Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/23/25 has been entered.
Claim Rejections - 35 USC §101
1. 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.
2. Claims 1, 3, 5-10, 12-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the 2019 PEG, to determine the patent-eligibility of an application, a two- part analysis has to be conducted.
Part 1: it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process - one of the statutory categories.
Under Step 2A (Prong 1), using claim 1 as the representative claim, it is determined that apart from generic hardware and extra-solution activities discussed in Step 2A, Prong 2 below, the claim as a whole recites a mental process. For instance, the claim language “obtaining a phone number of said user’s mobile device…; utilizing said identifying information about said user to prefill a form” are steps that can be performed in the human mind. And any actions that can be performed in the human mind fall into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), The examiner further contends that the claim recites a combination of additional elements including “receiving an electronic data transmission wirelessly broadcast…; providing said phone number to a mobile carrier determiner application…; transmitting…said phone number to said mobile carrier service; receiving…identifying about a user of said user’s mobile device…; transmitting at least one message to said user’s mobile device; “mobile device,” as recited in claim 1; “memory” and “one or more processors,” as recited in claim 7 and “computer system,” as recited in claim 12.” These additional elements do not integrate the abstract idea into a practical application because they simply recite the steps of inputting data, processing data, and transmitting data using a generic computer system. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the mobile device, memory and one or more processors are caused to perform these steps. The mobile device, memory and one or more processors, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitations can be reasonably characterized as reciting a patent-ineligible mental process, insignificant extra-solution activities. For instance, the steps of “receiving ng an electronic data transmission wirelessly broadcast…; providing said phone number to a mobile carrier determiner application…; transmitting…said phone number to said mobile carrier service; receiving…identifying about a user of said user’s mobile device…; transmitting at least one message to said user’s mobile device,” when considered as a whole, are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Lastly, the limitation “said at least one message comprising: said pre-filled form; said mobile carrier determiner application comprising: a hook into a mobile carrier service creating an automatic real-time exchange of data between said carrier determiner application and said mobile carrier service; wherein said identifying information includes automatically generated automatic number identification automatic location identification” are merely recited to further narrow the scope of the abstract idea. Thus, it is determined that the claim is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claims 1, 7 and 12 are the generically recited “mobile device,” “memory” and “one or more processors” and “computer system.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. The specification substantiates this, for instance at paras 0035. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The examiner contends that the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981).” A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OJP Techs., Inc. v. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 1 and are rejected using the same rationale as in claim 1 above. More specifically, dependent claim 5, 6 recite additional elements, but these additional elements are insignificant extra-solution activities, See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Also see Electric power, 830 F.3d at 1354-56. Further, claims 3-4, 8-9, 14-15 are nothing but the automation of mental tasks. See Benson, Bancorp and Cyberphone. Also see Electric Power, 830 F.3d at 1354 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”). Lastly, claims 10, 11 and 13 do not recite additional elements but they are merely recited to further narrow the scope of the abstract idea.
Response to Arguments
Applicant's arguments filed on 12/23/25 have been fully considered but they are not persuasive.
In response to applicant’s argument that the claim as currently amended is not directed to a mental process, the examiner disagrees. The examiner contends that the claim as a whole recites a mental process. The claim as a whole recites a mental process. For instance, the claim language “obtaining a phone number of said user’s mobile device…; utilizing said identifying information about said user to prefill a form” are steps that can be performed in the human mind. And any actions that can be performed in the human mind fall into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
The examiner further contends that the claim recites a combination of additional elements including “receiving an electronic data transmission wirelessly broadcast…; providing said phone number to a mobile carrier determiner application…; transmitting…said phone number to said mobile carrier service; receiving…identifying about a user of said user’s mobile device…; transmitting at least one message to said user’s mobile device; “mobile device,” as recited in claim 1; “memory” and “one or more processors,” as recited in claim 7 and “computer system,” as recited in claim 12.” These additional elements do not integrate the abstract idea into a practical application because they simply recite the steps of inputting data, processing data, and transmitting data using a generic computer system. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the mobile device, memory and one or more processors are caused to perform these steps. The mobile device, memory and one or more processors, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitations can be reasonably characterized as reciting a patent-ineligible mental process, insignificant extra-solution activities. For instance, the steps of “receiving ng an electronic data transmission wirelessly broadcast…; providing said phone number to a mobile carrier determiner application…; transmitting…said phone number to said mobile carrier service; receiving…identifying about a user of said user’s mobile device…; transmitting at least one message to said user’s mobile device,” when considered as a whole, are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Lastly, the limitation “said at least one message comprising: said pre-filled form; said mobile carrier determiner application comprising: a hook into a mobile carrier service creating an automatic real-time exchange of data between said carrier determiner application and said mobile carrier service; wherein said identifying information includes automatically generated automatic number identification automatic location identification” are merely recited to further narrow the scope of the abstract idea. Thus, it is determined that the claim is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3695