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 Arguments
Applicant's arguments filed 02/03/2026 have been fully considered but they are not persuasive.
Applicant argues “the specific preparatory steps necessary to enable software erasure tools to completely erase data…”. But this is not claimed, and is moot to both the “significantly more” argument and to patentability; while the claims are read in reasonable light of the specification, only that which is in the claims may be argued in this way. If this refers to turning on and charging the device, it is notoriously well known that a phone has to be on to function, and using a charger to do so. Cleaning a charge connector is not significantly more, and something any technician would do with any device to be repaired, as is replacing the charger, or device parts; it is by definition what electronics technicians, computer repair persons and roadies do. Charging and erasing are separate and unrelated steps, as any device which has power may be erased, and arriving at that point, even with a specific charge time is not significantly more. Again, applicant has not claimed or specified that they have invented the software tools used to erase, merely using ones that already exist on a device with power.
Claims 14 and 15 do require connection to an external device with communication between devices and are not rejected under 101, however they are met by the applied prior art rejection.
Regarding claims 16, refurbishing is another step not affecting the other steps of the process, as any device that has reached the point of erasure may be refurbished.
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 ,3-10 14-18 are rejected under 35 U.S.C. 101 because the claimed invention
the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) following rules to carry out a nontechnical human activity. This judicial exception is not integrated into a practical application because it is merely directed to the use of existing technology, the claim is merely attempting to turn on a device, and determining if failed, and then if it turns on using existing technology to erase the data or manually destroying the device. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims amount to following instruction for standard testing to see if a device is functional and the steps would be a part of repairing any electronic device:
Regarding claim 1, it merely lays out steps to attempt to turn on and charge a phone, there are literally millions of devices that do this every day, chargeable devices are multitudinous and ubiquitous.
Regarding claim 2, erasing data from a device, in a nonspecific way, is not extraordinary or unexpected, and is unconnected to claim 1 as any device with power could do this and it does not rely on the previous steps other than having a functional device.
Regarding claims 3-4, analysis, or breaking down, or a device and substituting parts for testing is not significantly more, and again, erasing a device is not unexpected.
Regarding claim 5, the addition of testing a motherboard in an electronic device is further fully expected, and provides no unexpected benefit. Further it is still mere human activity.
Regarding claim 6, the same reasoning applies, analysis and testing of parts is well known.
Claim 17 merely adds debugging mode and is not significantly more.
Regarding claims 8-10 and 18, merely determining a phone has failed a process may easily done by a human.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by"What to Do if Your Phone Won't Turn On" {Gordon}.
Regarding claim 1, Gordon teaches a method to completely erase data from a mobile device (page 1 and 5 - phone stopped turning on; completely wipe your phone ), the method comprising: (a) manipulating the mobile device to place the mobile device in an “on" state (page 1 and 4- Phone Won't Turn: On; holding the power button didn't allow you. to turn your phone off or on again, you may need to perform a hard reset); (b) for a condition where the mobile device fails to power on after step (a), connecting the mobile device ta a charging device via a charging connector on the mobile device (page 3 - This may sound silly, but it’s possible your phone is just out of battery. Try plugging your phone into a charger- if the battery Is truly drained, it wasn't necessarily fight up right away. Try leaving it plugged in for 15 to 30 minutes or so before turning it on}; (c} for a condition where the mobile device fails to power on after connecting to the charging device, disconnecting the mobile device from the charging device, cleaning the charging connector, and reconnecting the mobile device ta the charging device via the charging connector (page 8 - ff that doesn't work, you could also have a damaged charger. Try a different cable, power bank, and wall outlet, Check the charging port, too—lint can easily get caught in there and prevent the pins from making contact. A toothpick can help dislodge any debris that may. have accumulated in the port, at which point you can ty charging the phone again); and (d) determining a charging condition of the mobile device after reconnecting the mobile device to the charging device, wherein: (1) the mobile device is failed when a determined charging condition is that the mobile device fails to charge; (I) the mobile device is charged for a predetermined amount of time when the determined charging condition is the mobile device is charging (page 3, 4-5 and 7 toothpick can help dislodge any debris that may have accumulated in the port, at which paint you can try charging the phone again, leaving it plugged in for 15 to 30 minutes or so before turning it on; if holding the power button didn't allow you to turn your phone off or on again, you may need to perform a hard reset; If the phone doesn't show up, skip- io the next section, {fall else falls, it might be time to shell out for a new smartphone).
completely erasing, by an erasure software tool of an application of a computer connected to the mobile device via a mobile device interface the data from the motherboard; wherein the software erasure tool completely erases the data from the mobile device in a manner such that the data is completely removed, See GORDON below:
PNG
media_image1.png
282
692
media_image1.png
Greyscale
This section clearly demonstrates using an external computer application to completely wipe the phone.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 3-4, 8-10 and 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mbaka (How to Fix a Broken Charger; Mbaka, Jade). in view of Berdnar "What to Do if Your Phone Won't Turn On" {Gordon}.
1. Mbaka discloses a method to completely erase data from a mobile device, the method comprising:
(a) manipulating the mobile device to place the mobile device in an "on" state; (b) for a condition where the mobile device fails to power on after step (a), connecting the mobile device to a charging device via a charging connector on the mobile device; [the inherent reason for a charger to exist is to supply power to a rechargeable device]
(c) for a condition where the mobile device fails to power on after connecting to the charging device, disconnecting the mobile device from the charging device, cleaning the charging connector, and reconnecting the mobile device to the charging device via the charging connector; [STEP 5, clean the charging port, this section explains that the connectors should be clean ensure proper charging]
and (d) determining a charging condition of the mobile device after reconnecting the mobile device to the charging device, wherein:
(i) the mobile device is failed when a determined charging condition is that the mobile device fails to charge; (ii) the mobile device is charged for a predetermined amount of time when the determined charging condition is that the mobile device is charging. [In at least step 1, it is explained that failure is an option and different things are attempted until the device does charge; if it fails to charge, as stated in the conclusion the device may be non-functional and thus failed; if it is chargeable it’s very function is to continue to charge an appropriate amount]
but does not expressly disclose erasing software. Gordon discloses in an analogous method of checking power and other attributes of a mobile phone wherein for a condition when the mobile device charges, using a software tool to erase the data from the mobile device [Restore your Phone to Factory Settings, and Re-flash the Firmware from Scratch sections clearly show means for erasing the data with software tools]
Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to erase data from a device to protect personal data including PII, financial data or other compromising data that could be used to steal an identity or create unsafe situations for a user.
3. The method of claim 1, Mbaka further comprising: for the condition (i) when the mobile device is failed, performing the following: disassembling the mobile device; connecting the mobile device to a known good power supply; checking if the mobile device powers on; for a condition when the mobile device powers on, checking if a battery of the mobile device charges; for a condition when the mobile device does not power on, replacing a charging connector; after replacing the charging connector, checking if the mobile device charges; [Step 1, parts of the setup are assemble and disassembled and switched out, and it is checked if each part works including the power outlet, and whether the charger is charging the battery] but does not expressly disclose erasing software. Gordon discloses in an analogous method of checking power and other attributes of a mobile phone wherein for a condition when the mobile device charges, using a software tool to erase the data from the mobile device [Restore your Phone to Factory Settings, and Re-flash the Firmare from Scratch sections clearly show means for erasing the data with software tools]
Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to erase data from a device to protect personal data including PII, financial data or other compromising data that could be used to steal an identity or create unsafe situations for a user.
4. the combination discloses a method to remove data from a mobile device, the method comprising: disassembling the mobile device; connecting the mobile device to a known good power supply; checking if the mobile device powers on; for a condition when the mobile device powers on, checking if a battery of the mobile device charges; and for a condition when the mobile device does not power on, replacing a charging connector. [Mbaka Step 1, parts of the setup are assemble and disassembled and switched out, and it is checked if each part works including the power outlet, and whether the charger is charging the battery]
8. the combination discloses the method of claim 1, further comprising: determining that a mobile device has failed an automatic complete data erasure process. [Gordon, if the regular erasure fails it moves to a lower level process such as debug to flash the device]
9. the combination discloses the method of claim 4, further comprising: determining that a mobile device has failed an automatic complete permanent data erasure process. [Gordon, if the regular erasure fails it moves to a lower level process such as debug to flash the device]
10. the combination discloses the method of claim 6, further comprising: determining that a mobile device has failed an automatic complete data erasure process. [Gordon, if the regular erasure fails it moves to a lower level process such as debug to flash the device]
16. the combination discloses the method of claim 1, and Bednar expressly teaches recycling and reusing the phone and its parts. [See Recycling and Disposal section] Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to refurbish the mobile device for reuse after completely erasing the data from the mobile device in order to avoid e-waste which can leave dangerous metals and other substances in landfills and pollute the environment.
17. the combination discloses the method of claim 1, wherein applying the erasure software tool comprises entering a debugging mode on the mobile device. [Gordon, RE-Flash the Firmware form Scratch section describes expressly entering debug mode to flash the phone]
18. the combination discloses the method of claim 1, wherein the mobile device has previously failed a software erasure process. [Gordon, if the regular erasure fails it moves to a lower level process such as debug to flash the device]
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mbaka in view of Gordon in view of Huang (US 2022/0156543 A1) in view of Berdnar, How to Destroy Old Cell Phones
5. Mbaka discloses the method of claim 4, further comprising: after replacing the charging connector, checking if the mobile device charges;
but does not expressly disclose erasing software. Gordon discloses in an analogous method of checking power and other attributes of a mobile phone wherein for a condition when the mobile device charges, using a software tool to erase the data from the mobile device [Restore your Phone to Factory Settings, and Re-flash the Firmware from Scratch sections clearly show means for erasing the data with software tools]
Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to erase data from a device to protect personal data including PII, financial data or other compromising data that could be used to steal an identity or create unsafe situations for a user, but does not expressly disclose removing the motherboard.
Huang discloses how a motherboard may be individually tested separately from other device parts and memories. [0004, 0027]
Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to disconnect a motherboard from the mobile device; connecting the motherboard to known good compatible circuitry; checking if the motherboard connected to the compatible circuitry powers on; for a condition when the motherboard powers on, checking a charging operation of the motherboard as it is notoriously well known in the art of electronics that isolating elements for testing is the best way to find the particular issue in a connected circuit.
The combination discloses disposal but not expressly physically destroying the device.
Berdnar discloses for a condition when the motherboard does not power on or the charging operation is not operating, physically destroying the motherboard or a memory chip on the mother board. [See Proper Ways to Break Your Device, Physical Destruction]
Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to destroy a non-functional motherboard or its chips to ensure protection of private data.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gordon in view of Huang in view of Berdnar (How to Destroy Old Cell Phones)
Regarding claim 6, Gordon discloses a method to remove data from a mobile device, the method comprising: disassembling the mobile device; and removing parts for testing power and charging as well as erasing the memory for a condition when the motherboard powers on and the charging operation is operating, completely erasing, by an erasure software tool of an application of a computer connected to the mobile device via a mobile device interface board;
[See the above rejection of claim 1 in view of Gordon for citations]
but does not expressly disclose removing the motherboard.
Huang discloses how a motherboard may be individually tested separately from other device parts and memories. [0004, 0027]
Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to disconnect a motherboard from the mobile device; connecting the motherboard to known good compatible circuitry; checking if the motherboard connected to the compatible circuitry powers on; for a condition when the motherboard powers on, checking a charging operation of the motherboard as it is notoriously well known in the art of electronics that isolating elements for testing is the best way to find the particular issue in a connected circuit.
The above combination does not expressly disclose destruction.
Berdnar discloses for a condition when the motherboard does not power on or the charging operation is not operating, physically destroying the motherboard or a memory chip on the mother board. [See Proper Ways to Break Your Device, Physical Destruction]
Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to destroy a non-functional motherboard or its chips to ensure protection of private data.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mbaka (How to Fix a Broken Charger; Mbaka, Jade). in view of "What to Do if Your Phone Won't Turn On" {Gordon} further in view of Lin et al (US 2023/0315068 A1)
14. the combination discloses the method of claim 1, further comprising: after charging the mobile device for the predetermined amount of time and when the erasure software tool fails to completely erase the data from the mobile device, connecting a device firmware upgrade (DFU) program to the mobile device to put the mobile device into recovery mode, and using the erasure software tool to clear the data of the mobile device while in recovery mode using a PC or other specialized tools [Gordon, Re-flash the Firmware from scratch section] but does not expressly disclose that one of these tools may be a dongle. Lin discloses an automatic testing device wherin software may be stored on a dongle [0108, USB flash drive] therefore it would have been obvious to one of ordinary skill in the are before the effective filing date of the claimed invention to use a dongle, as it is an easily connectable and portable way to carry stored data.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mbaka (How to Fix a Broken Charger; Mbaka, Jade). in view of "What to Do if Your Phone Won't Turn On" {Gordon} further in view of Opinaldo (Useful Ways to Control Android with Broken Screen)
15. the combination discloses the method of claim 1, but does not expressly disclose using a connected device to screen mirror to operate the phone. Opinaldo discloses an analogous system wherein the mobile device has a defective display and further comprising: connecting the mobile device to a mobile device mirror monitor that displays a same image as that provided to the defective display of the mobile device, and controlling settings of the mobile device [section How to Access Android Phone with Broken Screen with Samsung Side Sync] which would allow the mobile device mirror monitor to enable the erasure software tool to completely erase the data.[the device is in debussing mode which allows re-flash] Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use screen mirroring to assist in erasing a phone, as it is a known way of accessing the phone with a partially or fully broken screen to enable phone functions in order to allow easier control and access of functions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEWIS G WEST whose telephone number is (571)272-7859. The examiner can normally be reached Monday-Friday, 8:00-4:00.
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, George Eng can be reached at (571) 272-7495. 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.
/LEWIS G WEST/Primary Examiner, Art Unit 2699