DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s 02/05/2026 Amendments/Arguments, which directly amended claims 21, 25, 33, 37; and traversed the rejections of the claims of the 11/05/205 Office Action are acknowledged.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 21-23, 25-35, and 37-44 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract ideas without significantly more. The claims recite the device and method, for performing positioning measurements that is accomplished by a generic computer. The claimed limitation encompasses a user manually determining positioning measurements and does not include additional element that are sufficient to amount to significantly more than the judicial exception. Thus, it does not integrate the abstract idea into a practical application.
An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217—18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75—77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices {Alice, 573 U.S. at 219—20, Bilski, 561 U.S. at 611); mathematical formulas {Parker v. Flook, 437 U.S. 584, 594—95 (1978)); and mental processes {Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” {Diamond v. Diehr, 450 U.S. 175, 192 (1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores” {id. at 184 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267—68 (1854))); and manufacturing flour {Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 192 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract...is not accorded the protection of our patent laws,…and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].”” Id. ((alteration in the original) quoting Mayo, 566 U.S. at 77). “[M]erely requiring] generic computer implementation fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance (“Memorandum”). Under Step 2A of that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
Analysis
Step 1 – Statutory Category
Claim 21 (and its dependents) recites a method. Thus the claim is a process, which is one of the statutory categories of invention.
Claim 33 (and its dependents) recites a device. Thus the claim is a machine and/or manufacture, which is one of the statutory categories of invention.
Step 2A, Prong One – Recitation of Judicial Exception
Step 2A of the 2019 Guidance is a two-prong inquiry. In Prong One, we evaluate whether the claims recites a judicial exception. For abstract ideas, Prong One represents a change as compared to prior guidance because we here determine whether the claim recites mathematical concepts, certain methods of organizing human activity, or mental processes.
Claim 21, and similarly claim 33, recites:
performing positioning measurements to determine an estimated position of the wireless device; and
monitoring the integrity KPI while performing the positioning measurements.
The step of “performing”; may be practically performed in the human mind using different observation and evaluation.
The step of “monitoring” may be practically performed in the human mind using different evaluation, opinion, and judgment.
Further, the dependent claims 22-23, 25-32, 34-35, and 37-44 also set forth a plurality of steps that may be practically performed through mental observations or evaluations.
Thus, the claims recite judicial exception since the claims set forth a plurality of steps are mental observations or evaluations fall within “mental processes” grouping of abstract ideas. Accordingly, claims 21-23, 25-35, and 37-44 recite the abstract idea.
Since the claims recite an abstract idea, the analysis proceeds to Prong Two to determine whether the claim is “directed to” the judicial exception.
Step 2A, Prong Two – Practical Application
If a claim recites a judicial exception, in Prong Two we next determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.
If the recited judicial exception is integrated into a practical application, the claim is not directed to the judicial exception. This evaluation requires an additional element or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception.
The only additional elements of claim 21, and similarly claim 33, is “receiving, from a network node in communication with the wireless device, at least one integrity key performance indicator (KPI) including a target integrity risk (IR) parameter, the target IR parameter indicating a threshold for a measure of probability of providing a positioning service that is out of a tolerance range”. This limitations, at a high-level of generality, merely recites data gatherings steps as they are insignificant extra- solution activity to the judicial exception. Accordingly, it does not integrate the judicial exception into a practical application of the exception.
Step 2B – Inventive Concept
For Step 2B of the analysis, it is determined whether the claim adds a specific limitation beyond the judicial exception that is not “well-understood, routine, convention” in the field.
As stated above, claims 21-23, 25-35, and 37-44 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Since this judicial exception is not integrated into a practical application because the additional elements amount to no more than date gathering steps and mental processes.
The courts have considered the following examples to be well-understood, routine, and conventional when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Therefore, the claims are patent ineligible under 35 USC 101.
Allowable Subject Matter
Claims 21-23, 25-35, and 37-44 are allowed over prior art. However, 35 USC 101 rejection must be overcome.
Response to Arguments
Applicant's arguments filed 02/05/2026 regarding 35 USC 101 rejection have been fully considered but they are not persuasive.
Applicant argues on page 10 that the claims do not recite abstract ideas, and even if they did, they integrate any such concepts into practical applications through specific technological improvements in wireless positioning systems.
Examiner respectfully disagrees because as stated above the courts have considered the following examples to be well-understood, routine, and conventional when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); therefore, receiving data as claimed at a high-level of generality, merely recites data gatherings steps as they are insignificant extra- solution activity to the judicial exception. A person, with paper and pen/pencil, once received such data, can perform positioning measurements, determine and estimated position, and monitor the received data as claimed.
Also, per Applicant’s argument that the claimed invention is performed in real time, there is nowhere in the claim that such steps are performed in real time. Further, per Applicant argues that the claims provide the “concrete technological improvements”, Examiner respectfully disagrees as MPEP 2106.05(a) states “It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements.” As indicated in the 101 rejection below, the steps as claimed merely describe a mental process. Since the claims are directed to a judicial exception, they cannot provide an improvement that amounts to significantly more than the judicial exception.
Examiner further notes that the claims must include more than mere instructions to perform a method on generic computer components or machinery to qualify as an improvement to existing technology, see MPEP 2106.05(a)(II). Merely gathering and analyzing information using conventional techniques, see TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48, does not amount an improvement to existing technology. Therefore, the Examiner maintains 35 USC 101 rejection.
Conclusion
The cited prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 11,882,541 discloses systems and methods are provided to determine an estimated location of a user equipment (UE). For instance, a UE can provide a positioning request to a node while the UE is in a radio resource control idle (RRC_IDLE) or inactive (RRC_INACTIVE) state. The positioning request can be implemented in a random access channel (RACH) message A (MsgA). The UE can then receive a positioning response from the node. The positioning response can be implemented in a RACH message B (MsgB).
WO 2022/211565 discloses a 5G or 6G communication system for supporting a higher data transmission rate. A method performed by a terminal in a wireless communication system is provided. The method may comprise the steps of: transmitting, to a location server, capability information about a terminal related to global navigation satellite system (GNSS) positioning integrity (PI); receiving, from the location server, information about one or more key performance indicators (KPIs); and transmitting, to the location server, result information about the GNSS PI on the basis of the one or more KPIs.
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 CHUONG P NGUYEN whose telephone number is (571)272-3445. The examiner can normally be reached Mon-Fri, 10:00-10:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JACK KEITH can be reached at (571) 272-6878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHUONG P NGUYEN/Primary Examiner, Art Unit 3646
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