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 .
Response to Amendment
The amendment filed 07/16/2025 has been entered. Applicant has amended claims 1-2 and 4-5. No claims have been cancelled or added. Claims 1-5 are currently pending in the instant application.
Response to Arguments
Applicant's arguments filed 07/16/2025 have been fully considered but they are not persuasive.
Regarding the arguments concerning the 35 U.S.C. 112(f) interpretation, the examiner respectfully disagrees, the terms “computing unit” recite generic placeholders that are not preceded by a structural modifier. The terms are followed by functional language without reciting sufficient structure. Furthermore, the terms are not terms of the art and the applicant has failed to produce any rationale beyond the mere statement of that it is a term of art.
Regarding the arguments concerning the 35 U.S.C. 112(b) rejection, the examiner respectfully disagrees, the term “computing unit” recite a generic placeholder that are not preceded by a structural modifier. The terms are followed by functional language without reciting sufficient structure. The claims and specification do not provide any sufficient structure.
Regarding the argument concerning the 35 U.S.C. 101 rejection, the examiner respectfully disagrees. The claim merely states the program is executed by a system, the recitation of a processor does not overcome the product encompassing non-statutory forms (the claimed “commands” is still directed towards software per se) . Examiner recommends to amend the claim to include a structural embodiment of the software to overcome the current rejection such as a non-transitory computer-readable medium.
Regarding the arguments concerning the 35 U.S.C. 103 rejection, the examiner respectfully disagrees. Applicant specifically argues the limitations concerning context subspace and the private and public component. Applicant argues that there is a plurality of subspaces of both private and public. The claim is only directed towards a singular private and public component. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993) (Claims to a superconducting magnet which generates a "uniform magnetic field" were not limited to the degree of magnetic field uniformity required for Nuclear Magnetic Resonance (NMR) imaging. Although the specification disclosed that the claimed magnet may be used in an NMR apparatus, the claims were not so limited.); Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571-72, 7 USPQ2d 1057, 1064-1065 (Fed. Cir.), cert. denied, 488 U.S. 892 (1988) (Various limitations on which appellant relied were not stated in the claims; the specification did not provide evidence indicating these limitations must be read into the claims to give meaning to the disputed terms.); Ex parte McCullough, 7 USPQ2d 1889, 1891 (Bd. Pat. App. & Inter. 1987) (Claimed electrode was rejected as obvious despite assertions that electrode functions differently than would be expected when used in nonaqueous battery since "although the demonstrated results may be germane to the patentability of a battery containing appellant’s electrode, they are not germane to the patentability of the invention claimed on appeal.").
Examiner recommends further amendments to clarify the public and private components.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “computing unit” in claims 1-5
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 1-5 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.
Claim limitation “input unit” and “computing unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification and the drawing merely repeat the claim language but does not recite any structural components. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 5 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claim is directed to a product that does not have a physical or tangible form, such as a computer program per se (often referred to as "software per se") when claimed as a product without any structural recitations. The claim merely states the program is executed by a system, the recitation of a processor does not overcome the product encompassing non-statutory forms (the claimed “commands” is still directed towards software per se) . Examiner recommends to amend the claim to include a structural embodiment of the software to overcome the current rejection such as a non-transitory computer-readable medium.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fontaine et al (feedback on kiss a tool for end-user development of intelligent homes) in view of Baddour et al (CIM-CSS: A Formal Modeling Approach to Context Identification and Management for Intelligent Context-Sensitive Systems).
Regarding claim 1, Fontaine discloses:1. A method for assisting with the specification of a context-adaptive behavior of a system by an end user, the method comprising the following steps: provision of a first computing unit, the first computing unit being configured for the inputting of items of information by the end user (pg 154 last paragraph, reference to contextual menus), provision of a sensor system, the sensor system being configured to capture at least one item of context information in the surroundings of the end user (pg 156 last paragraph, shows the end users), provision of a second computing unit, the second computing unit being configured to receive the items of information provided at the first computing unit and to receive the items of context information captured by means of the sensor system, the computing unit furthermore being configured to create a situation description from the items of context information captured by means of the sensor system and to create a context subspace (pg 155, lst paragraph), capture of at least one item of context information in the surroundings of the end user by means of the sensor system, creation of a context subspace by means of the computing unit, the context subspace specifying all possible states of context entities and their context relationships to one another, the state of a context entity being described by at least one context attribute, the possible values of the context attribute being specified by a data type, the context relationships being described by at least one context attribute, the possible values of the context attribute being specified by a data type, context attributes of context entities and context attributes of context relationships being described by means of the items of context information captured by the sensor system, the context subspace describing an extract from a context model that can describe a situation under all possible circumstances, the context subspace being defined by means of a query language that directly represents an underlying metamodel, the query language providing a query for context entities of a particular type and features for inspection, taking into consideration the inheritance hierarchies defined in the metamodel, and the query language furthermore providing a query for relationships between context entities and features for inspection (pg 155 last paragraph SPARQL queries are executed dynamically to identify observable and display terminals in the environment), a definition of the context subspace by means of the query language being composed of at least one public component and one private component, describing a predefined situation description, it being possible to retroactively extend the public component of the definition of the context subspace in the query language such that refinements can be added to the definition by the end user, refinement of the predefined situation description by the end user by inputting of items of information using the first computing unit (pg 155 left and right column), termination of the refinement by the end user, combination of the private components and the public components of the definition of the context subspace, and of the extension resulting from the refinement by the end user, into a query in the query language, compilation of the query by the second computing unit using a context server, execution of the query by means of the second computing unit pg 155 right column).
Fontaine does not explicitly teach the private component defining the underlying connections between the context entities and their relationships, which make up a context subspace, so that the connections between the entities and their relationships are concealed from the end user, and the public component marking parts the definition which can be made known to the end user and which can be refined by the end user,
Baddour teaches the private component defining the underlying connections between the context entities and their relationships, which make up a context subspace, so that the connections between the entities and their relationships are concealed from the end user (pg 15 contexts and that one is temporal. The ContextIsNotRelatedWithItself constraint ensures that a relationship between a context and itself cannot be defined. The ContextIsMonitorableIfSupporedByFactsstates that a context is monitorable if and only if it can be specified by a set of facts supporting it. The AcquiredContextFromSourceIsFact ensures that all contexts acquired through a context source are facts, These options are not seen by the end-user and only the system desginer) and the public component marking parts the definition which can be made known to the end user and which can be refined by the end user (Figure 11 - The CIM3.gmftool tooling definition model was derived from the Ecore model using the GMF dashboard. This model defined the elements of the diagram palette, as shown in the tool bar in Figure 11, The dashboard shows that the parts in the workspace are editable in the GUI).
Accordingly, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to have modified the teachings of Fontaine to include the private component defining the underlying connections between the context entities and their relationships, which make up a context subspace, so that the connections between the entities and their relationships are concealed from the end user, and the public component marking parts the definition which can be made known to the end user and which can be refined by the end user as taught by Baddour. It would be advantageous since it allows for this model to be composed of customizable elements for modeling the context in the identification and management activities (Baddour pg 17).
Claims 2 and 5 are rejected using similar reasoning seen in the rejection of claim 1 due to reciting similar limitations but directed
Regarding claim 3, Fontaine in view of Baddour teaches The system according to claim 2, Fontaine further teaches wherein the sensor system comprises at least one sensor, the sensor being selected from the group comprising: optical sensors, audio sensors, motion sensors, acceleration sensors, locating sensors, magnetic field sensors, orientation sensors, proximity sensors, touch sensors, sensors for temperature, humidity and air pressure, weight sensors, sensors for identifying an activity, gas sensors, odor sensors, biosensors, in particular sensors for capturing vital parameters (pg 155 right column)
Regarding claim 4, Fontaine in view of Baddour teaches The system according to claim 2, Fontaine further teaches characterized in that the input unit comprises at least one touch-sensitive screen and/or one touch-sensitive panel (pg 155 right column).
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 SAMUEL SHARPLESS whose telephone number is (571)272-1521. The examiner can normally be reached M-F 7:30 AM- 3:30 PM (ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SANJIV SHAH can be reached at (571)272-4098. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.C.S./Examiner, Art Unit 2166
/KHANH B PHAM/Primary Examiner, Art Unit 2166