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 .
Information Disclosure Statement
The Information Disclosure Statement submitted on 12/7/22 has been considered by the examiner (see attached PTO-1449 form).
Response to Arguments
Applicant's arguments filed 6/4/26 have been fully considered but they are not persuasive.
Claim 28 is directed to an abstract idea
i. Claim 28 recites an abstract idea
First Prong: Claim 28 recites an abstract Idea
Applicant argues that “claim 28 does not recite a mental process within the context of the 35 U.S.C. § 101 analysis because the steps cannot be practically performed in the human mind. (See MPEP § 2106.04(a)(2)(III)(A)).”
Claim 28 recites:
“determining a first direction indicator indicating a first direction from the first FPD to a communication device;…
determining a second direction indicator indicating a second direction from the first FPD to the second FPD…
determining, based on the first direction indicator and the second direction indicator, whether or not the communication device is within the spanning area;….
determining a third direction indicator indicating a direction from the first FPD to the third FPD… wherein the… determining, based on the first direction indicator, whether or not the communication device is within the spanning area comprises…
determining whether the first direction is between: i) the direction from the first FPD to the second FPD and ii) the direction from the first FPD to the third FPD, and… determining that either: i) the communication device is within the spanning area or ii) the communication device is not within the spanning area “
The examiner respectfully disagrees. The examiner submits that claim 28 is an abstract idea because determining directions from one device to another and determining whether a device is within an area can be done my mere observation from a user especially given that there is no indication of the spanning area. Applying broadest reasonable interpretation, FPD and communication device can be within a field of view of the user. The spanning area can be a small area within a field of view of a user. Court have found that “Claims can recite a mental process even if they are claimed as being performed on a computer” in Benson 409 U.S at 67, 175 USPQ at 675 and Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699, (MPEP 2106). As such, claim 28 is an abstract idea of mental process that can be performed in the human mind.
II. Second Prong: Claim is directed to an abstract idea because it does not recite additional elements that integrate the judicial exception into a practical application
Applicant argues that, “the claimed invention provides an improvement to geofencing technology”.
Examiner respectfully disagrees. The claim recites additional elements “first FPD determining” and “being performed by FPD”. Paragraph [0010] of applicant’s specification states “In some embodiments, an FPD is a small, easily movable device, like a smartphone or tablet or other consumer device”. As such the additional elements amounts to “Merely reciting the words ‘apply it’ (or an equivalent) with the judicial exception” since “merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea” was identified by the courts as “not integrating” a judicial exception into a practical application”, (MPEP 2606.04).
Applicant argues that, “The inventors recognized a need to improve existing geofencing implementations to address the above noted problem. (See Spec. at para. [0009]). As the inventors recognized, the improvements should propose "a geofencing system that does not rely on a GNSS or other like system.", (Remarks page 8).
MPEP 2106.04 (d)(1) is as follows:
“The application or use of the judicial exception in this manner meaningfully limits the claim by going beyond generally linking the use of the judicial exception to a particular technological environment, and thus transforms a claim into patent-eligible subject matter….
if the specification sets forth an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification.”
The examiner respectfully disagrees. Although applicant argues, "a geofencing system that does not rely on a GNSS or other like system", nothing in the claim reflect this assertion and that the claimed geofencing system does not rely on “a GNSS or other like system”. The improvement is merely directed to geofencing technology and does not go “beyond generally linking the use of the judicial exception to a particular technological environment” as required since the claim is directed to a particular technology, GNSS. Furthermore, claim 28 merely states “first FPD determining”, nothing in the claim reflects that the FPD does not use GPS, GNSS or other like systems.
Applicant is further reminded that “patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101”, (MPEP 2106.05).
Claim does not include inventive concept.
Applicant argues that,
“the burden is on the Office to prove that the claimed features are well-understood, routine, or conventional activity in the field. Applicant further cites the Berkheimer memo which discloses that an additional element (or a combination of claim elements) is not well-understood, routine, or conventional unless the examiner finds, and expressly supports a rejection in writing with one or more of the following (See the Berkheimer memo, pp. 3-4; see also M.P.E.P 2106.05(d)(I)(2)):
a) A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s). ...
b) A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s).
c) A citation to a publication that demonstrates the well- understood, routine, conventional nature of the additional element(s).... The nature of the publication and the description of the additional elements in the publication would need to demonstrate that the additional elements are widely prevalent or in common use in the relevant field, comparable to the types of activity or elements that are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a). For example, while U.S. patents and published applications are publications, merely finding the additional element in a single patent or published application would not be sufficient to demonstrate that the additional element is well-understood, routine, conventional, unless the patent or published application demonstrates that the additional element are widely prevalent or in common use in the relevant field.
d) A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional elements(s)....
The examiner submits that the claimed features are well-understood, routine, or conventional activity in the field because the claim recites additional elements, “first FPD determining” and “being performed by FPD”, that are well-understood and conventional. In fact, paragraph [0010] of applicant’s specification states “In some embodiments, an FPD is a small, easily movable device, like a smartphone or tablet or other consumer device”. As such, by applicant’s admission, the additional element, FPD or a smart phone is a generic well-understood and conventional device.
For a more positive result, applicant is invited to amend the claim with additional details or additional elements of how the determining is performed that prevents the determining steps from being performed mentally.
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.
Claim 28-30 and 33-35 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claim recites determining first, second, third direction indicators. The limitation of determining the first, second and third indicators, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “by a First FPD” (hereinafter, processor), nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “the FPD/processor” language, “determining a first indicator” in the context of this claim encompasses the user drawing a first line from a first point representing a first FPD to a fourth point representing a communication device. Similarly, “determining a second indicator” in the context of this claim encompasses the user drawing a second line from a first point representing a first FPD to a second point representing a second FPD”.
Similarly, “determining a third indicator” in the context of this claim encompasses the user drawing a second third line from a first point representing a first FPD to a third point representing a third FPD”.
The limitation, “the first FPD determining, based on the first direction indicator and the second direction indicator, whether or not the communication device is within the spanning area”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “by a processor” language, “determining” in the context of this claim encompasses the user analyzing whether the communication device is in between the first or second line.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. This judicial exception is not integrated into a practical application. In particular, the claim only recites one additional element – using a processor to perform all the determining steps. The processor in all the steps is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of ranking information based on a determined amount of use) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform all the determining steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
Allowable Subject Matter
Upon proper overcoming of the 101 rejections as discussed above, claims 28-35 would be allowed.
The following is an examiner’s statement of reasons for allowance:
The closest prior art of record, Thoresen (US 20190182627), White (US 12349098 and Parkvall (US 20170331577).
Thoresen teaches geofencing, wherein a geofenced area is defined by a set of N fence-pole devices (FPDs), where N is greater than or equal to 3 such that the set of N FPDs comprises at least a first FPD a second FPD and a third FPD; the first FPD determining a first direction indicator indicating a first direction from the first FPD to a communication device; determining that either: i) the communication device is within the spanning area or ii) the communication device is not within the spanning area.
White teaches a group of Pole Fence Devices (beacons) in a geofence and detect a change of location a communication device.
Parkvall teaches refined beam and geo-fence.
However, the combination of Thoresen, White and Parkvall fail to teach all of the features above in combination with the following features of:
the first FPD determining a second direction indicator indicating a second direction from the first FPD to the second FPD, wherein the second direction indicator is used to define a spanning area for the first FPD; the first FPD determining, based on the first direction indicator and the second direction indicator, whether or not the communication device is within the spanning area; the first FPD determining a third direction indicator indicating a direction from the first FPD to the third FPD, wherein the step of the first FPD determining, based on the first direction indicator, whether or not the communication device is within the spanning area comprises the first FPD determining whether the first direction is between: i) the direction from the first FPD to the second FPD and ii) the direction from the first FPD to the third FPD.
Thus the cited prior arts alone or in combination does not fairly suggest or disclose all of the claimed combination of features.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 DUNG L LAM whose telephone number is (571)272-6497. The examiner can normally be reached Monday -Thursday 9-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeanette Parker can be reached at 571-270-3647. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DUNG L LAM/Examiner, Art Unit 2646
/JEANETTE J PARKER/Supervisory Patent Examiner, Art Unit 2646
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