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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 12/29/2025 has been entered.
Response to Arguments
Applicant's arguments filed 12/29/2025 have been fully considered but they are not persuasive. In particular, Applicant states (pp. 11) that the amended limitation “the user using the file at the later time at the location” overcomes the 101 rejection. Examiner respectfully disagrees. Even though this limitation is not mentally performable, it is nevertheless high-level recitation of generic computer components and functions that represent mere instructions to apply on a computer (Step 2A Prong Two).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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.
Claims 1-12 and 14-19 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claims contain 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 had possession of the claimed invention.
Specifically, claims 1, 15 and 17 recite limitation “product or service”, which is not defined in the instant specification. Claims 2-12, 14, 16, and 18-19 depend on claims 1, 15 and 17 respectively and inherit the same problem.
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.
Claims 1-12 and 14-19 are rejected under 35 U.S.C. 112(b), for lack of antecedent basis. Specifically, claims 1, 15 and 17 recite limitation "the later time". There is insufficient antecedent basis for this limitation in the respective claims. Claims 2-12, 14, 16, and 18-19 depend on claims 1, 15 and 17 respectively and inherit the same problem.
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 1-12 and 14-19 are rejected under 35 U.S.C. 101.
Claim 1 is rejected under 35 U.S.C. 101.
Step 1:
Claim 1 is directed to “a programmed system for operating on a portable computing device” having a processor, memory, and display. It is directed to a statutory category.
Step 2A, Prong One:
The claim recites “characterizing the current file”.
This claim element recites an abstract idea as a mental process, where “characterizing” is merely an observation or evaluation that can be made mentally. Characterizing a file is simply identifying properties of the file content and metadata.
The claim recites “indicating the current file is an important file”.
This claim element recites an abstract idea as a mental process, where “indication” is merely evaluation or opinion that can be made mentally. Marking a file important is simply an activity to determine the importance of a file.
The claim recites “determining a current context…including a location”, and “determines the user at the specified location”.
These claim elements recite an abstract idea as a mental process, where “determining” is merely an observation or evaluation that can be made mentally. Determining current context is simply describing the current location of the user with the device.
The claim recites “search…to find at least one match” and “uses a file…to determine the at least one match by finding a file that matches the file”.
These claim elements recite an abstract idea as a mental process, where “match” is merely an observation or evaluation that can be made mentally. Searching and matching is simply comparing two pieces of metadata – between the current context of a device and a file, or between two files, for similarity.
Step 1A, Prong Two:
This abstract idea is not integrated into a practical application.
The claim recites additional elements “portable computing device”, “processor”, “memory”, “display” and “the user using the file at the later time at the location”, which are high-level recitation of generic computer components and functions that represent mere instructions to apply on a computer. See MPEP §2106.05(f).
Viewing the additional elements together and the claims as a whole, nothing provides integration into a practical application.
Step 2B:
The claim recites additional elements “storing plural files”, “store the characterized information about the important file” and “accesses a global database of information”, which qualify as “iv. Storing and retrieving information in memory” per MPEP §2106.05(d)(II), and is recognized by the courts as well-understood, routine, and conventional, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015).
The claim recites additional elements “receiving an indication from a user…that a current file is an important file”, “receive an indication from a user that they want an important file” and “returning the…match to the user as the important file”, which qualify as “i. Receiving or transmitting data over a network” per MPEP §2106.05(d)(II), and is recognized by the courts as well-understood, routine, and conventional, buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014).
The conclusions on the mere instructions to apply the abstract idea using generic computer components and functions carry over and do not add significantly more or provide any "inventive concept".
Claim 15 is rejected under 35 U.S.C. 101.
Step 1:
Claim 15 is directed to “A method” and thus directed to a statutory category.
Step 2A, Prong One:
The claim recites “characterizing the file”.
This claim element recites an abstract idea as a mental process, where “characterize” is merely an observation or evaluation regarding file content and metadata describing that file content.
The claim recites “determining that the user is at the specified location”.
This claim element recites an abstract idea as a mental process, where “determining” is merely an observation or evaluation of the context, where and when, of the user with the device.
The claim recites “find one of the stored files that matches to the specified file”.
This claim element recites an abstract idea as a mental process, where “match” is merely an observation or evaluation that compares metadata of two files for similarity.
Step 1A, Prong Two:
This abstract idea is not integrated into a practical application.
The claim recites additional elements “portable computing device”, “file system” and “the user using the file at the later time at the location”, which are high-level recitation of generic computer components and represents mere instructions to apply on a computer. See MPEP §2106.05(f).
Viewing the additional elements together and the claims as a whole, nothing provides integration into a practical application.
Step 2B:
The claim recites additional element “storing the file along with the characterized information”, which qualifies as “iv. Storing and retrieving information in memory”, and is recognized by the courts as well-understood, routine, and conventional per MPEP §2106.05(d)(II).
The claim recites additional elements “receiving a file”, “receiving…an indication…that the file is to be used later”, “receiving…global information” and “returning the one stored file”, which qualify as “i. Receiving or transmitting data over a network”, and is recognized by the courts as well-understood, routine, and conventional per MPEP §2106.05(d)(II).
The conclusions on the mere instructions to apply the abstract idea using generic computer components and functions carry over and do not add significantly more or provide any "inventive concept".
Claim 17 is rejected under 35 U.S.C. 101.
Step 1:
Claim 17 is directed to “A method” and thus directed to a statutory category.
Step 2A, Prong One:
The claim recites “characterizing the file”.
This claim element recites an abstract idea as a mental process, where “characterize” is merely an observation or evaluation regarding file content and metadata describing that file content.
The claim recites “determining that the user is at a first location”.
This claim element recites an abstract idea as a mental process, where “determining” is merely an observation or evaluation of the context, where and when, of the user device.
The claim recites “which of the stored files is relevant to the first location”.
This claim element recites an abstract idea as a mental process, where “relevant” is merely an evaluation or opinion that matches metadata of stored files to the first location.
Step 1A, Prong Two:
This abstract idea is not integrated into a practical application.
The claim recites additional elements “portable computing device”, “file system” and “the user using the file at the later time at the location”, which are high-level recitation of generic computer components and represents mere instructions to apply on a computer. See MPEP §2106.05(f).
Viewing the additional elements together and the claim as a whole, nothing provides integration into a practical application.
Step 2B:
The claim recites additional element “storing the file along with the characterized information”, which qualifies as “iv. Storing and retrieving information in memory”, and is recognized by the courts as well-understood, routine, and conventional per MPEP §2106.05(d)(II).
The claim recites additional elements “receiving a file”, “receive an indication…that the file is to be used later”, “receiving from the user information” and “user using the file at the later time at the location” and “providing the global information”, which qualify as “i. Receiving or transmitting data over a network”, and is recognized by the courts as well-understood, routine, and conventional per MPEP §2106.05(d)(II).
The conclusions on the mere instructions to apply the abstract idea using generic computer components and functions carry over and do not add significantly more or provide any "inventive concept".
In summary, claims 1, 15 and 17 are not eligible. Claims 2-12, 14, 16 and 18-19 depend on claims 1, 15 and 17 respectively, and recite the same abstract idea.
Step 2A Prong One
Claim 3 recites that characterizing a file involves capturing file content and time of intended use, which recites an abstract idea as a mental process. One can mentally observe or evaluate to represent file content and metadata as characterized information.
Claim 4 recites that the device context includes device location and time/location of the file request, which recites an abstract idea as a mental process. One can mentally observe or evaluate to capture the context of the device/user making a file request as characterized information.
Claim 5 recites that characterizing the file captures the person being called by the user when the file is received, which recites an abstract idea as a mental process. One can mentally observe or evaluate to capture the context of the device/user making a file request as characterized information.
Claims 6-9 recite characterizing a transportation ticket involving the initiating date and location of the transportation, and matching a user request for important file with the transportation ticket. This recites an abstract idea as a mental process. One can mentally observe or evaluate to match the context of the device/user making a file request with the characterizing information of stored files.
Claim 10 recites characterizing an event ticket involving the time of the event, and matching a user request for important file with the event ticket when the event is about to start. This recites an abstract idea as a mental process. One can mentally observe or evaluate to match the timing of the user making a file request with the characterizing information of stored files.
Claim 11 recites characterizing content of an image to determine its intended use, which recites an abstract idea as a mental process. One can mentally observe or evaluate to identify content and metadata of an image, from which to infer its intended use.
Claim 12 recites characterizing a link when the user stores the link while calling a person, which recites an abstract idea as a mental process. One can mentally observe or evaluate to capture the context surrounding the storage of a link, such as what the user was doing (making a call).
Claim 14 recites saving a file identified by the user for later use at a location, and provided for sharing with other people later when they are at the location. This recites an abstract idea as a mental process. One can mentally observe or evaluate to decide to provide an important file for sharing by other people at the same location.
Claims 16 and 18-19 recite characterizing a claim check involving a business location, which is stored by one user at the location, and later provided for matching by another user at the same location. This recites an abstract idea as a mental process. One can mentally observe or evaluate to decide to provide an important file for matching by other people at the same location.
Step 2A Prong Two
Claim 2 recites additional elements “displaying a button” and “pressing of the button”, which are high-level recitation of generic computer components/functions.
Step 2B
Claim 6 recites additional elements “delivers the ticket to the user” and “uses the ticket to use the transportation”. Claim 10 recites additional element “uses the ticket to enter the event”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHELLY X. QIAN whose telephone number is (408)918-7599. The examiner can normally be reached Monday - Friday 8-5 PT.
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, Boris Gorney can be reached at (571)270-5626. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHELLY X QIAN/Examiner, Art Unit 2154
/BORIS GORNEY/Supervisory Patent Examiner, Art Unit 2154