstract idea itself for the reasons given above, leaving nothing to analyze at Prong Two.
Step 2B. Claim 31 incorporates the system of Claim 30 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 30. Claim 31 adds no other steps beyond the abstract idea itself for the reasons given above, leaving nothing to analyze at Prong Two.
In view of the foregoing, Claim 31 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 32
Step 1. Claim 32 includes the same hardware-based system of Claim 30, and is thus a “machine” (or possibly “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 32 incorporates the system of Claim 30 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 29.
Claim 32 also provides a further description of the data that is available for comparison in Claim 30. But, a narrower description of the data output falls squarely within the abstract idea itself, i.e., it is not considered an “additional element” for the other prongs, because limiting information to particular content does not change its character as information. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Step 2A, Prong Two. Claim 32 incorporates the system of Claim 30 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 30.
Step 2B. Claim 32 incorporates the system of Claim 30 by reference, and therefore, so too does this rejection incorporate the corresponding analysis for Step 2B, set forth in the rejection of Claim 30.
In view of the foregoing, Claim 32 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 33
Step 1. Claim 33 includes the same hardware-based system of Claim 32, and is thus a “machine” (or possibly “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 33 incorporates the system of Claim 32 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 29. Claim 33 also provides a further description of the data that is available for comparison in Claim 32. But, a narrower description of the data output falls squarely within the abstract idea itself, i.e., it is not considered an “additional element” for the other prongs, because limiting information to particular content does not change its character as information. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Step 2A, Prong Two. Claim 33 incorporates the system of Claim 32 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 32.
Step 2B. Claim 33 incorporates the system of Claim 32 by reference, and therefore, so too does this rejection incorporate the corresponding analysis for Step 2B, set forth in the rejection of Claim 32.
In view of the foregoing, Claim 33 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 34
Step 1. Claim 34 includes the same hardware-based system of Claim 29, and is thus a “machine” (or possibly “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 34 incorporates the device of Claim 29 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 29. Claim 34 also provides a further description of the situations in which the abstract mental process is performed, i.e., “wherein the event comprises an automatically-triggered event.” The nature of the “event” that is considered as part of the mental process of Claim 29 does not make the mental process any less of an abstract idea. Irrespective of what triggers the event, the claimed invention remains fully performable as a mental process, because the source of the event does not change the way in which the claimed invention detects the event.
Step 2A, Prong Two. Claim 34 incorporates the system of Claim 29 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 29. All of Claim 34’s additional elements fall within Prong One, and therefore require no further analysis at this step.
Step 2B. Claim 34 incorporates the system of Claim 29 by reference, and therefore, so too does this rejection incorporate the corresponding analysis for Step 2B, set forth in the rejection of Claim 29. All of Claim 34’s additional elements fall within Prong One, and therefore require no further analysis at this step.
In view of the foregoing, Claim 34 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 35
Step 1. Claim 35 includes the same hardware-based system of Claim 34, and is thus a “machine” (or possibly “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 35 incorporates the device of Claim 34 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 34. Claim 35 also provides a further description of the situations in which the abstract mental process is performed, i.e., “wherein the automatically-triggered event comprises an operating system update.” The nature of the “event” that is considered as part of the mental process of Claim 34 does not make the mental process any less of an abstract idea. Irrespective of what triggers the event, the claimed invention remains fully performable as a mental process, because the source of the event does not change the way in which the claimed invention detects the event.
Step 2A, Prong Two. Claim 35 incorporates the system of Claim 34 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 34. All of Claim 35’s additional elements fall within Prong One, and therefore require no further analysis at this step.
Step 2B. Claim 35 incorporates the system of Claim 34 by reference, and therefore, so too does this rejection incorporate the corresponding analysis for Step 2B, set forth in the rejection of Claim 34. All of Claim 35’s additional elements fall within Prong One, and therefore require no further analysis at this step.
In view of the foregoing, Claim 35 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 36
Step 1. Claim 36 includes the same hardware-based system of Claim 29, and is thus a “machine” (or possibly “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 36 incorporates the device of Claim 29 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 29.
Claim 36 further specifies that the “providing the notification” step of Claim 29 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)(III.)(C.).
In this case, Claim 29 is directed to a mental process of observing characteristics about a person, and Claim 36 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 36 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 36. That is, Claim 36 recites two abstract ideas, and therefore, remains an abstract idea within the judicially recognized exception to the statute.
Step 2A, Prong Two. Claim 36 incorporates the system of Claim 29 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 29. Also, much like Claim 29, 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 electronic device, or mere instructions to implement the abstract idea on the electronic device.
Step 2B. Claim 36 incorporates the system of Claim 29 by reference, and therefore, so too does this rejection incorporate the corresponding analysis for Step 2B, set forth in the rejection of Claim 29. Also, much like Claim 29, the two additional steps 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 36 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 37
Step 1. Claim 37 includes the same hardware-based system of Claim 36, and is thus a “machine” (or possibly “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 37 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. In addition to the foregoing, Claim 37 tacks a second abstract mental process onto the steps of Claim 36. The mental process of Claim 37 includes all of the text below except for the stricken portions:
providing one
In other words, the additional limitations of Claim 37 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 37 includes the following additional elements beyond the judicial exception: (1) the “system including a memory storing instructions” and electronic device inherited from Claim 29, 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 37 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 38
Step 1. Claim 38 includes the same hardware-based system of Claim 29, and is thus a “machine” (or possibly “article of manufacture”) within the meaning of § 101. See MPEP § 2106.03.
Step 2A, Prong One. Claim 38 incorporates the device of Claim 29 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 29.
Step 2A, Prong Two. Claim 38 incorporates the system of Claim 29 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 29. In addition, Claim 38 further includes a description of the source of data for the claimed user characteristics. Such a description is nothing more than insignificant extra-solution activity, because it amounts to a description of mere data gathering, and is nominally related to the overall invention’s use of that data.
Step 2B. Claim 38 incorporates the system of Claim 29 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 29. In addition, Claim 38 further includes a description of the source of data for the claimed user characteristics. Such a description is nothing more than insignificant extra-solution activity, because it amounts to a description of mere data gathering, and is nominally related to the overall invention’s use of that data.
In view of the foregoing, Claim 38 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 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 the first paragraph of pre-AIA 35 U.S.C. § 112:
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 1–9, 20–24, and 29–38 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.
I. Failure to disclose computer instructions operable to detect “an event that requires user interaction to complete, and when performed, improves functionality of the electronic device” in claims 1–9.
Claims 1–9 are rejected because the Written Description fails to disclose “instructions operable to, when executed by at least one processor, perform operations including . . . detecting an event that . . . when performed, improves functionality of the electronic device.”
The portable electronic device in the Written Description has instructions that enable it to detect several different explicitly defined scenarios that necessitate user interaction, and the Written Description also provides a motivational or utility statement about why one of ordinary skill would consider those scenarios “to improve user convenience and/or reliability and/or availability of the device,” (Spec. ¶ 13) (see also Response 10 (Dec. 17, 2024)), but a person of ordinary skill in the art is not an “instruction” stored on a memory.
In other words, the portable electronic device in the Written Description may have instructions for detecting “a need for a battery recharge, a received message, a received phone call, a need for device rebooting,” etc., (Spec. ¶ 12), but the portable electronic device in the Written Description does not have further “instructions” for judging whether user interaction responsive to any of those conditions will also “improve functionality” of the portable device. For example, when the portable electronic device detects a “need for a battery recharge,” it is simply performing a comparison between the device’s battery level and future power needs. It does not have a separate “if” statement or “score” for determining the extent to which a recharge will “improve functionality” of the device overall.
Accordingly, claim 1 recites new matter, and so does every claim that depends from claim 1 by virtue of their incorporation of the new matter by reference.
Claims 21–24 are method claims that do not require an “instruction” capable of knowing whether user interaction will “improve functionality,” and therefore, are not included in this ground of rejection under § 112(a).
II. Failure to disclose computer instructions operable to detect “an event that requires user interaction to complete, and when performed, improves reliability or availability of the electronic device” in claims 29–38.
Claims 29–38 are rejected because the Written Description fails to disclose “instructions operable to, when executed by at least one processor, perform operations including . . . detecting an event that . . . when performed, improves reliability or availability of the electronic device.”
The portable electronic device in the Written Description has instructions that enable it to detect several different explicitly defined scenarios that necessitate user interaction, and the Written Description also provides a motivational or utility statement about why one of ordinary skill would consider those scenarios “to improve user convenience and/or reliability and/or availability of the device,” (Spec. ¶ 13) (see also Response 10 (Dec. 17, 2024)), but a person of ordinary skill in the art is not an “instruction” stored on a memory.
In other words, the portable electronic device in the Written Description may have instructions for detecting “a need for a battery recharge, a received message, a received phone call, a need for device rebooting,” etc., (Spec. ¶ 12), but the portable electronic device in the Written Description does not have further “instructions” for judging whether user interaction responsive to any of those conditions will also “improve reliability or availability” of the portable device. For example, when the portable electronic device detects a “need for a battery recharge,” it is simply performing a comparison between the device’s battery level and future power needs. It does not have a separate “if” statement or “score” for determining the extent to which a recharge will “improve reliability or availability” of the device overall.
Accordingly, claim 29 recites new matter, and so does every claim that depends from claim 29 by virtue of their incorporation of the new matter by reference.
III. Failure to disclose the “attended events” recited in claims 1–9, 20–24, and 29–38.
Claims 1–9, 20–24, and 29–38 are rejected because the Written Description fails to disclose “an attended event in the electronic device, the attended event being one that cannot be performed without user interaction.”
According to the Applicant, the proper way to interpret an “attended event” is to treat it as narrower than a generic event. For example:
Instead, the original disclosure is concerned with, for example, systems that are designed to require attended software upgrades. These systems were widely used at the effective filing date, and are in fact still widely used today, as the Examiner must realize. An attended software upgrade may, for example, require real-time user presence and input by the user.
(Response 9) (emphasis added).
Despite the Applicant’s remark that “the original disclosure is concerned with, for example, systems that are designed to require attended software upgrades,” the Applicant never points to any part of the original disclosure that distinguishes attended software upgrades (or “attended events” in general) from those that are unattended.
According to the MPEP, whenever the Applicant amends or adds claims without including a citation to the part of the specification that supports said amendment or new claim, a prima facie case of new matter may be established by providing “[a] simple statement such as ‘Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.’” MPEP § 2163.04 (subsection I.).
Therefore, consistent with the guidance in the MPEP, the Examiner hereby finds and concludes that the Applicant has not pointed out where the amended claims are supported, nor does there appear to be a written description of the claim limitation of an event comprising an “attended event” in the application as filed.
The attended events are recited in all three independent claims, and therefore, all three independent claims are rejected for reciting new matter. All of the dependent claims are likewise rejected for incorporating the new matter of their parent claims by reference.
IV. Failure to disclose computer instructions operable to specifically detect “an event that . . . comprises an attended event” (in contrast to events that do not comprise attended events) in claims 1–9, 20–24, and 29–38.
In contrast to rejection III above (which held that the attended events themselves are new matter), the following rejection assumes solely for the sake of argument that attended events themselves were known in the art prior to the invention, and instead rejects claims 1–9, 20–24, and 29–38 under 35 U.S.C. § 112(a) because the Written Description fails to disclose “detecting an event that . . . comprises an attended event.”
Notably, to meet the requirements of the above claim language, it is not enough to simply disclose a system that detects generic events in general. Instead, the claim language requires a system that specifically discerns whether an event comprises an attended event, and then perform several operations responsive to detecting this particular species of events.
The Written Description does not disclose a computer system programmed to detect whether or not an event further comprises an “attended event,” because the Written Description does not distinguish attended events from regular events at all. Given the Written Description does not even describe the a difference between these two categories of events, no person of ordinary skill in the art would believe that the Applicant also had possession of a computer program capable of distinguishing between normal events and events that comprise attended events.
Accordingly, claims 1, 20, and 29 are rejected under 35 U.S.C. § 112(a) for reciting the new matter of “detecting an event that . . . comprises an attended event,” and their dependent claims are each rejected under 35 U.S.C. § 112(a) for incorporating the new matter of their parent claims by reference.
Claim Rejections – 35 U.S.C. § 112(b)
The following is a quotation of 35 U.S.C. § 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. § 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 29–38 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 29 is indefinite because the claim lacks antecedent basis for “the indication” and “the detection of the indication,” as a result of the amendment deleting “detecting an indication” and replacing it with “detecting an event.”
Claims 30–38 are indefinite because they each depend from an indefinite claim, and therefore, incorporate its indefinite claim language by reference.
Claim 35 is also indefinite because antecedent basis for “the manually-triggered event.” For the sake of compact prosecution, the Examiner will apply prior art to claim 35 as though it refers back to the automatically triggered event of its parent claim 34, rather than the now-deleted “manually-triggered” event.
Claim Rejections – 35 U.S.C. § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. § 102 and 103 (or as subject to pre-AIA 35 U.S.C. § 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 a 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.
Claim 21 is rejected under pre-AIA 35 U.S.C. § 102(a) and (e) as being anticipated by U.S. Patent Application Publication No. 2007/0004385 A1 (“Horvitz-385”).
Claim 21
Horvitz-385 discloses:
A method
“Referring initially to FIG. 1, a notification deferral system 100 is illustrated.” Horvitz-385 ¶ 27. As will become apparent when discussed below, system 100 performs the claimed method as part of its normal operation, and therefore, the disclosure of system 100 necessarily discloses the method that it performs. See MPEP § 2112.02.
associated with detecting an indication that user interaction with a electronic device is required for one or more software or hardware systems of the electronic device,
System 100 uses a deferral component 160 (discussed below) to process “interrupts 170” (e.g., emails, instant messages, calendar reminders) in part “by analyzing [the] cost of delaying receipt of information to the user.” Horvitz-385 ¶ 29.
wherein the detection of the indication comprises an attended event in the electronic device, the attended event being one that cannot be performed without user interaction,
“Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed.” MPEP § 2111.04. In the instant case, claim 21 recites a method that is merely “associated with” detecting an indication that comprises an attended event, rather than a method that actually comprises a step of detecting the indication comprising the attended event. Since claim 21 does not require this step, and is merely associated with it, the prior art does not need to disclose it in order to anticipate the claim.
wherein prior to detecting the attended event the electronic device senses device interactions performed by an operator via a user interface of the electronic device, the method comprising:
“The system 100 includes a log 110 that records user activity 120 over time” Horvitz-385 ¶ 27. “Such sources [of user activity in the log] can include various data acquisition components that record or log user event data (e.g., cell phone, acoustical activity recorded by microphone, Global Positioning System (GPS), electronic calendar, vision monitoring equipment, desktop activity, web site interaction and so forth).” Horvitz-385 ¶ 31.
That being said, even though Horvitz-385 discloses this claim language, Horvitz-385 did not need to disclose this claim language in order to make a finding of anticipation, because “[c]laim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed.” MPEP § 2111.04. In this case, “wherein prior to detecting the event the portable electronic device senses device interactions performed by an operator via a user interface of the portable electronic device” is necessarily claim language that does not require steps to be performed, because anything that the claim purports to occur “prior to detecting the event” necessarily occurs before the steps of the claimed method.
performing one or more device operations to improve the functionality of the electronic device;
The above step is a contingent limitation, which is contingent upon the unmet conditions precedent recited in the last 4 lines of claim 21: “wherein the performing the one or more device operations to improve the functionality of the electronic device occurs in response to a user response to the 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. Therefore, since claim 21 is a method claim that does not recite a required step of the user actually responding to the notification, the limitations that are contingent upon that unmet condition precedent are not required either.
providing a plurality of different types of user characteristics formed by implicitly profiling the operator’s interactions with the electronic device
System 100 provides a plurality of different “user states” across a set of models 140. Horvitz-385 ¶ 29. Some of the user states describe the different “costs of interrupting a user given a particular user state,” Horvitz-385 ¶ 28, while others describe the “cost of delaying receipt of information” by the user. Horvitz-385 ¶ 29.
According to the Applicant, “implicitly profiling a person’s interactions” is best understood in the context of paragraph 18 of the published application (which is paragraph 19 of the specification as filed). (See Amendment dated February 8, 2022, page 8). Looking to the relevant passage, those reviewing this Office Action will notice that the Applicant never uses the word “implicit” (or the like), but instead, distinguishes monitoring a user’s use of the device, or accessing his/her calendar, from “having the user complete a survey,” (Spec. ¶ 19) which appears to be a more explicit version of creating the user profile.
For its part, Horvitz-385 discloses that the models 140 of the user’s states “can be constructed and/or trained from the log 110 that collects or aggregates data from a plurality of different data sources,” including “various data acquisition components that record or log user event data (e.g., cell phone, acoustical activity recorded by microphone, Global Positioning System (GPS), electronic calendar, vision monitoring equipment, desktop activity, web site interaction and so forth).” Horvitz-385 ¶ 31. Horvitz-385 further discloses that system 100 makes inferences from the data to inform the models. See Horvitz-385 ¶¶ 58–59.
over time,
The log 110 mentioned above “records user activity 120 over time,” Horvitz-385 ¶ 27, and therefore, the data inside the models is constructed and/or trained from a dataset of a person’s interactions with a device over time as claimed.
the plurality of different types of user characteristics including data characterizing at least one user behavior or habit identified from ones of the device interactions that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device;
“For instance, by monitoring activities over time (e.g., applications, subject matter being worked on, type or numbers of tasks, times of busyness, times when email or voice mail are processed), it can be determined when it would be of high cost to interrupt the user versus when a lower cost is associated with interruption of a user (e.g., disparate states of interruptability). For example, high cost can refer to interrupting the user when they are highly focused on another task versus a lower cost period when the user is free to process alert information.” Horvitz-385 ¶ 27.
obtaining at least one user characteristic from the plurality of different types of user characteristics responsive to said detected event;
In order to appropriately process the interrupts 170 “in accordance with the determined states 150,” the deferral component 160 obtains the states 150 from the analyzer’s models 140. Horvitz-385 ¶ 29.
This includes looking at both the user’s busyness states, and the alert states that describe “a measure of loss with respect to delaying the incoming notification and/or underlying message.” Horvitz-385 ¶ 32.
detecting a change in one or more user characteristics of the plurality of different types of user characteristics;
System 100 detects changes in the user’s states in multiple ways. For one, analyzer 130 can explicitly “monitor user states and . . . determine[] that the user has transitioned from a busy state to an available state. Such determination can be made based upon explicit actions (e.g., altering a profile from ‘busy’ to ‘available’), learned actions (e.g., opening a web browser and reviewing a non-work related website), or any other suitable manner for determining user states and transitions therebetween.” Horvitz-385 ¶ 41.
Alternatively, system 100 can implicitly detect a change in the user’s state(s) by predicting a period of time that must pass in order for the user to transition to a state where it would be acceptable to interrupt him, and then detect “the expiration of the deferral period,” hence detecting that the user should now be in the predicted lower state. Horvitz-385 ¶ 41.
and synchronously managing the one or more software or hardware systems based on the detected change in the one or more user characteristics of the plurality of different types of user characteristics, including: providing a notification to invite the required user interaction in a manner synchronized with the detected change in the obtained one or more user characteristics of the plurality of different types of user characteristics,
Consistent with the above two alternatives, “the deferral component 160 can cause deliverance of a notification/message to the user at the expiration of the deferral period,” or, analyzer 130 can “deliver a message prior to the bounded deferral period if the analyzer 130 determines that the user has transitioned from a busy state to an available state.” Horvitz-385 ¶ 41; see also Horvitz FIG. 1 (illustrating that the items 180 that caused the interrupts 170 will be delivered to the user in accordance with the states 150).
Notably, this flexibility shows that the system 100’s management of the applications’ disruptions is synchronous with system 100’s model of the user’s characteristics.
wherein the notification is provided responsive to the detected attended event;
“The items 180 can include substantially any type of information that may be directed to a user such as email, phone messages, instant messages, calendar alerts or alerts in general, tasks from other applications and so forth.” Horvitz-385 ¶ 29.
and wherein the performing the one or more device operations to improve the functionality of the electronic device occurs in response to a user response to the notification, wherein the user response includes the user interaction.
“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 21 does not require the condition precedent of “a user response to the notification, wherein the user response includes the required user interaction” (in other words, there is no step of “receiving a user response to the notification”), and therefore, the claim 21 also does not require the conditional limitation of “performing one or more device operations to improve the functionality of the portable electronic device.” The prior art is not required to teach optional elements of a claim in order to reach a conclusion of obviousness. Id. (quoting Ex parte Schulhauser, Appeal No. 2013-007847 (PTAB April 28, 2016) (precedential)).
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 Horvitz-385 teach claims 1, 2, 4, 6, 8, 20–23, 29–30, 32, 34, 36, and 38.
Claim(s) 1, 2, 4, 6, 8, 20–23, 32, 34, 36, and 38 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent Application Publication No. 2008/0201587 A1 (“Lee”) in view of U.S. Patent Application Publication No. 2007/0004385 A1 (“Horvitz-385”).
Claim 1
Lee teaches:
A system including a electronic device to sense device interactions performed by an operator via a user interface of the electronic device,
“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.
the system comprising a memory storing instructions operable to, when executed by at least one processor, perform operations including:
“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.
providing a plurality of different types of user characteristics formed by implicitly profiling the operator’s interactions with the electronic device over time, the plurality of different types of user characteristics including data characterizing at least one user behavior or habit identified from ones of the 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, a device 100 is given a plurality of different types of information about a user that characterize 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.
detecting an event that requires user interaction to complete, and when performed, improves functionality of the electronic device, wherein the detected event comprises an attended event in the electronic device, the attended event being one that cannot be performed without user interaction;
Lee likewise teaches at least two examples of such a detection (“decision 208” and “decision 508”), either one of which independently falling within the scope of the claimed operation of detecting an event, for the following reasons.
However, before discussing the prior art, we need to discuss the broadest reasonable interpretation of the claim language. The above claim language requires (among other things) detecting an event that comprises an attended event, rather than detecting an event that is the attended event. Since the word “comprises” is synonymous with “including” or “containing,” a prior art teaching of detecting an event encompassing both the attended event and other additional features falls within the scope of this claim language. See MPEP § 2111.03.
Additionally, the Examiner also observes that this claim language never links the user interaction required by the “event” to the second user interaction required by the attended event, because the claim does not use a definite article to refer back and/or reinvoke the event’s user interaction. In other words, claim 1 does not recite: “detecting an event that requires user interaction . . . the attended event being one that cannot be performed without the user interaction.” Accordingly, the plain terms of the claim allow for the event’s required user interaction and the attended event’s user interaction to be two different user interactions.
Turning back now to Lee, decision 208 corresponds to the claimed detection step as follows. During decision 208, the process 200 detects the presence of a condition (the claimed event) for which “there is a shortage of available battery power in order to satisfy the impending device usage power requirements.” Lee ¶ 37. In this detection, the overarching “event” corresponds to Lee’s overall threshold comparison “that the available battery power is not greater than the estimated power requirements,” Lee ¶ 37, while the claimed event’s constituent “attended event” corresponds to the “impending device usage power requirements” that decision 208 considers as part of its comparison. Lee ¶ 37. Each will now be discussed relative to their additionally claimed limitations.
The overall threshold comparison of available battery power to estimated power requirements corresponds to the claimed overarching “event,” because it includes a finding of necessity for the user to either connect the device 100 to an external power source, Lee ¶ 40, or for the user to provide an 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 ¶ 41.4 Both of these are clearly things that, by their plain terms, “require[] user interaction to complete, and when performed, improve[] functionality of the electronic device,” because they require a user’s affirmative actions to ensure that the device is able to continue functioning for longer.
Likewise, the “impending device usage power requirements” determined in decision 208 correspond to the claimed “attended event,” because, the literal words “device usage” mean that someone is using the device (or will be), thereby satisfying both of the attended event’s limitations of being “in the electronic device” and “being one that cannot be performed without user interaction.” A person cannot use a device without using the device.
The mapping for process 500 is similar. During decision 508, the process 500 detects the presence of a condition (the claimed event) in which “the battery cannot satisfy the future power requirements.” Lee ¶ 48. In this detection, the overarching “event” corresponds to Lee’s overall threshold comparison of “whether the battery can satisfy the future power requirements,” Lee ¶ 48, while the claimed event’s constituent “attended event” corresponds to the constituent determination of the “future power requirements.”
The overall threshold comparison of available battery power to estimated power requirements corresponds to the claimed overarching “event,” because it includes a finding of necessity for the user to connect the device 100 to an external power source. Lee ¶ 48. Connecting the device to an external power source both “requires user interaction to complete, and when performed, improves functionality of the electronic device,” because it requires user’s affirmative actions to ensure that the device is able to continue functioning for longer.
Likewise, the “future power requirements” corresponds to the claimed attended event, because “[e]stimation 504 of the power requirements can be performed in view of . . . characteristics of the electronic device, user or scheduled activity.” Lee ¶ 48. A person cannot provide activity on a device without using the device.
synchronously managing one or more software or hardware systems of the electronic device based on
As shown in at least FIGS. 2 and 5, processes 200 and 500 each respectively perform a block 210 or 410 in accordance with the decision in respective blocks 208 and/or 508. In the case of process 200, block 210 is illustrated in greater detail in FIG. 3, see Lee ¶ 38, and it includes 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 a user response to the notification, wherein the user response includes the user interaction, performing one or more device operations to improve the functionality of the electronic device.
“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.
Lee does not appear to explicitly disclose “obtaining at least one user characteristic of the plurality of different types of user characteristics responsive to said detected event; detecting a change in one or more user characteristics of the plurality of different types of user characteristics,” and thus, Lee’s synchronous management of the device is not additionally “based on the detected change” in the characteristics.
Horvitz-385, however, teaches:
A system including a electronic device to sense device interactions performed by an operator via a user interface of the electronic device,
“Referring initially to FIG. 1, a notification deferral system 100 is illustrated. The system 100 includes a log 110 that records user activity 120 over time” Horvitz-385 ¶ 27. “Such sources [of user activity in the log] can include various data acquisition components that record or log user event data (e.g., cell phone, acoustical activity recorded by microphone, Global Positioning System (GPS), electronic calendar, vision monitoring equipment, desktop activity, web site interaction and so forth).” Horvitz-385 ¶ 31. Note that this passage discloses two facets of the above preamble limitation: (1) a “cell phone,” by its very definition of being a portable telephone for use across different cells of a cellular radio network,5 falls within the scope of a portable electronic device; and (2) microphone activity, electronic calendar activity, desktop activity, and web site interaction are all examples of device interactions performed by an operator via a user interface. Moreover, Horvitz-385 further discloses the same system sensing user presence “based on mouse or keyboard activity,” which is yet another example of a user interface. Horvitz-385 ¶ 59.
the system comprising a memory storing instructions operable to, when executed by at least one processor, perform operations including:
Note that the notification deferral system 100 may be implemented as a computer 1712 with system memory 1716 for storing the claimed applications and their data. See Horvitz-385 ¶ 75.
providing a plurality of different types of user characteristics formed by implicitly profiling the operator’s interactions with the electronic device
System 100 provides a plurality of different “user states” across a set of models 140. Horvitz-385 ¶ 29. Some of the user states describe the different “costs of interrupting a user given a particular user state,” Horvitz-385 ¶ 28, while others describe the “cost of delaying receipt of information” by the user. Horvitz-385 ¶ 29.
According to the Applicant, “implicitly profiling a person’s interactions” is best understood in the context of paragraph 18 of the published application (which is paragraph 19 of the specification as filed). (See Amendment dated February 8, 2022, page 8). Looking to the relevant passage, those reviewing this Office Action will notice that the Applicant never uses the word “implicit” (or the like), but instead, distinguishes monitoring a user’s use of the device, or accessing his/her calendar, from “having the user complete a survey,” (Spec. ¶ 19) which appears to be a more explicit version of creating the user profile.
For its part, Horvitz-385 discloses that the models 140 of the user’s states “can be constructed and/or trained from the log 110 that collects or aggregates data from a plurality of different data sources,” including “various data acquisition components that record or log user event data (e.g., cell phone, acoustical activity recorded by microphone, Global Positioning System (GPS), electronic calendar, vision monitoring equipment, desktop activity, web site interaction and so forth).” Horvitz-385 ¶ 31. Horvitz-385 further discloses that system 100 makes inferences from the data to inform the models. See Horvitz-385 ¶¶ 58–59.
over time,
The log 110 mentioned above “records user activity 120 over time,” Horvitz-385 ¶ 27, and therefore, the data inside the models is constructed and/or trained from a dataset of a person’s interactions with a device over time as claimed.
the plurality of different types of user characteristics including data characterizing at least one user behavior or habit identified from ones of the device interaction that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device;
“For instance, by monitoring activities over time (e.g., applications, subject matter being worked on, type or numbers of tasks, times of busyness, times when email or voice mail are processed), it can be determined when it would be of high cost to interrupt the user versus when a lower cost is associated with interruption of a user (e.g., disparate states of interruptability). For example, high cost can refer to interrupting the user when they are highly focused on another task versus a lower cost period when the user is free to process alert information.” Horvitz-385 ¶ 27.
detecting an event that requires user interaction to complete, and when performed, improves functionality of the electronic device, wherein the detected event comprises an attended event in the electronic device, the attended event being one that cannot be performed without user interaction,
Horvitz-385 likewise discloses a deferral component 160 in system 100 that processes “interrupts 170” (e.g., emails, instant messages, calendar reminders) in part “by analyzing [the] cost of delaying receipt of information to the user.” Horvitz-385 ¶ 29. Each (or at least one or more) interrupts 170 fall within the broadest reasonable interpretation of “an event that requires user interaction to complete,” because they are each associated with “a cost function (f(t)) 204 that can be assessed from user actions/responses.” Horvitz-385 ¶ 42. A device that informs a user about an important message on the device faster has improved functionality over a device that fails to inform the user about the same message as quickly.
The cost function also accounts for the “loss in value of reviewing contents of information” if the system 100 fails to get the user to read the information within a sufficient amount of time. Horvitz-385 ¶ 42. Since reviewing the content of information presented on the device necessarily requires the user’s attention, the interrupts 170 also fall within the scope of the claimed “attended event being one that cannot be performed without user interaction.”
obtaining at least one user characteristic of the plurality of different types of user characteristics responsive to said detected event;
In order to appropriately process the interrupts 170 “in accordance with the determined states 150,” the deferral component 160 obtains the states 150 from the analyzer’s models 140. Horvitz-385 ¶ 29.
This includes looking at both the user’s busyness states, and the alert states that describe “a measure of loss with respect to delaying the incoming notification and/or underlying message.” Horvitz-385 ¶ 32.
detecting a change in one or more user characteristics of the plurality of different types of user characteristics;
System 100 detects changes in the user’s states in multiple ways. For one, analyzer 130 can explicitly “monitor user states and . . . determine[] that the user has transitioned from a busy state to an available state. Such determination can be made based upon explicit actions (e.g., altering a profile from ‘busy’ to ‘available’), learned actions (e.g., opening a web browser and reviewing a non-work related website), or any other suitable manner for determining user states and transitions therebetween.” Horvitz-385 ¶ 41.
Alternatively, system 100 can implicitly detect a change in the user’s state(s) by predicting a period of time that must pass in order for the user to transition to a state where it would be acceptable to interrupt him, and then detect “the expiration of the deferral period,” hence detecting that the user should now be in the predicted lower state. Horvitz-385 ¶ 41.
and synchronously managing the one or more software or hardware systems based on the detected change in the one or more user characteristics of the plurality of different types of user characteristics, including: providing a notification to invite the required user interaction in a manner synchronized with the detected change in the one or more user characteristics,
Consistent with the above two alternatives, “the deferral component 160 can cause deliverance of a notification/message to the user at the expiration of the deferral period,” or, analyzer 130 can “deliver a message prior to the bounded deferral period if the analyzer 130 determines that the user has transitioned from a busy state to an available state.” Horvitz-385 ¶ 41; see also Horvitz FIG. 1 (illustrating that the items 180 that caused the interrupts 170 will be delivered to the user in accordance with the states 150).
Notably, this flexibility shows that the system 100’s management of the applications’ disruptions is synchronous with system 100’s model of the user’s characteristics.
wherein the notification is provided responsive to the detected event.
“The items 180 can include substantially any type of information that may be directed to a user such as email, phone messages, instant messages, calendar alerts or alerts in general, tasks from other applications and so forth.” Horvitz-385 ¶ 29.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to improve Lee’s processes for warning a user about an impending need to charge a device with Horvitz-385’s technique of obtaining a model of the user’s activity, detecting a change that departs from the model, and thereby, further refining the timing of Lee’s warning in synchronicity with the model of the user’s activity. One would have been motivated to consider Horvitz-385’s technique because the technique would help better “strike a balance between focusing on important activities that need to be completed for productivity purposes at the same time trying to process interruptions that may have high urgency requiring the user’s immediate attention.” Horvitz-385 ¶ 2.
Claim 2
Lee and Horvitz-385 teach the system of claim 1, wherein the operations further include:
determining that the detected change in the one or more user characteristics corresponds to an activity from a predetermined set of activities;
“In accordance with one aspect, states of interruption can be defined as high, medium, and low cost, respectively.” Horvitz-385 ¶ 28.
wherein providing the notification to invite the user interaction in the synchronized manner comprises providing the notification based on a result of the determining.
A “bounded deferral time can be determined by analyzing cost of delaying receipt of information to the user together with cost of interrupting the user.” Horvitz-385 ¶ 29. Thus, where the cost of interrupting the user is zero (because the user is free), there will be no deferral time for the message, but in a case where the user is busy, “the deferral component 160 can determine that the user should not be interrupted until the user transitions to a lower state.” Horvitz-385 ¶ 39.
Claim 4
Lee and Horvitz-385 teach the system of claim 2,
wherein the set of activities includes a user-specified activity and one or more additional activities that are different than the user-specified activity.
“Referring to FIG. 7, an analyzer 700 for automatically deferring items is illustrated. The analyzer 700 can consider information or data from a plurality of sources or inputs 710 when determining user states 720 in which to optimally deliver respective items. These sources 710 can include data or inputs from one or more application sessions, considerations of the user’s attentional load, the user’s status (explicitly or implicitly determined) (e.g., I am busy, or reading email), and can include inputs, preferences or threshold settings for specifying/detecting when notifications or alerts should be provided.” Horvitz-385 ¶ 45.
As understood by the Examiner, the claimed “user-specified activity” corresponds to one of Horvitz-385’s sources 710 of the user “explicitly” providing his or her “user status,” while the claimed “additional activities” corresponds to all of the other activities mentioned above.
Claim 6
Lee and Horvitz-385 teach the system of claim 1,
wherein the detected event comprises an automatically-triggered event.
“In more detail, a deferral component 160 processes interrupts 170 to the user and determines a bounded deferral time in which to direct items 180 to the user in accordance with the determined states 150. The items 180 can include substantially any type of information that may be directed to a user such as email, phone messages, instant messages, calendar alerts or alerts in general, tasks from other applications and so forth.” Horvitz-385 ¶ 29.
Claim 8
Lee and Horvitz-385 teach the system of claim 1, wherein the providing the notification to invite the user interaction in the synchronized manner includes:
providing a type of notification selected from a plurality of different types of notifications based on the detected change in the one or more user characteristics; 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.
In a case where the user is busy, “the deferral component 160 can determine that the user should not be interrupted until the user transitions to a lower state.” Horvitz-385 ¶ 39.
Claim 20
Lee and Horvitz-385 teach the system of claim 1,
wherein a user characteristic of the plurality of one or more user characteristics is obtained by accessing an electronic calendar.
“The models 140 can be constructed and/or trained from the log 110 that collects or aggregates data from a plurality of different data sources. Such sources can include . . . [an] electronic calendar.” Horviz ¶ 31.
Claims 21–23
Claims 21–23 are directed to the same methods that the systems of respective claims 1, 2, and 8 perform, and are therefore rejected according to the same findings and rationale as provided above.
Claim 29
Lee teaches:
A system
“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 a memory storing instructions operable to, in response to execution of the stored instructions, perform operations including:
“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.
providing a plurality of different types of user characteristics including data characterizing at least one user behavior or habit identified from ones device interactions, involving a person and a electronic device, that are sensed during a monitored time period;
Prior to the start of processes 200 or 500, a device 100 is given a plurality of different types of information about a user that characterize 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.
detecting an event that requires user interaction with the electronic device and, when performed, improves reliability or availability of the electronic device, or updates software of the electronic device, wherein the detection of the indication comprises an attended event in the electronic device, the attended event being one that cannot be performed without user interaction;
Lee likewise teaches at least two examples of such a detection (“decision 208” and “decision 508”), either one of which independently falling within the scope of the claimed operation of detecting an event, for the following reasons.
However, before discussing the prior art, we need to discuss the broadest reasonable interpretation of the claim language. The above claim language requires (among other things) detecting an event that comprises an attended event, rather than detecting an event that is the attended event. Since the word “comprises” is synonymous with “including” or “containing,” a prior art teaching of detecting an event encompassing both the attended event and other additional features falls within the scope of this claim language. See MPEP § 2111.03.
Additionally, the Examiner also observes that this claim language never links the user interaction required by the “event” to the second user interaction required by the attended event, because the claim does not use a definite article to refer back and/or reinvoke the event’s user interaction. In other words, claim 1 does not recite: “detecting an event that requires user interaction . . . the attended event being one that cannot be performed without the user interaction.” Accordingly, the plain terms of the claim allow for the event’s required user interaction and the attended event’s user interaction to be two different user interactions.
Turning back now to Lee, decision 208 corresponds to the claimed detection step as follows. During decision 208, the process 200 detects the presence of a condition (the claimed event) for which “there is a shortage of available battery power in order to satisfy the impending device usage power requirements.” Lee ¶ 37. In this detection, the overarching “event” corresponds to Lee’s overall threshold comparison “that the available battery power is not greater than the estimated power requirements,” Lee ¶ 37, while the claimed event’s constituent “attended event” corresponds to the “impending device usage power requirements” that decision 208 considers as part of its comparison. Lee ¶ 37. Each will now be discussed relative to their additionally claimed limitations.
The overall threshold comparison of available battery power to estimated power requirements corresponds to the claimed overarching “event,” because it includes a finding of necessity for the user to either connect the device 100 to an external power source, Lee ¶ 40, or for the user to provide an 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 ¶ 41.6 Both of these are clearly things that, by their plain terms, “require[] user interaction to complete, and when performed, improve[] functionality of the electronic device,” because they require a user’s affirmative actions to ensure that the device is able to continue functioning for longer.
Likewise, the “impending device usage power requirements” determined in decision 208 correspond to the claimed “attended event,” because, the literal words “device usage” mean that someone is using the device (or will be), thereby satisfying both of the attended event’s limitations of being “in the electronic device” and “being one that cannot be performed without user interaction.” A person cannot use a device without using the device.
The mapping for process 500 is similar. During decision 508, the process 500 detects the presence of a condition (the claimed event) in which “the battery cannot satisfy the future power requirements.” Lee ¶ 48. In this detection, the overarching “event” corresponds to Lee’s overall threshold comparison of “whether the battery can satisfy the future power requirements,” Lee ¶ 48, while the claimed event’s constituent “attended event” corresponds to the constituent determination of the “future power requirements.”
The overall threshold comparison of available battery power to estimated power requirements corresponds to the claimed overarching “event,” because it includes a finding of necessity for the user to connect the device 100 to an external power source. Lee ¶ 48. Connecting the device to an external power source both “requires user interaction to complete, and when performed, improves functionality of the electronic device,” because it requires user’s affirmative actions to ensure that the device is able to continue functioning for longer.
Likewise, the “future power requirements” corresponds to the claimed attended event, because “[e]stimation 504 of the power requirements can be performed in view of . . . characteristics of the electronic device, user or scheduled activity.” Lee ¶ 48. A person cannot provide activity on a device without using the device.
managing one or more software or hardware systems of the electronic device based on
As shown in at least FIGS. 2 and 5, processes 200 and 500 each respectively perform a block 210 or 410 in accordance with the decision in respective blocks 208 and/or 508. In the case of process 200, block 210 is illustrated in greater detail in FIG. 3, see Lee ¶ 38, and it includes 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.
in response to a user response to the notification, wherein the user response includes the user interaction: the availability or reliability of the electronic device is improved, or the electronic device performs the software update.
“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.
Lee does not appear to explicitly disclose “detecting a change in one or more user characteristics of the plurality of different types of user characteristics,” and thus, Lee’s synchronous management of the device is not additionally “based on the detected change” in the characteristics.
Horvitz-385, however, teaches:
A system comprising a memory storing instructions operable to, in response to execution of the stored instructions, perform operations including:
“Referring initially to FIG. 1, a notification deferral system 100 is illustrated. The notification deferral system 100 may be implemented as a computer 1712 with system memory 1716 for storing the claimed applications and their data. See Horvitz-385 ¶ 75.
providing a plurality of different types of user characteristics including data characterizing at least one user behavior or habit identified from ones device interactions, involving a person and a electronic device,
System 100 provides a plurality of different “user states” across a set of models 140. Horvitz-385 ¶ 29. Some of the user states describe the different “costs of interrupting a user given a particular user state,” Horvitz-385 ¶ 28, while others describe the “cost of delaying receipt of information” by the user. Horvitz-385 ¶ 29. The models 140 of the user’s states “can be constructed and/or trained from the log 110 that collects or aggregates data from a plurality of different data sources,” including “various data acquisition components that record or log user event data (e.g., cell phone, acoustical activity recorded by microphone, Global Positioning System (GPS), electronic calendar, vision monitoring equipment, desktop activity, web site interaction and so forth).” Horvitz-385 ¶ 31.
that are sensed during a monitored time period;
The log 110 mentioned above “records user activity 120 over time,” Horvitz-385 ¶ 27, and therefore, the data inside the models is constructed and/or trained from a dataset of a person’s interactions with a device over a monitored time period as claimed.
detecting an event that requires user interaction with the electronic device and, when performed, improves reliability or availability of the electronic device, or updates software of the electronic device, wherein the detection of the indication comprises an attended event in the electronic device, the attended event being one that cannot be performed without user interaction;
According to the plain meaning of the word “or” in the above claim language, the claimed user interaction is only required to provide one or more of the following elements: (1) improve reliability of the portable electronic device; (2) improve availability of the portable electronic device; or (3) update software of the portable electronic device.
Horvitz-385 at least teaches element (1), thereby teaching the disjunctive of (1), (2), or (3). Specifically, Horvitz-385 teaches a deferral component 160 in system 100 that improves the reliability of the portable electronic device by deciding whether it is appropriate to “interrupt 170” the user (e.g., with emails, instant messages, or calendar reminders). Horvitz-385 ¶ 29. Deferral component 160 does this “by analyzing [the] cost of delaying receipt of information to the user.” Horvitz-385 ¶ 29. This “cost” is an indication that user interaction with the portable electronic device is required to improve reliability of the system 100, because the “cost” represents the “loss in value of reviewing contents of information” if the system 100 fails to get the user to read the information within a sufficient amount of time. Horvitz-385 ¶ 42.
A device that informs a user about an important message on the device faster is more reliable than one that fails to inform the user about the same message within the appropriate timeframe.
The cost function also accounts for the “loss in value of reviewing contents of information” if the system 100 fails to get the user to read the information within a sufficient amount of time. Horvitz-385 ¶ 42. Since reviewing the content of information presented on the device necessarily requires the user’s attention, the interrupts 170 also fall within the scope of the claimed “attended event being one that cannot be performed without user interaction.”
in response to detecting said indication, detecting a change in one or more user characteristics of the plurality of different types of user characteristics;
System 100 detects changes in the user’s states in multiple ways. For one, analyzer 130 can explicitly “monitor user states and . . . determine[] that the user has transitioned from a busy state to an available state. Such determination can be made based upon explicit actions (e.g., altering a profile from ‘busy’ to ‘available’), learned actions (e.g., opening a web browser and reviewing a non-work related website), or any other suitable manner for determining user states and transitions therebetween.” Horvitz-385 ¶ 41.
Alternatively, system 100 can implicitly detect a change in the user’s state(s) by predicting a period of time that must pass in order for the user to transition to a state where it would be acceptable to interrupt him, and then detect “the expiration of the deferral period,” hence detecting that the user should now be in the predicted lower state. Horvitz-385 ¶ 41.
and managing one or more software or hardware systems of the electronic device based on the detected change in the one or more user characteristics of the plurality of different types of user, including: providing a notification to invite the user interaction in a manner synchronized with the detected change in the one or more user characteristics of the plurality of different types of user characteristics,
Consistent with the above two alternatives, “the deferral component 160 can cause deliverance of a notification/message to the user at the expiration of the deferral period,” or, analyzer 130 can “deliver a message prior to the bounded deferral period if the analyzer 130 determines that the user has transitioned from a busy state to an available state.” Horvitz-385 ¶ 41; see also Horvitz FIG. 1 (illustrating that the items 180 that caused the interrupts 170 will be delivered to the user in accordance with the states 150).
Notably, this flexibility shows that the system 100’s management of the applications’ disruptions is based on the system 100’s model of the user’s characteristics.
wherein the notification is provided responsive to the detected event;
“The items 180 can include substantially any type of information that may be directed to a user such as email, phone messages, instant messages, calendar alerts or alerts in general, tasks from other applications and so forth.” Horvitz-385 ¶ 29.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to improve Lee’s processes for warning a user about an impending need to charge a device with Horvitz-385’s technique of obtaining a model of the user’s activity, detecting a change that departs from the model, and thereby, further refining the timing of Lee’s warning in synchronicity with the model of the user’s activity. One would have been motivated to consider Horvitz-385’s technique because the technique would help better “strike a balance between focusing on important activities that need to be completed for productivity purposes at the same time trying to process interruptions that may have high urgency requiring the user’s immediate attention.” Horvitz-385 ¶ 2.
Claim 30
Lee and Horvitz-385 teach the system of claim 29, wherein the operations further include:
determining that the detected change in the one or more user characteristics corresponds to an activity from a predetermined set of activities;
“In accordance with one aspect, states of interruption can be defined as high, medium, and low cost, respectively.” Horvitz-385 ¶ 28.
wherein providing the notification to invite the user interaction in the synchronized manner comprises providing the notification based on a result of the determining.
A “bounded deferral time can be determined by analyzing cost of delaying receipt of information to the user together with cost of interrupting the user.” Horvitz-385 ¶ 29. Thus, where the cost of interrupting the user is zero (because the user is free), there will be no deferral time for the message, but in a case where the user is busy, “the deferral component 160 can determine that the user should not be interrupted until the user transitions to a lower state.” Horvitz-385 ¶ 39.
Claim 32
Lee and Horvitz-385 teach the system of claim 30,
wherein the set of activities includes a user-specified activity and one or more additional activities that are different than the user-specified activity.
“Referring to FIG. 7, an analyzer 700 for automatically deferring items is illustrated. The analyzer 700 can consider information or data from a plurality of sources or inputs 710 when determining user states 720 in which to optimally deliver respective items. These sources 710 can include data or inputs from one or more application sessions, considerations of the user’s attentional load, the user’s status (explicitly or implicitly determined) (e.g., I am busy, or reading email), and can include inputs, preferences or threshold settings for specifying/detecting when notifications or alerts should be provided.” Horvitz-385 ¶ 45.
As understood by the Examiner, the claimed “user-specified activity” corresponds to one of Horvitz-385’s sources 710 of the user “explicitly” providing his or her “user status,” while the claimed “additional activities” corresponds to all of the other activities mentioned above.
Claim 34
Lee and Horvitz-385 teach the system of claim 29,
wherein the event comprises an automatically-triggered event.
“In more detail, a deferral component 160 processes interrupts 170 to the user and determines a bounded deferral time in which to direct items 180 to the user in accordance with the determined states 150. The items 180 can include substantially any type of information that may be directed to a user such as email, phone messages, instant messages, calendar alerts or alerts in general, tasks from other applications and so forth.” Horvitz-385 ¶ 29.
Claim 36
Lee and Horvitz-385 teach the system of claim 29, wherein the providing the notification to invite the user interaction in the synchronized manner includes:
providing a type of notification selected from a plurality of different types of notifications based on the detected change in the one or more user characteristics; 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.
In a case where the user is busy, “the deferral component 160 can determine that the user should not be interrupted until the user transitions to a lower state.” Horvitz-385 ¶ 39.
Claim 38
Lee and Horvitz-385 teach the system of claim 29,
wherein a user characteristic of the plurality of one or more user characteristics is obtained by accessing an electronic calendar.
“The models 140 can be constructed and/or trained from the log 110 that collects or aggregates data from a plurality of different data sources. Such sources can include . . . [an] electronic calendar.” Horviz-385 ¶ 31.
II. Horvitz-385 and June 2024 Admitted Prior Art teach claims 1, 2, 4, 6, 8, 20–23, 29, 30, 32, 34, 36, and 38.
Claim(s) 1, 2, 4, 6, 8, 20–23, 29, 30, 32, 34, 36, and 38 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent Application Publication No. 2007/0004385 A1 (“Horvitz-385”) in view of the Applicant’s prior art admissions, on page 10 of the June 28, 2024 Request for Continued Examination (and likewise page 10 in the supplemental filing of December 17, 2024) of what the Applicant’s specification assumes one of ordinary skill in the art “would know” when reading the present specification (hereafter “June 2024 Admitted Prior Art”).
Claim 1
Horvitz-385 teaches:
A system including a electronic device to sense device interactions performed by an operator via a user interface of the electronic device,
“Referring initially to FIG. 1, a notification deferral system 100 is illustrated. The system 100 includes a log 110 that records user activity 120 over time” Horvitz-385 ¶ 27. “Such sources [of user activity in the log] can include various data acquisition components that record or log user event data (e.g., cell phone, acoustical activity recorded by microphone, Global Positioning System (GPS), electronic calendar, vision monitoring equipment, desktop activity, web site interaction and so forth).” Horvitz-385 ¶ 31. Note that this passage discloses two facets of the above preamble limitation: (1) a “cell phone,” by its very definition of being a portable telephone for use across different cells of a cellular radio network,7 falls within the scope of a portable electronic device; and (2) microphone activity, electronic calendar activity, desktop activity, and web site interaction are all examples of device interactions performed by an operator via a user interface. Moreover, Horvitz-385 further discloses the same system sensing user presence “based on mouse or keyboard activity,” which is yet another example of a user interface. Horvitz-385 ¶ 59.
the system comprising a memory storing instructions operable to, when executed by at least one processor, perform operations including:
Note that the notification deferral system 100 may be implemented as a computer 1712 with system memory 1716 for storing the claimed applications and their data. See Horvitz-385 ¶ 75.
providing a plurality of different types of user characteristics responsive to implicitly profiling the operator’s interactions with the electronic device
System 100 provides a plurality of different “user states” across a set of models 140. Horvitz-385 ¶ 29. Some of the user states describe the different “costs of interrupting a user given a particular user state,” Horvitz-385 ¶ 28, while others describe the “cost of delaying receipt of information” by the user. Horvitz-385 ¶ 29.
According to the Applicant, “implicitly profiling a person’s interactions” is best understood in the context of paragraph 18 of the published application (which is paragraph 19 of the specification as filed). (See Amendment dated February 8, 2022, page 8). Looking to the relevant passage, those reviewing this Office Action will notice that the Applicant never uses the word “implicit” (or the like), but instead, distinguishes monitoring a user’s use of the device, or accessing his/her calendar, from “having the user complete a survey,” (Spec. ¶ 19) which appears to be a more explicit version of creating the user profile.
For its part, Horvitz-385 discloses that the models 140 of the user’s states “can be constructed and/or trained from the log 110 that collects or aggregates data from a plurality of different data sources,” including “various data acquisition components that record or log user event data (e.g., cell phone, acoustical activity recorded by microphone, Global Positioning System (GPS), electronic calendar, vision monitoring equipment, desktop activity, web site interaction and so forth).” Horvitz-385 ¶ 31. Horvitz-385 further discloses that system 100 makes inferences from the data to inform the models. See Horvitz-385 ¶¶ 58–59.
over time,
The log 110 mentioned above “records user activity 120 over time,” Horvitz-385 ¶ 27, and therefore, the data inside the models is constructed and/or trained from a dataset of a person’s interactions with a device over time as claimed.
the plurality of different types of user characteristics including data characterizing at least one user behavior or habit identified from ones of the device interaction that are sensed during a monitored time period, wherein the device interactions include commands issued to the electronic device;
“For instance, by monitoring activities over time (e.g., applications, subject matter being worked on, type or numbers of tasks, times of busyness, times when email or voice mail are processed), it can be determined when it would be of high cost to interrupt the user versus when a lower cost is associated with interruption of a user (e.g., disparate states of interruptability). For example, high cost can refer to interrupting the user when they are highly focused on another task versus a lower cost period when the user is free to process alert information.” Horvitz-385 ¶ 27.
detecting an event that requires user interaction to complete, and when performed, improves functionality of the electronic device, wherein the detected event comprises an attended event in the electronic device, the attended event being one that cannot be performed without user interaction,
Horvitz-385 likewise discloses a deferral component 160 in system 100 that processes “interrupts 170” (e.g., emails, instant messages, calendar reminders) in part “by analyzing [the] cost of delaying receipt of information to the user.” Horvitz-385 ¶ 29. Each (or at least one or more) interrupts 170 fall within the broadest reasonable interpretation of “an event that requires user interaction to complete,” because they are each associated with “a cost function (f(t)) 204 that can be assessed from user actions/responses.” Horvitz-385 ¶ 42. A device that informs a user about an important message on the device faster has improved functionality over a device that fails to inform the user about the same message as quickly.
The cost function also accounts for the “loss in value of reviewing contents of information” if the system 100 fails to get the user to read the information within a sufficient amount of time. Horvitz-385 ¶ 42. Since reviewing the content of information presented on the device necessarily requires the user’s attention, the interrupts 170 also fall within the scope of the claimed “attended event being one that cannot be performed without user interaction.”
obtaining at least one user characteristic of the plurality of different types of user characteristics responsive to said detected event;
In order to appropriately process the interrupts 170 “in accordance with the determined states 150,” the deferral component 160 obtains the states 150 from the analyzer’s models 140. Horvitz-385 ¶ 29.
This includes looking at both the user’s busyness states, and the alert states that describe “a measure of loss with respect to delaying the incoming notification and/or underlying message.” Horvitz-385 ¶ 32.
detecting a change in one or more user characteristics of the plurality of different types of user characteristics;
System 100 detects changes in the user’s states in multiple ways. For one, analyzer 130 can explicitly “monitor user states and . . . determine[] that the user has transitioned from a busy state to an available state. Such determination can be made based upon explicit actions (e.g., altering a profile from ‘busy’ to ‘available’), learned actions (e.g., opening a web browser and reviewing a non-work related website), or any other suitable manner for determining user states and transitions therebetween.” Horvitz-385 ¶ 41.
Alternatively, system 100 can implicitly detect a change in the user’s state(s) by predicting a period of time that must pass in order for the user to transition to a state where it would be acceptable to interrupt him, and then detect “the expiration of the deferral period,” hence detecting that the user should now be in the predicted lower state. Horvitz-385 ¶ 41.
and synchronously managing the one or more software or hardware systems based on the detected change in the one or more user characteristics of the plurality of different types of user characteristics, including: providing a notification to invite the required user interaction in a manner synchronized with the detected change in the one or more user characteristics,
Consistent with the above two alternatives, “the deferral component 160 can cause deliverance of a notification/message to the user at the expiration of the deferral period,” or, analyzer 130 can “deliver a message prior to the bounded deferral period if the analyzer 130 determines that the user has transitioned from a busy state to an available state.” Horvitz-385 ¶ 41; see also Horvitz FIG. 1 (illustrating that the items 180 that caused the interrupts 170 will be delivered to the user in accordance with the states 150).
Notably, this flexibility shows that the system 100’s management of the applications’ disruptions is synchronous with system 100’s model of the user’s characteristics.
wherein the notification is provided responsive to the detected event.
“The items 180 can include substantially any type of information that may be directed to a user such as email, phone messages, instant messages, calendar alerts or alerts in general, tasks from other applications and so forth.” Horvitz-385 ¶ 29.
The Examiner respectfully submits that the types of items 180 Horvitz-385 describes—e.g., email, phone messages, instant messages—are all highly suggestive of notifications that call for a response that causes the device to perform operations (e.g., answering a telephone call), and thus, Horvitz-385 at least suggests “in response to a user response to the notification, wherein the user response includes the required user interaction, performing one or more device operations to improve the functionality of the portable electronic device.” Nevertheless, Horvitz-385 does not expressly describe the same with the level of detail necessary for a finding of anticipation.
The June 2024 Admitted Prior Art, however, teaches that the following facts were already known prior to the claimed invention:
Admission (1) “[O]ne or ordinary skill in the art would know that software upgrades to portable electronic devices may require user decisions and/or approval to proceed.” (June 2024 Admitted Prior Art page 10).
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.” (June 2024 Admitted Prior Art page 10).
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 portable electronic device.” (June 2024 Admitted Prior Art page 10).
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.” (June 2024 Admitted Prior Art page 10).
In addition to these four admissions, the Applicant further admits, in the September 12, 2025 amendment and response (page 9), that “systems that are designed to require attended software upgrades . . . were widely used at the effective filing date.” (emphasis added).
The above admissions of what “one of ordinary skill in the art would know” prior to the invention therefore show that the following elements of the claimed invention were already known prior to the claimed invention:
detecting an event that requires user interaction to complete, and when performed, improves functionality of the electronic device, wherein the detected event comprises an attended event in the electronic device, the attended event being one that cannot be performed without user interaction,
Admission (1) provides a finding that a portable electronic device “may require user decisions and/or approval to proceed with an update,” wherein an “update”—according to Admission (3)—is something that improves the functionality of the portable electronic device. Putting it together, the Applicant admits that, prior to the claimed invention, it was known that a user’s decision or approval was necessary to proceed with an operation that improves functionality of the portable electronic device.
Moreover, the prior art admission in the September 12, 2025 amendment and response (page 9) further confirms that “systems that are designed to require attended software upgrades . . . were widely used at the effective filing date,” (emphasis added), i.e., the claimed “attended events.”
in response to a user response to the notification, wherein the user response includes the user interaction, performing one or more device operations to improve the functionality of the electronic device.
Admission (2) provides a finding that a device will perform a software upgrade in response to “the required user interaction,” and Admission (4) provides a finding that the software upgrade involves performing one or more device operations to improve the functionality of the portable electronic device, by fixing bugs and adding features to the software on the device.
It has been held that a claim is obvious when “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 Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007)). In this case, the factual findings to support such a conclusion are as follows:
(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 above, where each claim element is mapped to a respective element described in the prior art.
(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 includes (i) Horvitz-385’s disclosure that the items 180 within interrupts 170 can include “alerts in general” and “tasks from other applications,” Horvitz-385 ¶ 29, and (ii) at least Admissions (1)–(2), which describe the task of updating an application as requiring a solicitation of the user as something known to those of ordinary skill in the art. In other words, the claimed invention involves nothing more than substituting or supplementing the known interrupts 170 with solicitations that, according to the Applicant, “one or ordinary skill in the art would know.”
(3) One of ordinary skill in the art would have recognized that the results of the combination were predictable, because Horvitz-385 explains how to process interrupts 170, while the Admitted Prior Art explains what those of ordinary skill in the art knew to be the behavior of software updates.
Therefore, in view of the above findings, 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 the known system in Horvitz-385 with the known procedures for executing software updates admitted by the Applicant.
Claim 2
Horvitz-385 and June 2024 Admitted Prior Art teach the system of claim 1, wherein the operations further include:
determining that the detected change in the one or more user characteristics corresponds to an activity from a predetermined set of activities;
“In accordance with one aspect, states of interruption can be defined as high, medium, and low cost, respectively.” Horvitz-385 ¶ 28.
wherein providing the notification to invite the user interaction in the synchronized manner comprises providing the notification based on a result of the determining.
A “bounded deferral time can be determined by analyzing cost of delaying receipt of information to the user together with cost of interrupting the user.” Horvitz-385 ¶ 29. Thus, where the cost of interrupting the user is zero (because the user is free), there will be no deferral time for the message, but in a case where the user is busy, “the deferral component 160 can determine that the user should not be interrupted until the user transitions to a lower state.” Horvitz-385 ¶ 39.
Claim 4
Horvitz-385 and June 2024 Admitted Prior Art teach the system of claim 2,
wherein the set of activities includes a user-specified activity and one or more additional activities that are different than the user-specified activity.
“Referring to FIG. 7, an analyzer 700 for automatically deferring items is illustrated. The analyzer 700 can consider information or data from a plurality of sources or inputs 710 when determining user states 720 in which to optimally deliver respective items. These sources 710 can include data or inputs from one or more application sessions, considerations of the user’s attentional load, the user’s status (explicitly or implicitly determined) (e.g., I am busy, or reading email), and can include inputs, preferences or threshold settings for specifying/detecting when notifications or alerts should be provided.” Horvitz-385 ¶ 45.
As understood by the Examiner, the claimed “user-specified activity” corresponds to one of Horvitz-385’s sources 710 of the user “explicitly” providing his or her “user status,” while the claimed “additional activities” corresponds to all of the other activities mentioned above.
Claim 6
Horvitz-385 and June 2024 Admitted Prior Art teach the system of claim 1,
wherein the detected event comprises an automatically-triggered event.
“In more detail, a deferral component 160 processes interrupts 170 to the user and determines a bounded deferral time in which to direct items 180 to the user in accordance with the determined states 150. The items 180 can include substantially any type of information that may be directed to a user such as email, phone messages, instant messages, calendar alerts or alerts in general, tasks from other applications and so forth.” Horvitz-385 ¶ 29.
Claim 8
Horvitz-385 and June 2024 Admitted Prior Art teach the system of claim 1, wherein the providing the notification to invite the user interaction in the synchronized manner includes:
providing a type of notification selected from a plurality of different types of notifications based on the detected change in the one or more user characteristics; 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.
In a case where the user is busy, “the deferral component 160 can determine that the user should not be interrupted until the user transitions to a lower state.” Horvitz-385 ¶ 39.
Claim 20
Horvitz-385 and June 2024 Admitted Prior Art teach the system of claim 1,
wherein a user characteristic of the plurality of one or more user characteristics is by accessing an electronic calendar.
“The models 140 can be constructed and/or trained from the log 110 that collects or aggregates data from a plurality of different data sources. Such sources can include . . . [an] electronic calendar.” Horviz ¶ 31.
Claims 21–23
Claims 21–23 are directed to the same methods that the systems of respective claims 1, 2, and 8 perform, and are therefore rejected according to the same findings and rationale as provided above.
Claim 29
Horvitz-385 teaches:
A system comprising a memory storing instructions operable to, in response to execution of the stored instructions, perform operations including:
“Referring initially to FIG. 1, a notification deferral system 100 is illustrated. The notification deferral system 100 may be implemented as a computer 1712 with system memory 1716 for storing the claimed applications and their data. See Horvitz-385 ¶ 75.
providing a plurality of different types of user characteristics including data characterizing at least one user behavior or habit identified from ones device interactions, involving a person and a electronic device,
System 100 provides a plurality of different “user states” across a set of models 140. Horvitz-385 ¶ 29. Some of the user states describe the different “costs of interrupting a user given a particular user state,” Horvitz-385 ¶ 28, while others describe the “cost of delaying receipt of information” by the user. Horvitz-385 ¶ 29. The models 140 of the user’s states “can be constructed and/or trained from the log 110 that collects or aggregates data from a plurality of different data sources,” including “various data acquisition components that record or log user event data (e.g., cell phone, acoustical activity recorded by microphone, Global Positioning System (GPS), electronic calendar, vision monitoring equipment, desktop activity, web site interaction and so forth).” Horvitz-385 ¶ 31.
that are sensed during a monitored time period;
The log 110 mentioned above “records user activity 120 over time,” Horvitz-385 ¶ 27, and therefore, the data inside the models is constructed and/or trained from a dataset of a person’s interactions with a device over a monitored time period as claimed.
detecting an event that requires user interaction with the electronic device and, when performed, improves reliability or availability of the electronic device, or updates software of the electronic device, wherein the detection of the indication comprises an attended event in the electronic device, the attended event being one that cannot be performed without user interaction;
According to the plain meaning of the word “or” in the above claim language, the claimed user interaction is only required to provide one or more of the following elements: (1) improve reliability of the portable electronic device; (2) improve availability of the portable electronic device; or (3) update software of the portable electronic device.
Horvitz-385 at least teaches element (1), thereby teaching the disjunctive of (1), (2), or (3). Specifically, Horvitz-385 teaches a deferral component 160 in system 100 that improves the reliability of the portable electronic device by deciding whether it is appropriate to “interrupt 170” the user (e.g., with emails, instant messages, or calendar reminders). Horvitz-385 ¶ 29. Deferral component 160 does this “by analyzing [the] cost of delaying receipt of information to the user.” Horvitz-385 ¶ 29. This “cost” is an indication that user interaction with the portable electronic device is required to improve reliability of the system 100, because the “cost” represents the “loss in value of reviewing contents of information” if the system 100 fails to get the user to read the information within a sufficient amount of time. Horvitz-385 ¶ 42.
A device that informs a user about an important message on the device faster is more reliable than one that fails to inform the user about the same message within the appropriate timeframe.
The cost function also accounts for the “loss in value of reviewing contents of information” if the system 100 fails to get the user to read the information within a sufficient amount of time. Horvitz-385 ¶ 42. Since reviewing the content of information presented on the device necessarily requires the user’s attention, the interrupts 170 also fall within the scope of the claimed “attended event being one that cannot be performed without user interaction.”
in response to detecting said indication, detecting a change in one or more user characteristics of the plurality of different types of user characteristics;
System 100 detects changes in the user’s states in multiple ways. For one, analyzer 130 can explicitly “monitor user states and . . . determine[] that the user has transitioned from a busy state to an available state. Such determination can be made based upon explicit actions (e.g., altering a profile from ‘busy’ to ‘available’), learned actions (e.g., opening a web browser and reviewing a non-work related website), or any other suitable manner for determining user states and transitions therebetween.” Horvitz-385 ¶ 41.
Alternatively, system 100 can implicitly detect a change in the user’s state(s) by predicting a period of time that must pass in order for the user to transition to a state where it would be acceptable to interrupt him, and then detect “the expiration of the deferral period,” hence detecting that the user should now be in the predicted lower state. Horvitz-385 ¶ 41.
and managing one or more software or hardware systems of the electronic device based on the detected change in the one or more user characteristics of the plurality of different types of user, including: providing a notification to invite the user interaction in a manner synchronized with the detected change in the one or more user characteristics of the plurality of different types of user characteristics,
Consistent with the above two alternatives, “the deferral component 160 can cause deliverance of a notification/message to the user at the expiration of the deferral period,” or, analyzer 130 can “deliver a message prior to the bounded deferral period if the analyzer 130 determines that the user has transitioned from a busy state to an available state.” Horvitz-385 ¶ 41; see also Horvitz FIG. 1 (illustrating that the items 180 that caused the interrupts 170 will be delivered to the user in accordance with the states 150).
Notably, this flexibility shows that the system 100’s management of the applications’ disruptions is based on the system 100’s model of the user’s characteristics.
wherein the notification is provided responsive to the detected event; and
“The items 180 can include substantially any type of information that may be directed to a user such as email, phone messages, instant messages, calendar alerts or alerts in general, tasks from other applications and so forth.” Horvitz-385 ¶ 29.
The Examiner respectfully submits that the types of items 180 Horvitz-385 describes—e.g., email, phone messages, instant messages—are all highly suggestive of notifications that call for a response that causes the device to perform operations (e.g., answering a telephone call), and thus, Horvitz-385 at least suggests “in response to a user response to the notification, wherein the user response includes the required user interaction, performing one or more device operations to improve the functionality of the portable electronic device.” Nevertheless, Horvitz-385 does not expressly describe the same with the level of detail necessary for a finding of anticipation.
The June 2024 Admitted Prior Art, however, teaches that the following facts were already known prior to the claimed invention:
Admission (1) “[O]ne or ordinary skill in the art would know that software upgrades to portable electronic devices may require user decisions and/or approval to proceed.” (June 2024 Admitted Prior Art page 10).
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.” (June 2024 Admitted Prior Art page 10).
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 portable electronic device.” (June 2024 Admitted Prior Art page 10).
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.” (June 2024 Admitted Prior Art page 10).
The above four admissions of what “one of ordinary skill in the art would know” prior to the invention therefore show that the following elements of the claimed invention were already known prior to the claimed invention:
detecting an event that requires user interaction with the electronic device and, when performed, improves reliability or availability of the electronic device, or updates software of the electronic device, wherein the detection of the indication comprises an attended event in the electronic device, the attended event being one that cannot be performed without user interaction;
Admission (1) provides a finding that a portable electronic device “may require user decisions and/or approval to proceed with an update,” wherein an “update”—according to Admission (3)—is something that improves the functionality of the portable electronic device. Putting it together, the Applicant admits that, prior to the claimed invention, it was known that a user’s decision or approval was necessary to proceed with an operation that improves functionality of the portable electronic device.
in response to a user response to the notification, wherein the user response includes the user interaction: the availability or reliability of the electronic device is improved, or the electronic device performs the software update.
Admission (2) provides a finding that a device will perform a software upgrade in response to “the required user interaction,” and Admission (4) provides a finding that the software upgrade involves performing one or more device operations to improve the functionality of the portable electronic device, by fixing bugs and adding features to the software on the device.
It has been held that a claim is obvious when “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 Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007)). In this case, the factual findings to support such a conclusion are as follows:
(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 above, where each claim element is mapped to a respective element described in the prior art.
(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 includes (i) Horvitz-385’s disclosure that the items 180 within interrupts 170 can include “alerts in general” and “tasks from other applications,” Horvitz-385 ¶ 29, and (ii) at least Admissions (1)–(2), which describe the task of updating an application as requiring a solicitation of the user as something known to those of ordinary skill in the art. In other words, the claimed invention involves nothing more than substituting or supplementing the known interrupts 170 with solicitations that, according to the Applicant, “one or ordinary skill in the art would know.”
(3) One of ordinary skill in the art would have recognized that the results of the combination were predictable, because Horvitz-385 explains how to process interrupts 170, while the Admitted Prior Art explains what those of ordinary skill in the art knew to be the behavior of software updates.
Therefore, in view of the above findings, 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 the known system in Horvitz-385 with the known procedures for executing software updates admitted by the Applicant.
Claim 30
Horvitz-385 and June 2024 Admitted Prior Art teach the system of claim 29, wherein the operations further include:
determining that the detected change in the one or more user characteristics corresponds to an activity from a predetermined set of activities;
“In accordance with one aspect, states of interruption can be defined as high, medium, and low cost, respectively.” Horvitz-385 ¶ 28.
wherein providing the notification to invite the user interaction in the synchronized manner comprises providing the notification based on a result of the determining.
A “bounded deferral time can be determined by analyzing cost of delaying receipt of information to the user together with cost of interrupting the user.” Horvitz-385 ¶ 29. Thus, where the cost of interrupting the user is zero (because the user is free), there will be no deferral time for the message, but in a case where the user is busy, “the deferral component 160 can determine that the user should not be interrupted until the user transitions to a lower state.” Horvitz-385 ¶ 39.
Claim 32
Horvitz-385 and June 2024 Admitted Prior Art teach the system of claim 30,
wherein the set of activities includes a user-specified activity and one or more additional activities that are different than the user-specified activity.
“Referring to FIG. 7, an analyzer 700 for automatically deferring items is illustrated. The analyzer 700 can consider information or data from a plurality of sources or inputs 710 when determining user states 720 in which to optimally deliver respective items. These sources 710 can include data or inputs from one or more application sessions, considerations of the user’s attentional load, the user’s status (explicitly or implicitly determined) (e.g., I am busy, or reading email), and can include inputs, preferences or threshold settings for specifying/detecting when notifications or alerts should be provided.” Horvitz-385 ¶ 45.
As understood by the Examiner, the claimed “user-specified activity” corresponds to one of Horvitz-385’s sources 710 of the user “explicitly” providing his or her “user status,” while the claimed “additional activities” corresponds to all of the other activities mentioned above.
Claim 34
Horvitz-385 and June 2024 Admitted Prior Art teach the system of claim 29,
wherein the event comprises an automatically-triggered event.
“In more detail, a deferral component 160 processes interrupts 170 to the user and determines a bounded deferral time in which to direct items 180 to the user in accordance with the determined states 150. The items 180 can include substantially any type of information that may be directed to a user such as email, phone messages, instant messages, calendar alerts or alerts in general, tasks from other applications and so forth.” Horvitz-385 ¶ 29.
Claim 36
Horvitz-385 and June 2024 Admitted Prior Art teach the system of claim 29, wherein the providing the notification to invite the user interaction in the synchronized manner includes:
providing a type of notification selected from a plurality of different types of notifications based on the detected change in the one or more user characteristics; 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.
In a case where the user is busy, “the deferral component 160 can determine that the user should not be interrupted until the user transitions to a lower state.” Horvitz-385 ¶ 39.
Claim 38
Horvitz-385 and June 2024 Admitted Prior Art teach the system of claim 29,
wherein a user characteristic of the plurality of one or more user characteristics is obtained by accessing an electronic calendar.
“The models 140 can be constructed and/or trained from the log 110 that collects or aggregates data from a plurality of different data sources. Such sources can include . . . [an] electronic calendar.” Horviz ¶ 31.
Ⅲ. Horvitz-385 and Gielow teach claims 3 and 31
Claims 3 and 31 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Horvitz-385 and June 2024 Admitted Prior Art as applied to claims 2 and 30 above, and further in view of U.S. Patent Application Publication No. 2005/0188406 A1 (“Gielow”).
Claim 3
Horvitz-385 teaches the system of claim 2, but does not appear to explicitly disclose whether or not the predetermined set of activities includes one or more activities conducive to downloading data.
Gielow, however, teaches a system that synchronizes events with user preferences, wherein a change in user preferences corresponds to a predetermined set of activities,
wherein the predetermined set of activities includes one or more activities conducive to downloading data.
“A user of the wireless communication device 104 or a service provider may wish to avoid any downloading of media content to the communication device when the device is roaming. If the device 104 is or will be roaming, then the Media GW 410 should avoid downloading any media content; if the device 104 is not or will not be roaming, then the Media GW should permit downloading of media content.” Gielow ¶ 47.
It would have been obvious to one of ordinary skill in the art at the time of the claimed invention to add Gielow’s roaming detection to the set of activities that Horvitz-385 is capable of detecting, thereby allowing Horvitz-385’s telephone to defer downloading content when roaming. One would have been motivated to combine Gielow with Horvitz-385 because “[b]y preventing downloads during roaming, the processing capacity and power source level of the wireless communication device 104 may be preserved.” Gielow ¶ 47.
Claim 31
Claim 31 recites the same additional limitations as claim 3, and is therefore rejected according to the same additional findings and rationale as provided above for claim 3, taken in conjunction with the findings and rationale from the rejection of claim 29 and 30 earlier.
Ⅳ. Lee, Horvitz-385, and Gielow teach claims 3 and 31
Claims 3 and 31 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Lee and Horvitz-385 as applied to claims 2 and 30 above, and further in view of U.S. Patent Application Publication No. 2005/0188406 A1 (“Gielow”).
Claim 3
Lee and Horvitz-385 teach the system of claim 2, but do not appear to explicitly disclose whether or not the predetermined set of activities includes one or more activities conducive to downloading data.
Gielow, however, teaches a system that synchronizes events with user preferences, wherein a change in user preferences corresponds to a predetermined set of activities,
wherein the predetermined set of activities includes one or more activities conducive to downloading data.
“A user of the wireless communication device 104 or a service provider may wish to avoid any downloading of media content to the communication device when the device is roaming. If the device 104 is or will be roaming, then the Media GW 410 should avoid downloading any media content; if the device 104 is not or will not be roaming, then the Media GW should permit downloading of media content.” Gielow ¶ 47.
It would have been obvious to one of ordinary skill in the art at the time of the claimed invention to add Gielow’s roaming detection to the set of activities that Lee and Horvitz-385 are capable of detecting, thereby allowing Lee and Horvitz-385’s devices to defer downloading content when roaming. One would have been motivated to combine Gielow with Horvitz-385 because “[b]y preventing downloads during roaming, the processing capacity and power source level of the wireless communication device 104 may be preserved.” Gielow ¶ 47.
Claim 31
Claim 31 recites the same additional limitations as claim 3, and is therefore rejected according to the same additional findings and rationale as provided above for claim 3, taken in conjunction with the findings and rationale from the rejection of claim 29 and 30 earlier.
V. Horvitz-385 and Horvitz-491 teach claims 5 and 33.
Claims 5 and 33 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Horvitz-385 and June 2024 Admitted Prior Art as applied to claim 2 above, and further in view of U.S. Patent Application Publication No. 2003/0014491 A1 (“Horzitz-491”).
Claim 5
Horvitz-385 teaches the system of claim 4, but does not specify whether the one or more additional user-specified activities include an activity selected from a group comprising 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 activity from a predetermined set of activities,
wherein the one or more additional user-specified activities include an activity selected from a group consisting of: 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 Horvitz-385’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 Horvitz-385 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.
Claim 33
Claim 33 recites the same additional limitations as claim 5, and is therefore rejected according to the same additional findings and rationale as provided above for claim 5, taken in conjunction with the findings and rationale from the rejection of claim 29 earlier.
Ⅵ. Lee, Horvitz-385, and Horvitz-491 teach claims 5 and 33.
Claims 5 and 33 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Lee and Horvitz-385 as applied to claim 2 above, and further in view of U.S. Patent Application Publication No. 2003/0014491 A1 (“Horzitz-491”).
Claim 5
Lee and Horvitz-385 teach the system of claim 4, but do not specify whether the one or more additional user-specified activities include an activity selected from a group comprising 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 activity from a predetermined set of activities,
wherein the one or more additional user-specified activities include an activity selected from a group consisting of: 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 and Horvitz-385’s lists 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 and Horvitz-385 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.
Claim 33
Claim 33 recites the same additional limitations as claim 5, and is therefore rejected according to the same additional findings and rationale as provided above for claim 5, taken in conjunction with the findings and rationale from the rejection of claim 29 earlier.
VII. Lee, Horvitz-385, and Palaniappan teach claims 7 and 35.
Claims 7 and 35 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Lee and Horvitz as applied to claims 6 and 34 above, and further in view of U.S. Patent No. 6,711,557 B1 (“Palaniappan”).
Claim 7
Lee and Horvitz-385 teach the system of claim 6, but neither reference explicitly mentions that their respective versions of the claimed “automatically-triggered event” include an operating system update.
Palaniappan, however, teaches a system that, much like the other references and the claimed invention, finds an appropriate time to notify a user that interaction is required to complete an automatically-triggered event. See Palaniappan col. 4 ll. 27–51.
Palaniappan further teaches:
the automatically-triggered event comprises an operating system update.
Among the types of software updates that Palaniappan teaches, some include updates that are to 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.
It would have been obvious to a person of ordinary skill in the art at the time of the claimed invention to utilize the respective notification systems/techniques discussed in Lee and Horvitz-385 to specifically handle operating system updates, as taught by Palaniappan. One would have been motivated to so utilize Lee and Horvitz-385’s notification systems with Palaniappan’s notifications for software updates, including operating systems, because “providing updates on traditional media” involves a “significant cost of manufacturing and distributing the updates to users.” Palaniappan col. 1 ll. 28–30.
Claim 35
Lee and Horvitz-385 teach the system of claim 34, but neither reference explicitly mentions that their respective versions of the claimed “automatically-triggered event” include an operating system update.
Palaniappan, however, teaches a system that, much like the other references and the claimed invention, finds an appropriate time to notify a user that interaction is required to complete an automatically-triggered event. See Palaniappan col. 4 ll. 27–51.
Palaniappan further teaches:
the automatically-triggered event comprises an operating system update.
Among the types of software updates that Palaniappan teaches, some include updates that are to 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.
It would have been obvious to a person of ordinary skill in the art at the time of the claimed invention to utilize the respective notification systems/techniques discussed in Lee and Horvitz-385 to specifically handle operating system updates, as taught by Palaniappan. One would have been motivated to so utilize Lee and Horvitz-385’s notification systems with Palaniappan’s notifications for software updates, including operating systems, because “providing updates on traditional media” involves a “significant cost of manufacturing and distributing the updates to users.” Palaniappan col. 1 ll. 28–30.
VIII. Horvitz-385, Admitted Prior Art, and Pallapian
Claims 7 and 35 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Horvitz-385 and Admitted Prior Art as applied to claims 6 and 34 above, and further in view of U.S. Patent No. 6,711,557 B1 (“Palaniappan”).
Claim 7
Horvitz-385 and June 2024 Admitted Prior Art teach the system of claim 6,
wherein the automatically-triggered event comprises an
Per admissions (1) and (2) (see rejection of claim 1), “one or ordinary skill in the art would know that software upgrades to portable electronic devices may require user decisions and/or approval to proceed,” and “[o]ne or ordinary skill in the art would also know that, the software upgrade may not proceed until the required user interaction occurs.” (June 2024 Admitted Prior Art page 10).
Neither reference explicitly discloses that the software updates are operating system updates.
Palaniappan, however, teaches a system that, much like the other references and the claimed invention, finds an appropriate time to notify a user that interaction is required to complete an automatically-triggered event. See Palaniappan col. 4 ll. 27–51.
Palaniappan further teaches:
the automatically-triggered event comprises an operating system update.
Among the types of software updates that Palaniappan teaches, some include updates that are to 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.
It would have been obvious to a person of ordinary skill in the art at the time of the claimed invention to utilize the respective notification systems/techniques discussed in Lee and Horvitz-385 to specifically handle operating system updates, as taught by Palaniappan. One would have been motivated to so utilize Lee and Horvitz-385’s notification systems with Palaniappan’s notifications for software updates, including operating systems, because “providing updates on traditional media” involves a “significant cost of manufacturing and distributing the updates to users.” Palaniappan col. 1 ll. 28–30.
Claim 35
Horvitz-385 and June 2024 Admitted Prior Art teach the system of claim 34,
wherein the automatically-triggered event comprises an
Per admissions (1) and (2) (see rejection of claim 1), “one or ordinary skill in the art would know that software upgrades to portable electronic devices may require user decisions and/or approval to proceed,” and “[o]ne or ordinary skill in the art would also know that, the software upgrade may not proceed until the required user interaction occurs.” (June 2024 Admitted Prior Art page 10).
Neither reference explicitly discloses that the software updates are operating system updates.
Palaniappan, however, teaches a system that, much like the other references and the claimed invention, finds an appropriate time to notify a user that interaction is required to complete an automatically-triggered event. See Palaniappan col. 4 ll. 27–51.
Palaniappan further teaches:
the automatically-triggered event comprises an operating system update.
Among the types of software updates that Palaniappan teaches, some include updates that are to 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.
It would have been obvious to a person of ordinary skill in the art at the time of the claimed invention to utilize the respective notification systems/techniques discussed in Lee and Horvitz-385 to specifically handle operating system updates, as taught by Palaniappan. One would have been motivated to so utilize Lee and Horvitz-385’s notification systems with Palaniappan’s notifications for software updates, including operating systems, because “providing updates on traditional media” involves a “significant cost of manufacturing and distributing the updates to users.” Palaniappan col. 1 ll. 28–30.
IX. Horvitz-385, Admitted Prior Art, and Kaminsky teach claims 9, 24, and 37.
Claims 9, 24, and 37 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Horvitz-385 and June 2024 Admitted Prior Art in view of U.S. Patent No. 7,496,352 B2 (“Kaminsky”).
Claim 9
Horvitz-385 teaches the system of claim 8, but does not explicitly disclose the two alternatives recited in claim 9.
Kaminsky, however, teaches a system configured to perform operations including:
providing one of an audible notification and a visual notification to invite the user interaction in the case that detected change in the one or more user characteristics 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 user interaction in the case that the detected change in the 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 Horvitz-385’s system 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 Horvitz-385 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.
Claim 24
Claim 24 recites the same method that the system of claim 9 performs, and is therefore rejected according to the same findings and rationale as provided above for claim 9.
Claim 37
Claim 37 recites the same additional limitations as claim 9, and is therefore rejected according to the same additional findings and rationale as provided above for claim 9, taken in conjunction with the findings and rationale from the rejection of claim 36 earlier.
X. Lee, Horvitz-385, and Kaminsky teach claims 9, 24, and 37.
Claims 9, 24, and 37 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Lee and Horvitz-385 in view of U.S. Patent No. 7,496,352 B2 (“Kaminsky”).
Claim 9
Lee and Horvitz-385 teach the system of claim 8, but do not explicitly disclose the two alternatives recited in claim 9.
Kaminsky, however, teaches a system configured to perform operations including:
providing one of an audible notification and a visual notification to invite the user interaction in the case that detected change in the one or more user characteristics 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 user interaction in the case that the detected change in the 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 and Horvitz-385’s systems 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 and Horvitz-385 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.
Claim 24
Claim 24 recites the same method that the system of claim 9 performs, and is therefore rejected according to the same findings and rationale as provided above for claim 9.
Claim 37
Claim 37 recites the same additional limitations as claim 9, and is therefore rejected according to the same additional findings and rationale as provided above for claim 9, taken in conjunction with the findings and rationale from the rejection of claim 36 earlier.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 C.F.R. § 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 C.F.R. § 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 C.F.R. § 1.111(a). For a reply to final Office action, see 37 C.F.R. § 1.113(c). A request for reconsideration while not provided for in 37 C.F.R. § 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
The provisional rejection of Claims 1, 21, and 29, on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 11/752,483 (“Reference Claim 1”) in view of Horvitz-385, is hereby held in abeyance at the Applicant’s request.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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Justin R. Blaufeld
Primary Examiner
Art Unit 2151
/Justin R. Blaufeld/Primary Examiner, Art Unit 2151
1 In the event this is found to be a typographical error, the Examiner’s response to the Applicant’s claim 29 arguments shall be read as applying to all of the claims, as the Applicant is arguing a limitation in claim 29 that is present in the other independent claims as well.
2 See Amendment and Reply 9–10 (September 12, 2025)
3 See Amendment and Reply 9–10 (September 12, 2025)
4 Lee discusses both of these findings as part of process 300 in FIG. 3, rather than process 200 of FIG. 2, but only because “process 300 is . . . performed by block 210 of power manager process 200 illustrated in FIG. 2.” Lee ¶ 38.
5 See, e.g., cell phone, Merriam-Webster’s Online Dictionary, <https://www.merriam-webster.com/dictionary/cell%20phone> and cell phone, Dictionary.com, <https://www.dictionary.com/browse/cell-phone>
6 Lee discusses both of these findings as part of process 300 in FIG. 3, rather than process 200 of FIG. 2, but only because “process 300 is . . . performed by block 210 of power manager process 200 illustrated in FIG. 2.” Lee ¶ 38.
7 See, e.g., cell phone, Merriam-Webster’s Online Dictionary, <https://www.merriam-webster.com/dictionary/cell%20phone> and cell phone, Dictionary.com, <https://www.dictionary.com/browse/cell-phone>