DETAILED ACTION
Response to Appeal Brief
1. In view of the arguments set forth in the appeal brief filed on 06/02/26, PROSECUTION IS HEREBY REOPENED. New grounds of rejection based on the previously applied Brody et al reference are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/REGIS J BETSCH/ SPE, Art Unit 2836
Claim Rejections - 35 USC § 112(a)
2. Claim 21 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim 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, at the time the application was filed, had possession of the claimed invention.
As indicated in the previous office action, the limitation recited on the last three lines of claim 21, i.e., when the location information is associated with the private location, sending the data payload comprising the location information to the service provider free of private location information associated with the private location, as noted above this limitation is not supported by the originally filed specification, drawings or claims and therefore cannot be relied upon to distinguish over Brody et al when modified using the location tracking disabling taught by MacGougan et al or Finlow-Bates et al (note that claim 21, when considered without the unsupported limitation recited on the last three lines thereof, is anticipated by Brody et al under 35 USC 102(a)(2) because the filing date of this reference is earlier than applicant's effective filing date of 01/30/21). In arguing against this rejection based on non-enablement/new matter, applicant points to paragraph [0015] of the originally filed specification as supporting this limitation, but this paragraph merely discloses that the user device makes location sharing decisions using several different criteria, and gives examples of such criteria, and the last two lines of this paragraph also indicate that the data sent "may not include private location information". However, there is no support for when the user device is associated with the private location the data payload is sent to the service provider comprising the location information free of private location information associated with the private location." Applicant argues, on page 18, lines 19-20 of the brief, that "claim 21 sets up an information-sharing mechanism," but this argument is not persuasive because claim 21 does not recite "any information-sharing mechanism", nor is any "information-sharing mechanism" supported anywhere in the originally filed specification, drawings or claims. Applicant further argues, on page 18, lines21-23 of the brief, that "the data payload is sanitized so that the data payload is sent to the service provider with location information but without private location information associated with the private location," but this argument is not persuasive because claim 21 does not recite anything regarding data payload sanitizing, nor is such data payload sanitizing supported in the originally filed specification, drawings or claims. Applicant should note that claim 21, on the last three lines thereof, requires that the location information received at the electronic user device is (1) received when the electronic user device is associated with the private location, (2) the data payload comprising the received location information is sent to the service provider and such data payload comprises the received location information, and (3) the location information is free of private location information associated with the private location. There is no embodiment disclosed anywhere in the originally filed specification, drawings and claims which supports these three features recited on the last three lines of claim 21, and therefore the non-enablement/new matter rejection of claim 21 is still deemed to be proper and is therefore maintained by the examiner.
Claim Rejections - 35 USC § 103
3. Claims 1, 4, 7-9, 12, 14, 16, 17, 20-26 and 28-31 are rejected under 35 U.S.C. 103 as being unpatentable over Brody et al (U.S. Patent No. 10,952,013) in view of either MacGougan et al (USPAP 2013/0288718) or Finlow-Bates et al (USPAP 2013/0176869).
As to claim 1, Brody et al discloses
a computer-implemented method (see column 3, lines 39-44, of Brody et al) implemented at an electronic user device (the claimed electronic user device" reads on the mobile computing device referred to on line 60 of Brody et al's column 2), the method comprising:
receiving location information associated with a current location of the electronic user device (note lines 2-4 of Brody et al's abstract);
determining whether the location information meets at least one criterion of a plurality of location criteria, wherein a first criterion of the plurality of location criteria comprises determining whether the location information is associated with a sensitive location (note the paragraph bridging columns 2-3 of Brody et al where this reference discloses determining when the mobile computing device is at a certain location or within a certain proximity to the location, and specifically indicates that the location can be the user's home, note that the user’s home can be interpreted as a sensitive location);
when the location information is not associated with the sensitive location, sending a data payload comprising the location information (again note the paragraph bridging columns 2-3 of Brody et al where this reference discloses sending location information to a service provider as long as the mobile computing device is not detected to be located at the user's home, i.e., this is the inherent operation of Brody et al when the blocking mode is toggled off, and also note column 6, line 60 through column 7, line 3 where Brody et al teaches that when the electronic user device is in the sensitive location the blocking mode prevents the location thereof from being shared with social messaging system 130, location locking system 160, and/or data servers 132, and when the electronic user device is not in such a sensitive location, location sharing will be performed--this disclosure by Brody et al clearly reads on the claimed limitations of sending a data payload comprising the location information when the location information is not associated with the sensitive location); and
when the location information is associated with the sensitive location:
refraining from sending the data payload comprising the location information to the service provider (note that in Brody et al, when the user and his/her electronic user device are at home, i.e., in the claimed sensitive location, the user of the electronic user device desires to keep his/her location private and therefore the user device will not send the data payload comprising the user's current location information to the service provider); and
refraining from collecting the location information on the electronic user device when the location information is associated with the sensitive location (although not disclosed by Brody et al, refraining from collecting the location information on the electronic user device when the location information is associated with the sensitive location would have been obvious to one of ordinary skill in the art, the reason being that such was old and well-known in the art before the effective filing date of applicant's invention, note what is indicated in the abstract and paragraphs [0015], [0027] and [0055] of MacGougan et al, and also what is indicated in paragraph [0023] of Finlow-Bates et al, i.e., each of these two secondary references discloses disabling the location tracking feature of a mobile device if the mobile device is detected to be not moving or moving very insignificantly, and one of ordinary skill in the art would have easily recognized that such disabling of the location tracking feature could obviously be used in Brody et al because when the electronic user device in Brody et al is at the above-noted sensitive location, it will not be moving or will be moving very insignificantly and, moreover, disabling the location tracking at the user device in Brody et al would provide the benefit taught of saving battery power, as taught by both MacGougan et al and Finlow-Bates et al).
As to claim 4, although not disclosed by Brody et al, it would have been obvious to one of ordinary skill in the art to send or not send location information to the service provider based on the age of the current location being less than or equal to a threshold value, the reason being that, as noted in the office action mailed on 08/12/24, such was also old and well-known in the art before the effective filing date of applicant's invention.
As to claim 7, note column 2, lines 65-66, of Brody et al where this reference discloses detecting the location of the mobile computing device to determine if it is at the user's home or within a certain proximity of the user's home.
As to claim 8, the limitations of this claim are rejected using the same analysis as set forth above with regard to claim 1 (official notice is taken by the examiner that it was old and well-known in the art to use computer-readable storage devices comprising computer-executable instructions that, when executed by a processor, cause the processor to perform predetermined operations, and any person having ordinary skill in the art would have easily recognized that the predetermined operations in Brody et al could obviously be included in a computer-readable storage device).
As to claim 9, as indicated in the office action mailed on 08/12/24, causing the processor of Brody et al to receive a location index from a service provider, and receiving such a location index based on the electronic user device being in a charging state or being connected to a network was old and well-known in the art before the effective filing date of applicant's invention, official notice being taken by the examiner. As to the limitation that the location index is received from a service provider index when the electronic user device is in a charging state or the electronic user device is connected to a network, note column 3, lines 15-16, of Brody et al which indicates that location sharing is blocked when the electronic user device is in a location where it is frequently charged, i.e., the location where the electronic user device is frequently charged is detected as being the sensitive location.
As to claim 12, to the extent not disclosed by Brody et al, it would have been obvious to one of ordinary skill in the art that the claimed geographic region can be read on the entire area around the mobile computing device in Brody et al, i.e., the area within a predetermined radius away from the mobile computing device, and the claimed plurality of sub-regions can be read on any designated or detected areas of interest within such geographic region, note that one or more of these sub-regions will inherently or obviously be identified using identifiers (it was old and well-known in the art before the effective filing data of applicant's invention to use identifier information for identifying sub-regions within a geographic region).
As to claim 14, note that in Brody et al, the above-noted sub-region identifiers will inherently or obviously comprise points of interest or areas of interest.
As to claim 16, this claim is rejected using the same analysis as set forth above with regard to claim 1 (the claimed memory and processor is disclosed in Brody et al at column 4, line 6 of this reference).
As to claim 17, official notice is taken by the examiner that location information in a wireless communication and location system such as that disclosed by Brody et al typically comprises latitude and longitude coordinates.
As to claim 20, the limitation of detecting a second criterion, to the extent not disclosed by Brody et al, would have been obvious to one of ordinary skill in the art, the reason being that it was old and well-known in the art to send or refrain from sending a data payload to a service provider based on additional criteria besides the above-noted criterion regarding whether or not the user device is located in a sensitive location, i.e., sending or refraining from sending a data payload to the service provider based on a location accuracy threshold (as taught by Adachi et al, see paragraph three of the office action mailed on 08/12/24) or, alternatively, based on whether or not the location information meets an upload criterion which is a power mode criterion, a battery charge strength criterion, or a non-public user location criterion (as taught by Borras et al, see paragraph four of the office action mailed on 08/12/24).
As to claim 21, this claim is rejected using the same analysis as set forth above with regard to claim 1 (note that the "private location" can obviously be read on the "sensitive location" of Brody et al). As to the new limitation in claim 21 regarding sending the data payload comprising the location information to the service provider free of private location information associated with the private location, as noted above this new limitation is not supported by the originally filed specification, drawings and claims. Applicant indicates in the remarks that support for this amendment can be found in paragraph [0015] of the filed specification, but such is incorrect, i.e., this paragraph merely describes using different location criteria in order to decide whether or not to share location information of the user equipment. Paragraph [0015] does not, however, support the new limitation that when the location information is associated with the private location, sending the data payload comprising the location information to the service provider free of private location information associated with the private location, and therefore this limitation in claim 21 cannot be relied upon to distinguish over Brody et al (note that claim 21 will actually be anticipated by Brody et al for the case where the limitations set forth on the last three lines of claim 21 are not given any patentable weight, because claim 21 does not include the limitation regarding refraining from collecting the location information on the electronic user device when the location information is associated with the sensitive location.
As to claim 22, this claim is rejected using the same analysis as set forth above in the rejection of claim 12.
As to claims 23 and 24, the limitations of these two claims are rejected using the same analysis as set forth above with regard to claim 20, and as to the new limitations in claim 24 regarding the sending of the data payload or refraining from sending the data payload and refraining from collecting the location information when the location information is not associated with the sensitive location based at least in part on the upload criterion, such would have been obvious to one of ordinary skill in the art for the same reason noted above with regard to claim 20, i.e., it was old and well-known in the art before the effective filing date of applicant's invention to send or refrain from sending a data payload to a service provider based on additional criteria, e.g., based on a location accuracy threshold criterion, based on whether or not the location information meets an upload criterion which is a power mode criterion, based on a battery charge strength criterion, based on a non-public user location criterion, etc, of which fact official notice is taken by the examiner.
As to claim 25, as noted above, the sensitive location in Brody et al is the user’s home.
As to claim 26, as indicated in the previous office actions, the location information including horizontal accuracy, vertical accuracy, altitude and a timestamp would have been obvious to one of ordinary skill in the art, the reason being that it was old and well-known in the art before the effective filing date of applicant's invention that location information sent from an electronic user device to a service provider typically includes horizontal and vertical accuracy information, as well as altitude and timestamp information, official notice again being taken by the examiner.
As to claim 28, note that social messaging system 130 is shown in figure 1 of Brody et al as including a plurality of servers (which inherently include computers), i.e., note the three servers shown in the upper right-hand corner of social messaging system 30, and also note the illustration by Brody et al in figure 1 of database server(s) 132 which will also inherently include one or more computers.
As to claim 29, official notice is taken by the examiner that location determination software and hardware within an electronic user device typically receives geographic data from a mapping service that maintains geographic data, and it will be either inherent or obvious that any sensitive locations determined in Brody et al will be incorporated into such geographic data after it is detected, and it will also be either inherent or obvious that the current location of the electronic user device in Brody et al will be compared with such geographic data in order to determine when it is in either a sensitive location or a non-sensitive location, i.e., so that the system will know when to share the location of the electronic user device and when not to share the location of the electronic user device.
As to claim 30, it also would have been obvious to one of ordinary skill in the art that there can be just a single sensitive location or, alternatively, a plurality of such sensitive locations, e.g., for the situation where the individual carrying the electronic user device has more than one home, or desires privacy when in the home or homes of the user's relatives.
As to claim 31, as noted above in the rejection of claim 1, to the extent not disclosed by Brody et al, refraining from collecting the location information when the location information is associated with the sensitive location would have been obvious to one of ordinary skill in the art, from either MacGougan et al or Finlow-Bates et al. Regarding the further limitation in claim 31 of refraining from collecting location information of the plurality of sensitive locations when the location information is associated with any of the plurality of sensitive locations, as noted above in the rejection of claim 30, it also would have been obvious to one of ordinary skill in the art that there can be just a single sensitive location or, alternatively, a plurality of such sensitive locations, e.g., for the situation where the individual carrying the electronic user device has more than one home, or the user desires privacy when in the home or homes of the user's relatives.
Response to Arguments
4. Applicant’s arguments with respect to claims 1, 4, 7-9, 12, 14, 16, 17, 20, 22-26 and 28-31 have been considered but are moot because in view of the new grounds of rejection based on Brody et al in view of either MacGougan et al or Finlow-Bates et al.
Applicant's arguments against the rejection of claim 21 under 35 USC 112(a) have been fully considered but they are not persuasive.
As noted above, the limitation recited on the last three lines of claim 21, i.e., when the location information is associated with the private location, sending the data payload comprising the location information to the service provider free of private location information associated with the private location, is not supported by the originally filed specification, drawings or claims. Applicant argues against this rejection by indicating that paragraph [0015] of the originally filed specification provides support for this limitation, but this is incorrect, i.e., paragraph [0015] merely discloses that the user device makes location sharing decisions using several different criteria, gives examples of such criteria, and indicates that the data payload “may not include” private location information. There is no support, however, for the limitation that when the user device is associated with the private location the data payload is sent to the service provider comprising the location information free of private location information associated with the private location. Applicant argues, on page 18, lines 19-20 of the brief, that "claim 21 sets up an information-sharing mechanism," but this argument is not persuasive because claim 21 does not recite any “information-sharing mechanism", nor is any "information-sharing mechanism" supported anywhere in the originally filed specification, drawings or claims. Applicant further argues, on page 18, lines21-23 of the brief, that "the data payload is sanitized so that the data payload is sent to the service provider with location information but without private location information associated with the private location," but this argument is similarly not persuasive because claim 21 does not recite anything regarding data payload sanitizing, nor is such data payload sanitizing supported in the originally filed specification, drawings or claims. Applicant should note that claim 21, on the last three lines thereof, requires that the location information received at the electronic user device is (1) received when the electronic user device is associated with the private location, (2) the data payload comprising the received location information is sent to the service provider and such data payload comprises the received location information, and (3) the location information is free of private location information associated with the private location. There is no embodiment disclosed anywhere in the originally filed specification, drawings and claims including these three features recited on the last three lines of claim 21, and therefore the non-enablement/new matter rejection of claim 21 is still deemed to be proper and is therefore maintained by the examiner.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH B WELLS whose telephone number is (571)272-1757. The examiner can normally be reached Monday-Friday, 8:30am-5pm.
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/KENNETH B WELLS/Primary Examiner, Art Unit 2836 June 30, 2026
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