DETAILED ACTION
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 .
Response to Amendments
This is a final office action in response to applicant's arguments and remarks filed on 10/22/2025.
Status of Rejections
All previous rejections are maintained.
Claims 6-11 and 14-27 are pending and under consideration for this Office Action.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 6-11 and 14-27 are rejected under 35 U.S.C. 101.
MPEP § 2106 describes the two-step analysis of judicial exceptions in claims. “Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception, and if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception. Together, these prongs represent the first part of the Alice/Mayo test, which determines whether a claim is directed to a judicial exception.” Step 2B determines whether additional elements in the claim contribute to an inventive concept.
Claim 6: The claimed invention is directed to a judicial exception without significantly more.
Step 2A Prong 1:
The limitation claiming “receive one or more first digitally encoded values…” is an insignificant extra solution activity and would not be considered an abstract idea (“The term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim”, see MPEP § 2106.05(g)).
The limitation claiming “initiate a first measurement routine…” includes mathematical scaling and calculations, according to the specification (see 302 and 322 on Figure 3A and [0029]). Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
The limitation claiming “respond to an upload signal by performing a data collection routine…” includes the evaluation of the measurement wake time which according to the specification can also include an evaluation (Yes or No). The data collection routine also includes an evaluation “receive from CPWMU?” (Yes or No) (see Fig 3A and [0028]). Evaluations are considered mental processes, which are abstract ideas (see MPEP § 2106.04(a)(2)III).
Therefore, the claim contains judicial exceptions and Prong 2 analysis is necessary.
Step 2A Prong 2:
In the first measurement routine, values are stored. This is similar to the alarm in Parker v. Flook and would be considered generally linking the abstract idea to the field of endeavor (“Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application”, See 2106.05(h)). For the data collection routine, there is transmission of encoded values to a requesting device. This is also similar to the alarm in Parker v. Flook. Therefore, the claim has not integrated the judicial exception is integrated into a practical application.
Step 2B:
The claim further claims a monitoring unit that has inputs, data storage, and a processor. These elements are well understood, routine and conventional across most arts at this point and therefore would not amount to significantly more.
Freeman et al (US 20140262823 A1) - see e.g. [0038].
Yunovich et al (US 20030189435 A1) – see e.g. Fig 1 and [0037].
Hilleary (US 20070035315 A1) - see e.g. [0069] and [0072]
Therefore, the claim is rejected for failing to satisfy the requirements of 35 USC 101.
Claim 19: The claimed invention is directed to a judicial exception without significantly more.
Step 2A Prong 1:
The limitation claiming “receiving one or more first digitally encoded values…” is an insignificant extra solution activity and would not be considered an abstract idea (“The term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim”, see MPEP § 2106.05(g)).
The limitation claiming “performing a first measurement routine…” includes mathematical scaling and calculations, according to the specification (see 302 and 322 on Figure 3A and [0029]). Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
The limitation claiming “performing a data collection routine…” includes the evaluation of the measurement wake time which according to the specification can also include an evaluation (Yes or No). The data collection routine also includes an evaluation “receive from CPWMU?” (Yes or No) (see Fig 3A and [0028]). Evaluations are considered mental processes, which are abstract ideas (see MPEP § 2106.04(a)(2)III).
Therefore, the claim contains a judicial exception and Prong 2 analysis is necessary.
Step 2A Prong 2:
In the first measurement routine, values are stored. This is similar to the alarm in Parker v. Flook and would be considered generally linking the abstract idea to the field of endeavor (“Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application”, See 2106.05(h)). For the data collection routine, there is transmission of encoded values to a requesting device. This is also similar to the alarm in Parker v. Flook. Therefore, the claim has not integrated the judicial exception is integrated into a practical application.
Step 2B:
The claim does not explicitly claim a monitoring unit that has data storage and a processor. However, even if they were claimed these elements are well understood, routine and conventional across most arts at this point and therefore would not amount to significantly more.
Freeman et al (US 20140262823 A1) - see e.g. [0038].
Yunovich et al (US 20030189435 A1)– see e.g. Fig 1 and [0037].
Hilleary (US 20070035315 A1) - see e.g. [0069] and [0072]
Therefore, the claim is rejected for failing to satisfy the requirements of 35 USC 101.
Any claim(s) dependent on the above claim(s) is/are rejected for its/their dependence.
Response to Arguments
Applicant's arguments filed 10/22/2025 have been fully considered but they are not persuasive.
On page(s) 8, the Applicant argues that the amended limitations claiming “initiate a first measurement routine” and “transmitting the first digitally encoded values to a request device” are operations that cannot be performed in the human mind and thus the claims are in compliance with 35 USC 101. This is not considered persuasive. Mental processes are just one of the groups that are considered abstract ideas. See MPEP § 2106.04(a). As explained in the rejection, the limitation of claiming “initiate a first measurement routine…” includes mathematical scaling and calculations and is considered to be the abstract idea group “mathematical concepts”. Transmitting the first digitally encoded values to a request device is considered to be an insignificant extra solution activity.
On page(s) 9, the Applicant argues that the limitations claiming “first digitally encoded values indicative of voltage levels during a period of time when a DC voltage applied to the first metallic structure is cycled on and off” and "wherein the first measurement routine is initiated independently of initiation of a period of time when a DC voltage applied to the first metallic structure is cycled on and off” provide meaningful limitations to any judicial exception and integrate any judicial exception into a practical application by improving computer capabilities. This is not considered persuasive. The highlighted claim limitations are part of the limitation claiming “initiate a first measurement routine”, which is an abstract idea that does not comply with 35 USC 101 as explained above. MPEP § 2106.05(a) II states “The courts have also found that improvements in technology beyond computer functionality may demonstrate patent eligibility…However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology…[T]he claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology”.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 PM. 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, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795
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