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 filed on November 19, 2025 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
Status of Claims
This office action is in response to arguments entered on October 22, 2025 for the patent application 18/067,006 filed on December 15, 2022. Claims 1, 5, 6, 8, 10 and 15-16 are amended. Claim 14 is cancelled. Claims 18-19 are new. Claims 1-13 and 15-19 are pending. The first office action of August 4, 2025 is fully incorporated by reference into this Final Office Action.
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 1-13 and 15-19 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1 – “Statutory Category Identification”
Claim 1 is directed to “a gas safety management method” (i.e. “a process”), and claim 10 is directed to “a gas safety management Internet of Things system” (i.e. “a machine”), hence the claims are directed to one of the four statutory categories (i.e. process, machine, manufacture, or composition of matter). In other words, Step 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 1 “Abstract Idea Identification”
However, the claims are drawn to the abstract idea of “gas safety training,” either in the form of “certain methods of organizing human activity,” in terms of managing personal behavior or relationships or interactions between people (including social activities, teaching and following rules or instructions), or reasonably in the form of “mental processes,” in terms of processes that can be performed in the human mind (including an observation, evaluation, judgement or opinion). Regardless, the claims are reasonably understood as either “certain methods of organizing human activity;” and/or “mental processes;” which require the following limitations:
Per claim 1:
“obtaining gas usage data of at least one gas-consuming end, the gas usage data including at least one of gas usage, gas alarm data, and gas maintenance data;
determining a user type of each of the at least one gas-consuming end based on the gas usage data of the at least one gas-consuming end, and determining a gas safety training program corresponding to each user type,
the gas safety training program including at least one of a training object, a training time and a push frequency;
pushing a safety training to a user terminal based on the gas safety training program; obtaining feedback information from the user terminal; and
determining a gas safety detection frequency of the gas-consuming end of each user type, and a gas safety risk level of the gas-consuming end of each user type based on the feedback information and the gas usage data corresponding to each user type.”
Per claim 10:
“obtain gas usage data of at least one gas-consuming end, the gas usage data including at least one of gas usage, gas alarm data, and gas maintenance data;
transmit the gas usage data of the at least one gas-consuming end; and
determine a user type of each of the at least one gas-consuming end based on the gas usage data of the at least one gas-consuming end, and determine a gas safety training program corresponding to each user type,
the gas safety training program including at least one of a training object, a training time and a push frequency;
push a safety training to a user terminal based on the gas safety training program;
determine a gas safety detection frequency of the gas-consuming end of each user type, and a gas safety risk level of the gas-consuming end of each user type based on feedback information of each user type on the safety training and the gas usage data corresponding to each user type;
feed back the gas safety training program corresponding to each user type, the gas safety detection frequency of the gas-consuming end of each user type, and the gas safety risk level of the gas-consuming end of each user type to the smart gas user platform based on the smart gas service platform; and
obtain the feedback information of each user type on the safety training.”
These limitations simply describe a process of data gathering and manipulation, which is partially analogous to “collecting information, analyzing it, and displaying certain results of the collection analysis” (i.e. Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir. 2016)). Hence, these limitations are akin to an abstract idea which has been identified among non-limiting examples to be an abstract idea. In other words, Step 2A, Prong 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 2 – “Practical Application”
Furthermore, the applicants claimed elements of “a smart gas user platform,” “a smart gas service platform,” “a smart gas safety management platform,” “a smart gas indoor device sensor network platform,” and “a smart gas indoor device object platform,” are merely claimed to generally link the use of a judicial exception (e.g., pre-solution activity of data gathering and post-solution activity of presenting data) to (1) a particular technological environment or (2) field of use, per MPEP §2106.05(h); and are applying the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, per MPEP §2106.05(f). In other words, the claimed “gas safety training,” is not providing a practical application, thus Step 2A, Prong 2 of the subject-matter eligibility analysis is “No.”
Step 2B – “Significantly More”
Likewise, the claims do not include additional elements that either alone or in combination are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g. “a smart gas user platform,” “a smart gas service platform,” “a smart gas safety management platform,” “a smart gas indoor device sensor network platform,” and “a smart gas indoor device object platform,” are claimed, these are generic, well-known, and conventional data gather computing elements. As evidence that these are generic, well-known, and a conventional data gathering computing element (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known, the Applicant’s specification discloses these in a manner that indicates that the additional element is sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a), per MPEP § 2106.07(a) III (a). As such, this satisfies the Examiner’s evidentiary burden requirement per the Berkheimer memo.
Specifically, the Applicant’s claimed “a smart gas user platform,” as described in para. [0019] of the Applicant’s written description as originally filed, provides the following:
“[0019] The smart gas user platform may be a user-led platform. In some embodiments, the smart gas user platform may be configured as a terminal device.” As such, the Applicant’s claimed “a smart gas user platform,” is reasonably interpreted as a generic, well-known, and conventional data gathering computing element.
Likewise, the Applicant’s claimed “a smart gas service platform,” as described in para. [0065] of the Applicant’s written description as originally filed, provides the following:
“[0065] In some embodiments, the gas user may send the feedback information to the smart gas service platform through the smart gas user platform, and then send the feedback information to the smart gas safety management platform through the smart gas service platform to perform related operations such as aggregation and processing.” As such, the Applicant’s claimed “a smart gas service platform,” is reasonably interpreted as a generic, well-known, and conventional data gathering computing element.
Similarly, the Applicant’s claimed “a smart gas safety management platform,” as described in para. [0040] of the Applicant’s written description as originally filed, provides the following:
“[0040] FIG. 2 may be an exemplary flowchart illustrating a gas safety management method for gas safety training according to some embodiments of the present disclosure. As shown in FIG. 2, a process 200 may include the following operations. In some embodiments, the process 200 may be performed by a smart gas safety management platform of a gas safety management Internet of Things system for gas safety training.” As such, the Applicant’s claimed “a smart gas safety management platform,” is reasonably interpreted as a generic, well-known, and conventional data gathering computing element.
Finally, the Applicant’s claimed “a smart gas indoor device sensor network platform,” and “a smart gas indoor device object platform,” as described in para. [0038] of the Applicant’s written description as originally filed, provides the following:
“[0038] In some embodiments, the smart gas object platform may interact with the smart gas indoor device sensor network platform. For example, instructions to obtain data related to gas use issued by the smart gas indoor device sensor network platform may be received, the indoor gas use related data may be uploaded to the smart gas indoor device sensor network platform, etc.” As such, the Applicant’s claimed “a smart gas indoor device sensor network platform,” and “a smart gas indoor device object platform,” are reasonably interpreted as generic, well-known, and conventional data gathering computing elements which provides no details of anything beyond ubiquitous standard off-the-shelf equipment. Therefore, the Applicant’s own specification discloses ubiquitous standard equipment within modern computing and does not provide anything significantly more. Therefore, Step 2B, of the subject-matter eligibility analysis is “No.”
In addition, dependent claims 2-9, 11-13 and 15-19 do not provide a practical application and are insufficient to amount to significantly more than the judicial exception. As such, dependent claims 2-9, 11-13 and 15-19 are also rejected under 35 U.S.C. § 101, based on their respective dependencies to claim 1 or 10. Therefore, claims 1-13 and 15-19 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject-matter.
Response to Arguments
The Applicant’s remarks filed on October 22, 2025 related to claims 1-13 and 15-19 are fully considered, but are not persuasive.
Rejections Under 35 USC § 101
Step 2A, Prong Two: The Claimed Invention Is Not “Directed to” an Abstract Idea
Claim 1:
The Applicant respectfully argues “In the prior arts, the gas company's household safety management of gas is mainly to carry out gas safety knowledge popularization education to a wide range of gas users through forms such as articles, videos, and message notifications. For different user types (e.g., factories, residents, businesses, etc. type), users with different gas types and different usage habits lack targeted safety training. Therefore, there is a technical problem about how to realize targeted matching of appropriate training programs and push frequencies based on different user features and gas features to improve training efficiency.”
The Examiner respectfully disagrees. First, arguments with regard to “the prior arts” are best suited for arguing rejections under 35 U.S.C. §§ 102 and 103. The test for 35 U.S.C. § 101 subject-matter eligibility requires claims to be examined using the “two-part Mayo test” for determining subject-matter eligibility, as previously performed above. As such, the argument is not proper for facilitating a 35 U.S.C. § 101 subject-matter eligibility discussion.
Second, the Applicant is misconstruing the proper analysis under 35 U.S.C. § 101. The lack of prior art, clearing the claims of any 35 U.S.C. §§102 or 103 rejections, is not evidence of subject-matter eligibility under 35 U.S.C. §101.
Third, the Applicant’s “technical problem,” of “how to realize targeted matching of appropriate training programs… to improve training efficiency,” is not a technical problem, but a man-made problem that teachers, educators, and instructors have been struggling with in the analog for decades. As such, the argument is not persuasive.
The Applicant respectfully argues “Amended claim 1 is directed to a gas safety management method for gas safety training, aiming to realize targeted matching of appropriate training programs and push frequencies based on different user features and gas features to improve training efficiency. At the same time, the gas safety detection frequency may also be determined based on the occurrence probability of safety risks to comprehensively improve the safety of gas use.”
The Examiner respectfully disagrees. Again, “matching of appropriate training programs… to improve training efficiency,” is merely addressing a human burden and not a technological advancement. As such, the argument is not persuasive.
The Applicant respectfully argues “Specifically, amended claim 1 recites, in relevant part, “sending the gas safety training program to a smart gas user platform, to push, based on the push frequency, the training object with a duration equal to the training time to users through a user terminal corresponding to the user type’. Amended claim 1 has linked the judicial exception of “determining the gas safety training program” to the technical field of “media presentation of the user terminal” and added a meaningful restriction. Specifically, using the gas safety training program to control the user terminal to perform specific media push and playback operations.”
The Examiner respectfully disagrees. Applicant’s training use of a “user terminal” is not a technological advancement. Said “user terminal” is merely a generic computer as described in para. [0060], which provides the following”
“[0060] The user terminal may refer to intelligent terminals, etc. used by gas users. For example, smart phones, computers, etc.”
As such, the Applicant’s “user terminal” is reasonably interpreted as a generic, well-known, conventional and commercially available computing element. Therefore, the argument is not persuasive.
The Applicant respectfully argues “On the one hand, the limitation imposes judicial exceptions on specific machines (the user terminal) that are indispensable in amended claim 1, clearly limiting the calculation of “the gas safety training program” is not the ultimate goal, but rather a control instruction used to drive physical devices (e.g., the gas indoor device) to perform actions.”
The Examiner respectfully disagrees. Again, the Applicant’s “specific machines (the user terminal),” is merely a generic computer as described in para. [0060], which provides the following:
“[0060] The user terminal may refer to intelligent terminals, etc. used by gas users. For example, smart phones, computers, etc.”
As such, the Applicant’s “user terminal” is reasonably interpreted as a generic, well-known, conventional and commercially available computing element. Therefore, the argument is not persuasive.
The Applicant respectfully argues “On the other hand, the limitation can achieve “personalized and automated security knowledge push tailored to different user types, improving the coverage and targeting of security training”, and improve existing technologies (such as unified and indiscriminate security promotion).”
The Examiner respectfully disagrees. The Applicant’s argument is conclusory. The Applicant has provided no evidence supporting the statement to “improve existing technologies (such as unified and indiscriminate security promotion).” Again, the Applicant’s analog task of providing training is merely an abstract idea that fails to provide any technological advancement. As such, the argument is not persuasive.
The Applicant respectfully argues “According to the relevant considerations for incorporating judicial exceptions into practical applications as stipulated in MPEP 2106.04 (d) (1), the above technical features integrate judicial exceptions into practical applications. Amended claim 1 also recites, in relevant part, “controlling a gas indoor device to perform, at the gas safety detection frequency corresponding to the user type, a safety monitoring on the gas-consuming end of each user type, based on the gas safety detection frequency corresponding to the user type”. Amended claim 1 has linked the judicial exception of “determining the gas safety detection frequency” with the technical field of “indoor gas safety physical monitoring” and added a meaningful restriction. Specifically, amended claim 1 uses the gas safety detection frequency to directly control the gas indoor device to perform specific physical monitoring operations. On the one hand, the limitation imposes judicial exceptions on specific machines (the gas indoor device) that are indispensable in amended claim 1. On the other hand, the limitation can achieve “based on user behavior feedback and data analysis, dynamically adjust the detection frequency of physical security device to achieve intelligent and differentiated security monitoring”, and improve existing technologies (such as fixed, unchanging detection frequency). According to the relevant considerations for incorporating judicial exceptions into practical applications as stipulated in MPEP 2106.04 (d) (1), the above technical features integrate judicial exceptions into practical applications.”
The Examiner respectfully disagrees. The Applicant’s argument appears conclusory and fails to identify any technological advancement with regard to the “specific machines,” or details such that the claim reflects an improvement in the functioning of a computer, or an improvement to another technology or technical field.
Regardless of the conclusory nature of the argument, the Applicant’s claims are not considered a “Practical Application,” because the claims do not provide any of the following:
• An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
• Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
• Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
• Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
• Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e).
Furthermore, there are also several factors that reasonably explain that the Applicant’s claims are not indicative of integration into a practical application, which include:
• Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
• Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
• Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
Here, the Applicant’s claims are not providing any technological advancement as described in the first five bulleted factors and, as described above in the rejection, the Applicant’s claims are merely claimed to use a computer as a tool to perform an abstract idea and to generally link the use of a judicial exception to a particular technological environment or field of use. As such, the argument is not persuasive.
The Applicant respectfully argues “Moreover, the above technical features are similar to claim 2 in MPEP example 45 (injection mold controller), which link judicial exceptions with technical fields and improve existing technology by generating control instructions based on judicial exceptions (a calculation or analysis result) to control a physical device to perform specific operations. Similar to claim 2 in Example 45, amended claim 1 recites “pushing the training object with a duration equal to the training time to users through the user terminal corresponding to the user type” and “controlling a gas indoor device to perform, at the gas safety detection frequency corresponding to the user type, a safety monitoring on the gas-consuming end of each user type”. Therefore, considering that claim 2 in Example 45 is integrated into practical applications, amended claim 1 is also integrated into practical applications.”
The Examiner respectfully disagrees. Although “the examples” consist of hypothetical cases that may parallel Supreme Court decisions and Federal Circuit decisions, the examples are not considered precedential and are not fully considered as binding precedent on the USPTO. That being said, the Applicant’s argument with regard to “Example 45” does not super cede the Examiner’s subject-matter eligibility analysis using precedential Supreme Court decisions and Federal Circuit decisions. As such, the argument is not persuasive.
The Applicant respectfully argues “In summary, amended claim 1 as a whole has achieved a technical closed loop of “training-feedback-monitoring”, bringing about overall technical effects. Amended claim 1 not only enables independent control over the user terminal and gas indoor devices, but also utilizes feedback information to adjust the detection frequency of physical devices. Amended claim 1 has established a linkage mechanism between human-machine interaction and physical device control, enabling the intensity of physical safety monitoring to be intelligently adjusted based on the safety awareness and behavior (reflected through feedback information) of users, thereby optimizing the resource allocation and operational efficiency of the entire gas safety management loT system. Therefore, amended claim 1 as a whole integrates judicial exceptions into practical applications, and amended claim 1 does not point to judicial exceptions. Therefore, the additional features in amended claim 1 have integrated the abstract concepts listed into practical applications.”
The Examiner respectfully disagrees. As previously discussed above, the Applicant’s claims are not providing any technological advancement as described above in the rejection. Instead, the Applicant’s claims are merely claimed to use a computer as a tool to perform an abstract idea and to generally link the use of a judicial exception to a particular technological environment or field of use. As such, the argument is not persuasive.
The Applicant respectfully argues “Thus, even if amended claim 1 is directed to a judicial exception, amended claim 1 applies, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that amended claim 1 is more than a drafting effort designed to monopolize the judicial exception. Accordingly, amended claim 1 is not directed to an abstract idea.”
The Examiner respectfully disagrees. Questions of preemption are inherent in the two‐part framework from Alice Corp. and Mayo (incorporated as Steps 2A and 2B), and are resolved by using this framework to distinguish between preemptive claims, and “those that integrate the building blocks into something more…the latter pose no comparable risk of pre‐emption, and therefore remain eligible”. It should be kept in mind, however, that while a preemptive claim may be ineligible, the absence of complete preemption does not guarantee that a claim is eligible. In the present case, as previously explained above under the two‐part framework from Alice Corp. and Mayo, the Applicant’s claims do not provide anything "significantly more.” The claims as amended are not broadly written to pre-empt, such that others can practice them. It is due to the generic nature of the limitations being claimed using a generic computer performing the claimed abstract idea that supports the determination of a lack of subject-matter eligibility. As such, the argument is not persuasive.
The Applicant respectfully argues “Independent claims 10 and 17, as amended, recite features similar to those of claim 1, and thus, are also not directed to an abstract idea for at least the reasons set forth above with respect to claim 1 and for the additional features cited therein. Therefore, Applicant respectfully submits that amended independent claims 1, 10, and 17, as well as the dependent claims 2-9, 11-13, and 15-16, are not directed to an abstract idea.”
The Examiner respectfully disagrees for the reasons provided here and above in the rejection. As such, the argument is not persuasive. Therefore, the rejection of claims 1, 10 and 17 under 35 U.S.C. §101 are not withdrawn.
Claims 5 and 6:
The Applicant respectfully continues to argue with regard to Practical Application as applied to claims 5 and 6. However, the Examiner respectfully disagrees. Specifically, claims 5 and 6 also fail to provide a practical application and merely claims to use a computer as a tool to perform an abstract idea and to generally link the use of a judicial exception to a particular technological environment or field of use. As such, the argument is not persuasive.
Step 2B. The Claims Meet The “Significantly More” Requirements
Claim 1:
The Applicant respectfully argues “As discussed above, Applicant's claims are not directed to an abstract idea. Thus, the “significantly more’ inquiry under the Alice test does not even apply to Applicant's claims. Even assuming arguendo that the pending claims are directed to an abstract idea, which Applicant does not concede, the Office fails to satisfy the “significantly more” inquiry of Step 2B.
M.P.E.P. § 2106.05 sets forth a number of examples that “the courts have found to qualify as ‘significantly more’ when recited in a claim with a judicial exception.” The examples include “[i]Jmprovements to the functioning of a computer’ or “[a]dding a specific restriction other than what is well-understood, routine, conventional activity in the field, or adding unconventional steps that confine the claim to a particular useful application."* Applicant respectfully submits that even if amended claim 1 was drawn to an abstract idea, which it is not, the rejection is improper because claim 1 recites elements that qualify as “significantly more” under at least these considerations endorsed by M.P.E.P. § 2106.05.
Therefore, Applicant submits that amended independent claim 1 is not directed to an abstract idea, and even assuming that the claim is directed to an abstract idea (which Applicant does not concede), the claim amounts to significantly more than the abstract.”
The Examiner respectfully disagrees. As previously stated above, the claims do not include additional elements that either alone or in combination are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g. “a smart gas user platform,” “a smart gas service platform,” “a smart gas safety management platform,” “a smart gas indoor device sensor network platform,” and “a smart gas indoor device object platform,” are claimed, these are generic, well-known, and conventional data gather computing elements. As evidence that these are generic, well-known, and a conventional data gathering computing element (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known, the Applicant’s specification discloses these in a manner that indicates that the additional element is sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a), per MPEP § 2106.07(a) III (a).As such, the argument is not persuasive
The Applicant respectfully argues “The claimed invention meets the improvements to another technology, and thus qualifies as “significantly more’ under M.P.E.P. § 2106.05. Amended claim 1 recites “specific restriction[s] other than what is well- understood, routine, [and] conventional activity in the field,” and recites “sending the gas safety training program to a smart gas user platform, to push, based on the push frequency, the training object with a duration equal to the training time to users through a user terminal corresponding to the user type” and “controlling a gas indoor device to perform, at the gas safety detection frequency corresponding to the user type, a safety monitoring on the gas-consuming end of each user type, based on the gas safety detection frequency corresponding to the user type”. As further described below, claim 1 is patentable over the technology described in the cited art and consequently includes elements other than what is “well-understood, routine, [and] conventional . . . in the field.”
The above features are not well-known routine activities or steps in this field. Therefore, these above elements in amended claim 1 also provide specific improvements over prior systems. As mentioned in Step-2A prong two, existing technologies have not addressed the additional elements of amended claim 1 (for example, different types of gas safety training programs are pushed to corresponding users through the user terminal, and for another example, the detection frequency of the gas indoor device on gas-consuming end can be adjusted based on the feedback information of users).
It can be seen that the additional elements in amended claim 1 are not universally applicable in this field, and amended claim 1 has also achieved additional technical effects, thus clearly possessing “significantly more” content.”
The Examiner respectfully disagrees. As previously explained above, arguments with regard to “patentable over the technology described in the cited art” are best suited for arguing rejections under 35 U.S.C. §§ 102 and 103. The test for 35 U.S.C. § 101 subject-matter eligibility requires claims to be examined using the “two-part Mayo test” for determining subject-matter eligibility, as previously performed above. As such, the argument is not proper for facilitating a 35 U.S.C. § 101 subject-matter eligibility discussion.
Second, the Applicant is misconstruing the proper analysis under 35 U.S.C. § 101. The lack of prior art, clearing the claims of any 35 U.S.C. §§102 or 103 rejections, is not evidence of subject-matter eligibility under 35 U.S.C. §101.
Third, the Applicant’s “additional technical effects” of “different types of gas safety training programs” that “can be adjusted based on the feedback information of users,” is not part of the “significantly more” analysis. Again, the Applicant’s claims provide generic, well-known, and conventional data gather computing elements to carry out an abstract idea. As such, the argument is not persuasive.
The Applicant respectfully argues “The rejection is factually flawed because the Office fails to offer a reasoned explanation or provide the necessary facts to show why Applicant’s claims are “well-understood, routine, and conventional,” as required by the recent U.S. Patent and Trademark Office Memorandum dated April 19, 2018 discussing Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir., 2018) (the “Berkheimer Memorandum’).
In the Berkheimer Memorandum, the Office emphasized that “as set forth in M.P.E.P. § 2106.05(d)(I), an examiner should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry." Moreover, in the Berkheimer Memorandum, the Office further instructs that a claim is presumed to recite significantly more unless proven otherwise. Specifically, “[i]Jn a Step 2B analysis, an additional element (or combination of elements) is nof well- understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with: (1) A citation to an express statement in the specification or a statement made during prosecution about the element(s); (2) A citation to a court decision in M.P.E.P. § 2106.05(d)(II) which notes the well- understood, routine, or conventional nature of the element(s); (3) A citation to a publication that demonstrates the well-understood, routine, or conventional nature of the element(s); [or] (4) A statement that the Examiner is taking Official Notice.””
However, Applicant respectfully submits that the Office does not provide any of the above four categories of evidence required by the Berkheimer Memorandum, Applicant has amended the independent claims extensively in order to advance prosecution. As elaborated above, amended claims are directed to significantly more than such a generic characterization. The Office, therefore, fails to meet the necessary burden outlined in the Berkheimer Memorandum that requires a showing that the claims are “well-understood, routine, or conventional.”
The Examiner respectfully disagrees. The Applicant has misconstrued the requirements of “Berkheimer,” and is expressly urged to review MPEP § 2106.07(a) III (a), which will explain that the Examiner’s has satisfied his evidentiary burden by citing the Applicant’s written description of the specification as originally filed. Specifically, the memo listed four (4) options to provide evidential support for basing a rejection under a step 2B analysis. These options include: Option 1 – Statement(s) by Applicant; Option 2 – Court Decisions in MPEP § 2106.05(d)(II); Option 3 – Publication(s); and Option 4 – Official Notice. In the present case, Option 1 was used, which required an explanation based on an express statement in the specification that demonstrates the well-understood, routine, conventional nature of the additional element(s), since a specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional element(s) as conventional (or an equivalent term); as a commercially available product; or, in a way that shows the element is widely prevalent or in common use. In Applicant’s case, it is the lack of information in the specification that demonstrates the additional elements being claimed must be sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112, first paragraph. As such, the Examiner has met his burden by factually supporting the step 2B analysis and concluding that the claims do not meet subject-matter eligibility. Therefore, the argument is not persuasive and the 35 U.S.C. §101 rejections are not withdrawn.
The Applicant respectfully argues “Independent claims 10 and 17, as amended, recite features similar to those of claim 1, and thus, are also not directed to an abstract idea for at least the reasons set forth above with respect to claim 1 and for the additional features cited therein. Therefore, Applicant respectfully submits that amended independent amended claims 1, 10, and 17, as well as the dependent claims 2-9, 11-13, 15- 16, and 18-19 meet the “Significantly More” requirements.”
The Examiner respectfully disagrees for the reasons provided here and above in the rejection. As such, the argument is not persuasive. Therefore, the rejection of claims 1, 10 and 17, as well as the dependent claims 2-9, 11-13, 15- 16, and 18-19 under 35 U.S.C. §101 are not withdrawn.
Claims 5 and 6:
The Applicant respectfully continues to argue with regard to Significantly More as applied to claims 5 and 6. However, the Examiner respectfully disagrees. Specifically, the features described in claims 5 and 6 also fail to provide anything significantly more and merely claims the use of well-understood, routine, conventional additional element(s). As such, the argument is not persuasive.
The Applicant respectfully argues “In view of the foregoing, Applicant respectfully requests that the Office reconsider and withdraw the rejections of claims 1-17 under 35 U.S.C. § 101 because the claimed invention is allegedly directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.”
The Examiner respectfully disagrees for the reasons provided here and above in the rejection. As such, the argument is not persuasive. Therefore, the rejection of claims 1-17 under 35 U.S.C. §101 are not withdrawn.
New Claims 18 and 19
The Applicant respectfully argues with regard to unexamined claims 18-19. The Examiner respectfully declines to respond to these arguments, since the claims have not been examined. In other words, the premature arguments are not ripe for a response and lack standing.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT P BULLINGTON whose telephone number is (313)446-4841. The examiner can normally be reached Mon.-Fri. 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, Peter Vasat can be reached on (571) 270-7625. 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.
/Robert P Bullington, Esq./
Primary Examiner, Art Unit 3715
Prosecution Insights