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, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 23, 2026 has been entered.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The use of the terms MICROSOFT, GOOGLE, AMAZON, BLUETOOTH, Z-WAVE, ZIGBEE, SIGFOX, which are trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore, the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Interpretation
During examination, a claim must be given its broadest reasonable interpretation consistent with the specification as it would be interpreted by one of ordinary skill in the art. Because the applicant has the opportunity to amend claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified. The focus of the inquiry regarding the meaning of a claim should be what would be reasonable from the perspective of one of ordinary skill in the art. See MPEP § 2111 for a full discussion of broadest reasonable interpretation. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. The presumption that a term is given its ordinary and customary meaning may be rebutted by the applicant by clearly setting forth (unlike stating a device/step may be this or that) a different definition of the term in the specification During examination of a patent application, a claim is given its broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal quotation marks omitted). Additionally, "[t]hough understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim." See SuperGuide Corp. v. DirecTVEnterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).See MPEP § 2111.01 for a full discussion of the plain meaning of claim language.
The term “application programming interface” or “API” to mean any and all software intermediary that allows two applications or programs to communicate or interact with each other, enabling data sharing and service access.
“To share” means to have a portion of (any all types of data, information, digital or analog) with another or others, machine or human.
Under the broadest reasonable interpretation standard, the conditional “or” language, the condition would also not occur and the step or function claimed would never be realized, hence the claim does not require to perform the step or function. See Ex parte Katz, 2011 WL 514314, at 4-5 (BPAI Jan. 27, 2011, 2011 WL 1211248 at 2 (BPAI Mar. 25, 2011); see also In re Johnston, 435 f.3d 1381, 1384 (Fed. Cir. 2006)("optional elements do not narrow the claim because they can always be omitted”). “Or” conditions are not limitations against which prior art must be found. Under the broadest scenario, the steps or functions dependent on the “or” condition would not be invoked, and such, the Examiner is not required to find these limitations in the prior art in order to render the claim anticipated. In re Am. Acad. Of Sci. Tech Ctr., 367 f.3d 1359, 1359 (Fed. Cir. 2004).
The subject matter of a properly construed claim is defined by the terms that limit the scope of the claim when given their broadest reasonable interpretation. It is this subject matter that must be examined. As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP § 2111.01 for more information on the plain meaning of claim language. Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect:
(A) statements of intended use or field of use, including statements of purpose or intended use in the preamble,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" or "whereby" clauses,
(D) contingent limitations,
(E) printed matter, or
(F) terms with associated functional language.
This list of examples is not intended to be exhaustive. The determination of whether particular language is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002).
“Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (footnote omitted). As a general proposition, the Examiner need not give patentable weight to non-functional descriptive material absent a new and nonobvious functional relationship between the descriptive material and the substrate. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010); and Manual of Patent Examining Procedure (MPEP) § 2111.05 (9th ed. Rev. 08.2017, Jan. 2018). In Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI 2008) (precedential), the Board held that the nature of the information being manipulated by the computer should not be given patentable weight absent evidence that the information is functionally related to the process “by changing the efficiency or accuracy or any other characteristic” of the steps. See also Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (non-precedential) (holding “wellness-related” data stored in a database and communicated over a network was non-functional descriptive material as claimed because the data “does not functionally change” the system).
A statement of intended use, as the name suggests, describes a manner in which a claimed invention may be used, but does not limit the claim and need not be practiced. If the applicant wishes to limit the claims to an intended use, the claims should positively recite those features and make clear that they are limiting. Claims that use this sort of language do not clearly indicate which meaning is intended. C.R. Bard, Inc. v. M3 Systems, Inc. 157 F.3d 1340, 1348-49 (Fed. Cir. 1998), Ex parte Kearney, 2012 Pat. App. LEXIS 2675 at 1 (BPAI 2012), Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012).
“Call” means contact or attempt to contact (a person or number) by phone, to generate signals for (a telephone number) in order to reach the party to whom the number is assigned, or to temporarily transfer control of computer processing to (something, such as a subroutine or procedure).
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-7 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without memory with a program, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). A processor cannot do the claimed functions unless instructed by a program stored in a memory, as stated by the specification at paragraph 115 and also note claim 8. According to the specification, the program in the memory creates the circuitry in the processor, hence which are critical or essential to the practice of the invention.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7, 11, 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
“A claim which describes the most crucial element in a ‘new’ combination in terms of what it will do, rather than in terms of its own physical characteristics or its arrangement in the new combination, is invalid as a violation of [the indefiniteness requirement].” Halliburton v. Walker, 329 U.S. 1 (1946). A purely functional claim language is not allowable unless done within the scope of 112(f). This general prohibition against the use of “purely functional claim language” (and the more specific Halliburton rule) has not been completely eliminated. Rather, “purely functional claim language” is now permissible but only under the conditions of 35 U.S.C. § 112(f), i.e., if its scope is limited to the corresponding structure, material, or act disclosed in the specification and equivalents thereof. Ex Parte Miyazaki, 89 USPQ2d 1207 (B.P.A.I. 2008). A claim term is functional when it recites a feature "by what it does rather than by what it is"(e.g., as evidenced by its specific structure or specific ingredients). In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 229 (CCPA 1971). One skilled in the art would not expect any generic circuitry to be configured by itself by functions as claimed, it must be having also a memory with a program, in this case. The claim element, circuitry, is a purely functional recitation in that there is no structure presented in the claim element itself, and the Examiner is not required to import structure from the specification into the claim under 35 U.S.C. § 112(f). The so-called Halliburton rule “proscribed conveniently functional language at the exact point of novelty.” Halliburton, 329 U.S. at 8. More generally, Halliburton proscribed purely functional claiming by prohibiting a patentee from using “broad functional claims” to “obtain greater coverage by failing to describe his invention than by describing it as the statute commands.” Id. at 12-13. Although the Halliburton rule may have looked for purely functional language only at the exact point of novelty, the broader concerns expressed by the Court in Halliburton are still valid regardless of where the purely functional claim element appears in the claim. When an applicant has not given notice to the public that his or her purely functional claim element is to be limited by the application of 35 U.S.C. § 112(f), a first USPTO concern is that the claim is indefinite under 35 U.S.C. § 112(b). When the limitation encompasses any and all structures or acts, all circuitry, which is a single device or machine that an application programming interface the present case, claim 1, which recite to perform receiving an application programming interface (API) call, indicating one or more addresses of one or more devices within one or more cellular access networks with which one or more devices within one or more cellular transport networks is to share information and in response to the API call, indicate the one or more devices within the one or more cellular access networks to cause the information to be shared from the one or more devices within the one or more cellular transport networks to the one or more devices within the one or more cellular access networks violate the rule set forth in Halliburton, because the claims are not limited by the application of 35 U.S.C. § 112(b), and they do not contain any additional recitation of structure.
In claims 4, 11, 17, the term “callable” is confusing since the term is an adjective meaning capable of being called, subject to redemption prior to maturity, as a corporate bond, subject to payment on demand, as money loaned. The claimed invention has nothing to do with finances. For examination purposes only, the Examiner will take the claimed to mean the API can access a subscription to the information.
Allowable Subject Matter
Claims 8-10, 13-16, 18-20 are allowed.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is a statement of reasons for the indication of allowable subject matter:
The reasons for the indication of allowable subject matter can be found in Applicant’s remarks of the previous response.
Response to Arguments
Applicant's arguments filed February 23, 2026 have been fully considered but they are not persuasive.
Regarding Applicant’s argument called “VI”, it is noted that Applicant’s attorney did not address why In re Mayhew does not apply. The attorney states, “Further, the present application discloses that the claimed processors and circuitry use processing and logic to perform actions in response to receiving API calls, thus data retention (e.g., ’storing an address of device 115 in a table ‘or providing ‘indications of where information is stored (e.g., memory address)’) resulting from the actions performed in response, is an implementation detail inherent in the disclosed processors and circuitry. Specification at [0082]. Therefore, the memory devices do not require an express recitation in the claims to be enabled.” First, the Examiner disagrees with of the statement that “storing an address of device 115 in a table ‘or providing ‘indications of where information is stored (e.g., memory address)’) resulting from the actions performed in response” is inherent in any all processors or circuitry. If this is true, the attorney can provide plenty of evidence to the Examiner that shows this inherency. As of this date the attorney has provide no evidence and arguments is a poor substitution for evidence. Actually, the attorney’s arguments bolster the Examiner rejection and the Examiner is more convince of his rejection and is maintained. Second, as stated in paragraph 115 in the specification and also claim 8, a processor cannot do the claimed functions unless instructed by a program stored in a memory. According to the specification, the program in the memory creates the circuitry in the processor, hence which are critical or essential to the practice of the invention.
Regarding Applicant’s argument called “VII”, it is noted again that Applicant’s attorney did not address why Halliburton v. Walker, Ex Parte Miyazaki, and In re Swinehart does not apply. Not addressing the rejection specifically does not convince the Examiner to withdraw the rejection, but does the opposite. A claim term is functional when it recites a feature "by what it does rather than by what it is"(e.g., as evidenced by its specific structure or specific ingredients). In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 229 (CCPA 1971). What is a claimed is a single generic circuitry and all possible circuitry, which is a machine that receives, which is a function, application programming interface (API) call indicating one or more devices within one or more addresses of one or more devices, with which one or more devices within one or more cellular transport networks is to share information and in response to the API call indicate the one or more devices within the one or more cellular access networks to cause the information to be shared from the one or more devices within the one or more cellular transport networks to the one or more devices within the one or more cellular access networks. For example, the apparatus may have memory with software or programs. Notwithstanding the permissible instances, the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439F.2d 210, 213 (CCPA 1971). When a claim limitation employs functional language, the Examiner’s determination of whether the limitation is sufficiently definite will be highly dependent on context (e.g., the disclosure in the specification and the knowledge of a person of ordinary skill in the art). Halliburton Energy Servs., 514 F.3d at 1255, 85 USPQ2d at 1663. One skilled in the art would not expect any and all generic circuitry, to be configured by itself by functions as claimed, it must be memory with software or programs, in this case. Applicant could amend the claims to recite the particular structured that accomplishes the function. When a claim uses the term “means” to describe a limitation, a presumption inheres that the inventor used the term to invoke § 112 (f). Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). This presumption can be rebutted when the claim, in addition to the functional language, recites structure sufficient to perform the claimed function in its entirety.” ld. The Examiner holds that the in receiving an application programming interface (API) call indicating one or more addresses of one or more devices within one or more cellular access networks, with which one or more devices within one or more cellular transport networks and in response to the API call, indicate the one or more devices within the one or more cellular access networks to cause the information to be shared from the one or more devices within the one or more cellular transport networks to the one or more devices within the one or more cellular access networks, the claimed of claim 1 does not require claim interpretation under USC 35 § 112(f). As such, the claim element in receiving an application programming interface (API) call indicating one or more addresses of one or more devices within one or more cellular access networks, with which one or more devices within one or more cellular transport networks and in response to the API call, indicate the one or more devices within the one or more cellular access networks to cause the information to be shared from the one or more devices within the one or more cellular transport networks to the one or more devices within the one or more cellular access networks is a purely functional recitation in that there is no structure presented in the claim element itself, and the Examiner is not required to import structure from the Specification into the claim under 35 U.S.C. § 112(f). The so-called Halliburton rule “proscribed conveniently functional language at the exact point of novelty.” Halliburton, 329 U.S. at 8. More generally, Halliburton proscribed purely functional claiming by prohibiting a patentee from using “broad functional claims” to “obtain greater coverage by failing to describe his invention than by describing it as the statute commands.” Id. at 12-13. Although the Halliburton rule may have looked for purely functional language only at the exact point of novelty, the broader concerns expressed by the Court in Halliburton are still valid regardless of where the purely functional claim element appears in the claim. When an applicant has not given notice to the public that his or her purely functional claim element is to be limited by the application of 35 U.S.C. § 112(f), a first USPTO concern is that the claim is indefinite under 35 U.S.C. § 112(b). That is, when the limitation encompasses any and all structures or acts, all generic circuitry, which is are machines that in response to an application programming interface (API) call indicate one or more devices within one or more cellular access networks, with which one or more devices within one or more cellular transport networks is to share information something for performing a recited function, including those which were not what the applicant had invented. In the present case, claim 1 which recite performing receiving an application programming interface (API) call, indicating one or more addresses of one or more devices within one or more cellular access networks with which one or more devices within one or more cellular transport networks is to share information and in response to the API call, indicate the one or more devices within the one or more cellular access networks to cause the information to be shared from the one or more devices within the one or more cellular transport networks to the one or more devices within the one or more cellular access networks violate the rule set forth in Halliburton, because the claims are not limited by the application of 35 U.S.C. § 112(b), and they do not contain any additional recitation of structure. Applicant is trying obtain greater coverage by failing to describe their invention than by describing it as the statute commands.
Applicant’s attorney then states that the API call is a device which is part the processor. First, the claim does not state this and, second, API call, is an action. A “call” means contact or attempt to contact (a person or number) by phone, to generate signals for (a telephone number) in order to reach the party to whom the number is assigned, or to temporarily transfer control of computer processing to (something, such as a subroutine or procedure).
Also, Applicant’s attorney has not addressed all 35 USC §112(b) rejections and hence the rejections are maintained.
Applicant’s attorney has not addressed the objection to the specification and hence the objection is maintained.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
The USPTO will not accept requests for consideration under the AFCP 2.0 filed after December 14, 2024.
If applicants wish to request for an interview, an "Applicant Initiated Interview Request" form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed. This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed. A copy of the completed "Applicant Initiated Interview Request" form should be attached to the Interview Summary form, PTOL-413 at the completion of the interview and a copy should be given to applicant or applicant's representative.
If applicants request an interview after this final rejection, prior to the interview, the intended purpose and content of the interview should be presented briefly, in writing. Such an interview may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration. Interviews merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search will be denied.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM D CUMMING whose telephone number is (571)272-7861. The examiner can normally be reached Monday - Friday 12 noon to 6pm.
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, Anthony S. Addy can be reached at (571) 272-7795. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM D. CUMMING
Primary Examiner
Art Unit 2645
/WILLIAM D CUMMING/Primary Examiner, Art Unit 2645