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 .
Examiner’s Remarks.
This final office action is in response to the newly added amendment of January 23, 2026.
Claims 2-6, 11-34, 36, 41, 43, 45 and 47 are canceled.
Claims 1, 7-10, 35, 37-40, 42, 44, 46, and 48 are presented for examination.
Based on the newly submitted amendment and arguments, Examiner has made this office action final. Examiner formally withdraws the rejection under USC 102 but asserts, based on the new amendment, that a new rejection under USC 101 is issued. See infra: This action is made final.
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, 7-10, 35, 37-40, 42, 44, 46, and 48 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”.
Claims 1, 7-10, 35, 37-40, 42, 44, 46, and 48 are directed to Abstract Idea such as an idea standing alone such as an instantiated concept, pan or scheme, as well as a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper for example.
The limitations, as drafted, under their broadest reasonable interpretation, cover performance of the limitations in the mind or by a human. The Examiner notes that under MPEP 2106.04(a)(2)(III), the courts consider a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 ("‘[M]ental processes and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same).
The apparatus and the method claim 1 35 and 37 recites limitation, “obtaining an available state…. obtaining configuration information about one or more specified reference signals from a specified information block the specified information block is an SIB-X is not 1…. obtaining the available state of the specified reference signals… obtaining a send state… indicate the configuration information of specified reference signals are valid… reference signals are in a send state…”.
Since the claim is directed to a process and a machine, which is one of the statutory categories of the invention (Step 1: YES).
The claim is then analyzed to determine whether it is directed to any judicial exception. The claim recites, “obtaining an available state…. obtaining configuration information about one or more specified reference signals from a specified information block the specified information block is an SIB-X is not 1…. obtaining the available state of the specified reference signals… obtaining a send state… indicate the configuration information of specified reference signals are valid… reference signals are in a send state”. The obtaining step recited in the claim is no more than an abstract idea i.e., mental process of “specified reference signals are in a send valid state” where claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished, etc., (See specifically MPEP 2106.05 (f) Sec 1. (Step 2A: Prong One Abstract Idea=Yes).
The claim is then analyzed if it requires an additional elements or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception – i.e., limitation that are indicative of integration into a practical application: improving to the functioning of a computer or to any other technology or technical field. In the current claims, there is no additional elements that would integrate the abstract idea into a practical application (Step 2A: Prong Two Abstract Idea=Yes).
Next the claim as a whole is analyzed to determine if there are additional limitation recited in the claim such that the claim amount to significantly more than an abstract idea. The claim requires the additional limitation of a computer with the central processing unit, memory, a printer, an input and output terminal and a program. These generic computer components are claimed to perform the basic functions of storing, retrieving and processing data through the program that enables. In the current scenario, there are no additional elements that would amount to significantly more than the abstract idea. Therefore, the claim does not amount to significantly more than the abstract idea itself (Step 2B: No). Accordingly, the claim is not patent eligible.
Further, dependent claims do not add any positive limitation or step that recite within the scope of the claim and does not carry patentable weight they are also rejected for the same reasons as independent claims.
Accordingly, under its broadest reasonable interpretation, covers performance of the limitations in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes”/” Mathematical concepts” grouping of abstract ideas. Accordingly, the claim(s) recites an abstract idea.
This judicial exception is not integrated into a practical application as recited in Claims1, 7-10, 35, 37-40, 42, 44, 46 and 48.
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 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.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIANE D MIZRAHI whose telephone number is 571- 272-4079. The examiner can normally be reached on 7:30-3:30 PM (7:30 - 4:30 p.m.).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison T. Slater can be reached on (571) 270-0375. The fax phone numbers for the organization where this application or proceeding is assigned are (703) 872-9306 for regular communications and for After Final communication.
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/DIANE D MIZRAHI/Primary Examiner, Art Unit 2647
Diane.Mizrahi@USPTO.gov