DETAILED ACTION
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11/644,310. Although the claims at issue are not identical, they are not patentably distinct from each other because of the obvious and minor variation in the scope of the claims. As such, it would have been obvious to a person of ordinary skill in the art at the time of the invention to have written the claims in obvious variation to have similar scope in claims.
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.
4. Claims 1-15 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 being integrated into a practical application and do not include additional elements that amount to significantly more than the judicial exception.
Utilizing the two step process adopted by the Supreme Court (Alice Corp vs CLS Bank Int'l, US Supreme Court, 110 USPQ2d 1976 (2014) and the recent 101 guideline, Federal Register Vol. 84, No., Jan 2019)), determination of the subject matter eligibility under the 35 USC 101 is as follows: Specifically, the Step 1 requires claim belongs to one of the four statutory categories (process, machine, manufacture, or composition of matter). If Step 1 is satisfied, then in the first part of Step 2A (Prong one), identification of any judicial recognized exceptions in the claim is made. If any limitation in the claim is identified as judicial recognized exception, then proceeding to the second part of Step 2A (Prong two), determination is made whether the identified judicial exception is being integrated into practical application. If the identified judicial exception is not integrated into a practical application, then in Step 2B, the claim is further evaluated to see if the additional elements, individually and in combination, provide “inventive concept” that would amount to significantly more than the judicial exception. If the element and combination of elements do not amount to significantly more than the judicial recognized exception itself, then the claim is ineligible under the 35 USC 101.
Looking at the claims, the claims satisfy the first part of the test 1A, namely the claims are directed to one of the four statutory class, namely method. In Step 2A Prong one, we next identify any judicial exceptions in the claims. In Claim 1 (as a representative example), we recognize that the limitations “determining a location of the mobile device using location information, detecting a first change of the measured atmospheric condition that exceeds a threshold value of change; and in response to detecting the first change of the measured atmospheric condition, determining the estimate of the currently unknown altitude of the mobile device using an estimate of movement by the mobile device without using the measured atmospheric condition,” are abstract ideas, as they involve mental process. The limitations “determining the estimate of the currently unknown altitude….known barometric formula” is additionally an abstract idea as they involve usage of mathematical concept. Similar rejections are made for other independent and dependent claims. With the identification of abstract ideas, we proceed to Step 2A, Prong two, where with additional elements and taken as a whole, we evaluate whether the identified abstract idea is being integrated into a practical application.
In Step 2A, Prong two, the claims additionally recite “measuring an atmospheric condition at the location of the mobile device using an atmospheric condition sensor of the mobile device,” “the atmospheric condition sensor is a temperature sensor, a pressure sensor, a humidity sensor or a gas sensor,” “the measure atmospheric condition is temperature, pressure, or air density,” “inertial sensor of the mobile deice or using terrestrial or satellite ranging signals received by the mobile device from transmitters at known locations or a satellite system,” but said limitations are merely directed to insignificant data collection activity, recited at high level of generality. The claims do not improve the functioning of any sensors, and do not improve other technology. At most, the claims are an improved abstract idea of estimating the altitude of a mobile device. However, improved or new abstract ideas are still abstract ideas, and not eligible under the 101. As such, the abstract idea is not integrated into a practical application. Consequently, with the identified abstract idea not being integrated into a practical application, we proceed to Step 2B and evaluate whether the additional elements provide “inventive concept” that would amount to significantly more than the abstract idea.
In Step 2B, the claims additionally recite “measuring an atmospheric condition at the location of the mobile device using an atmospheric condition sensor of the mobile device,” “the atmospheric condition sensor is a temperature sensor, a pressure sensor, a humidity sensor or a gas sensor,” “the measure atmospheric condition is temperature, pressure, or a air density,” “inertial sensor of the mobile deice or using terrestrial or satellite ranging signals received by the mobile device from transmitters at known locations or a satellite system,” but said limitations are merely directed to insignificant data collection activity, recited at high level of generality that are well-understood, routine and conventional. As such, the claims do not provide additional elements that would amount to significantly more than the abstract idea.
In Summary, the claims recite abstract idea without being integrated into a practical application, and do not provide additional elements that would amount to significantly more than the abstract idea. As such, taken as a whole, the claims are ineligible under the 35 USC 101.
Response to Arguments
Applicant's arguments filed 03/24/2026 have been fully considered but they are not persuasive.
In Response to the 101 rejection, the Examiner respectfully disagrees. The identified limitations using various functional limitations, such as “determining a first change of the measured atmospheric condition that exceeds a threshold value of change,” is an abstract idea, as it can simply done mentally. The claims do not recite any complexity to prevent any exercising of mental process. Additionally, the claims recite barometric formula,” but said limitation is an abstract idea, as it recites mathematical concept. Under Step 2A, Prong two, the claims additionally recite various non-abstract limitations, including various sensors such as atmospheric sensor and temperature, pressure sensor, terrestrial or satellite ranging signals received by the mobile device, etc., but said limitations, recited at high level of generality, are merely directed to insignificant data collection activity. These sensors and devices are also not particular machines; rather, they are generic sensors and machines, unlike a particular machine like Fourdrinier machine, which has a specific structure (see MPEP 2106.05). There is no improvement in the any machines or sensors themselves, as they are simply used to collect data. There is also no improvement in the technology, since the claimed invention is recited ambiguously and does not recite the alleged improvement. Further explaining, the claimed invention recites determining the estimate of the currently unknown altitude using an estimate of the movement by the mobile device without using the measured atmospheric condition. However, this cannot be true, since the said determination is triggered in response to the measured atmospheric condition and its changes. Without the results from the measured atmospheric condition to begin with, there can be no estimation of any claimed altitude. In other words, the determination of the altitude is made using the atmospheric measured condition contrary to what the claim recites. With such ambiguousness, there can be no improvement in the technology. As such, the abstract idea is not integrated into a practical application. In Step 2B, the claims additionally recite various sensors etc., but said additional elements are all well-understood, routine and conventional (as evidenced at least by Yumito and Wolf). As such the claims do not recite additional elements that would amount to significantly more than the abstract idea. For these reasons, the 101 rejection is maintained.
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 HYUN D PARK whose telephone number is (571)270-7922. The examiner can normally be reached 11-4.
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/HYUN D PARK/Primary Examiner, Art Unit 2857
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