DETAILED ACTION
Examiner's Note: The Examiner has pointed out particular references contained in the prior art of record within the body of this action for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply. Applicant, in preparing the response, should consider fully the entire reference as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
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 Arguments
Applicant’s remarks filed on 07/13/2026 have been fully considered.
Regarding claim[s] – 13, 15, 16, 20 – 23 under the non – statutory subject matter rejection – abstract idea, applicant’s remarks are not persuasive, therefore, see the examiner’s response to such remarks in the office action below.
Applicant states on page[s] 7 of the remarks as filed: “
Claims 1, 20, and 22 were rejected under 35 U.S.C. § 101 as being directed to an abstract idea without significantly more. Applicant respectfully traverses the Examiner's rejection of claims 1, 20 and 22 under 35 U.S.C. 101
Claim 1:
Step one of the Alice/Mayo test asks whether the claim is directed to one of the four statutory categories. The Examiner did not address this question. Claim 1 recites a wireless device, comprising: an analog-to-digital converter (ADC), a selective encryption enable circuit, an encryption circuit, and a multiplexer and therefore is clearly directed to an machine-one of the four statutory categories. Furthermore, when viewed as a whole, the eligibility of the claim is self-evident.
Step 2A of the Alice/Mayo test asks whether the claim is directed to a law of nature, a natural phenomenon, or an abstract idea. The Examiner stated claim 1 "is directed to an abstract idea: Mathematical Concepts: mathematical relationship or calculation: encryption without significantly more."
The applicant respectfully disagrees with this conclusory statement. Claim 1 is not directed to a mathematical relationship or calculation, but merely involves encryption. Some encryption methods, such as substitution ciphers, do not even involve mathematical relationships.”
In response, the examiner isn't persuaded, the examiner points out regarding
claims # 1, was rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea: Mathematical Concepts: mathematical relationship or calculation: encryption without significantly more.
For example, in claim 20, at lines 5 – 6, the claim limitation of:
“encrypting, by an encryption circuit, selected ones of the digital signals to produce encrypted signals responsive to receiving, by the encryption circuit, an encryption enable signal from a selective encryption enable circuit;”
This judicial exception is not integrated into a practical application because the use of encryption is implemented as a mathematical algorithm that constitutes a mathematical relationship or calculation which is an abstract idea.
Applicant states on page[s] 8, 9, of the remarks as filed: “While claim 1 does not reference any mathematical relationship, even if encryption were found to reference a mathematical relationship, it should still be found to not recite a judicial exception under a proper analysis of Step 2A of the Alice/Mayo test. The USPTO's August 4, 2025 memorandum "Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101" provides explicit guidance on "Distinguishing claims that recite a judicial exception from claims that merely involve a judicial exception." The memorandum states, "Examiners should be careful to distinguish claims that recite an exception (which require further eligibility analysis) from claims that merely involve an exception (which are eligible and do not require further eligibility analysis). Consider for example, the published USPTO examples 39, which illustrates claim limitations that merely involve an abstract idea, and 47, which shows limitations that recite an abstract idea. 10 The claim limitation 'training the neural network in a first stage using the first training set' of example 39 does not recite a judicial exception. Even though 'training the neural network' involves a broad array of techniques and/or activities that may involve or rely upon mathematical concepts, the limitation does not set forth or describe any mathematical relationships, calculations, formulas, or equations using words or mathematical symbols. Contrast this with the limitation 'training, by the computer, the ANN based on the input data and a selected training algorithm to generate a trained ANN, wherein the selected training algorithm includes a backpropagation algorithm and a gradient descent algorithm' of claim 2 of example 47. This limitation requires specific mathematical calculations by referring to the mathematical calculations by name, i.e., a backpropagation algorithm and a gradient descent algorithm, and therefore recites a judicial exception, namely an abstract idea." (Emphasis added and internal citations omitted.) From the foregoing memorandum, claim 1 is much more closely aligned to example 39, which is held to not recite a judicial exception as the claimed encryption circuit, while it may involve, in some embodiments, techniques that involve mathematical concepts, "does not set forth or described any mathematical relationships, calculations, formulas, or equations using words of mathematical symbols." Even if claim 1 is held to be directed to a judicial exception, which it is not, Step 2B of the Alice/Mayo test would still find the claim patentable for reciting additional elements that amount to significantly more than a judicial exception. Claim 1 recites a wireless device, comprising: an analog-to-digital converter (ADC), a selective encryption enable circuit, an encryption circuit, and a multiplexer-each element a hardware element that improves devices by selectively encrypting certain digital words from the ADC. When claims specify operations implemented in particular machines or hardware elements rather than abstract mathematical operations, the claim is not directed to an abstract idea. Diamond V. Diehr, 450 U.S. 175 (1981), establishes that a device implemented on a particular machine with specific operational constraints is not per se directed to an abstract idea. Alice Corp. V. CLS Bank Int'l, 573 U.S. 208 (2014), reinforces that claims tied to a particular machine implementing technological solutions are more likely patent-eligible than abstract algorithms divorced from hardware implementation. Claim 1 presents each operational element as performed by specific hardware, not generic components. The Federal Circuit explained in Thales Visionix, Inc. V. United States, 850 F.3d 1343, 1348-49 (Fed. Cir. 2016), "A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept." For the foregoing reasons, the applicant respectfully submits that proper application of the Alice/Mayo test shows claim 1 is statutory subject matter that is not directed to a judicial exception, and respectfully requests allowance of claim 1 and claims 2-13, 15, and 16 which depend from and further limit independent claim 1.”
In response, the examiner isn't persuaded, the examiner points out regarding
claims # 1, 22, applicant has amended a "wireless device," in the pre-able. The such
claim amendment does not further limit the claim. Specifically, such claim amendment
does not further limit the body of the claim. The pre-amble is given weight only
necessary to give life to the claim language in the body of the claim. [see MPEP
2111.02.]
***The examiner notes in the interest of moving prosecution forward in the
application - to overcome the non - statutory subject matter rejection - abstract idea,
by massaging the claim language in a manner that indicates an IOT device implements
such steps of the method [i.e. claim # 16] and the method in how the inputs are
selectively chosen…etc.
2111.02 Effect of Preamble [R-07.2022]
The determination of whether a preamble limits a claim is made on a case-by-case
basis in light of the facts in each case; there is no litmus test defining when a preamble
limits the scope of a claim. Catalina Mktg. Int'l V. Coolsavings.com, Inc., 289 F.3d 801,
808, 62 USPQ2d 1781, 1785 (Fed. Cir. 2002). See id. at 808-10, 62 USPQ2d at 1784- 86 for a discussion of guideposts that have emerged from various decisions exploring the preamble's effect on claim scope, as well as a hypothetical example illustrating these principles.
"[A] claim preamble has the import that the claim as a whole suggests for it." Bell Communications Research, Inc. V. Vitalink Communications Corp., 55 F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995). "If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is necessary to give life, meaning, and vitality' to the claim, then the claim preamble should be construed as if in the balance of the claim." Pitney Bowes, Inc. V. Hewlett- Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999). See also Jansen V. Rexall Sundown, Inc., 342 F.3d 1329, 1333, 68 USPQ2d 1154, 1158 (Fed. Cir. 2003) (In considering the effect of the preamble in a claim directed to a method of treating or preventing pernicious anemia in humans by administering a certain vitamin preparation to "a human in need thereof," the court held that the claims' recitation of a patient or a human "in need" gives life and meaning to the preamble's statement of purpose.). Kropa V. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951) (A preamble reciting "[a]n abrasive article" was deemed essential to point out the invention defined by claims to an article comprising abrasive grains and a hardened binder and the process of making it. The court stated "it is only by that phrase that it can be known that the subject matter defined by the claims is comprised as an abrasive article. Every union of substances capable inter alia of use as abrasive grains and a binder is not an 'abrasive article." Therefore, the preamble served to further define the structure of the article produced.).
Regarding the claim amendments to claim 20, here again, applicant's claim amendment of "wireless device," in a method claim [i.e. a process], does not further limit the claim. In a method claim, applicant's recited wireless device is for use with the recited steps of the method.
Applicant states on page[s] 9 of the remarks as filed: “
Claim 20: Amended claim 20 recites a process, which is one of the four statutorily patentable categories. The Examiner stated claim 20 as "directed to an abstract idea: Mathematical Concepts: mathematical relationship or calculation: encryption without significantly more." For the reasons given above with respect to claim 1, the applicant respectfully submits claim 20, like claim 1, is much more closely aligned to example 39, which is held to not recite a judicial exception as the claimed step of encrypting, while it may involve, in some embodiments, techniques that involve mathematical concepts, "does not set forth or described any mathematical relationships, calculations, formulas, or equations using words of mathematical symbols."
For the foregoing reasons, the applicant respectfully submits that proper application of the Alice/Mayo test shows claim 20 is statutory subject matter that is not directed to a judicial exception, and respectfully requests allowance of claim 20 and claim 21 which depends from and further limits independent claim 20.”
In response the examiner isn’t persuaded, the examiner suggests refining what is any specifics as to how the recited “encryption circuit, and selective encryption circuit” encrypts. This could possible provide significantly more or practical application.
Applicant states on page[s] 10 of the remarks as filed: “Claim 22: Amended claim 22 recites a machine, which is one of the four statutorily patentable categories. The Examiner stated claim 22 as "directed to an abstract idea: Mathematical Concepts: mathematical relationship or calculation: encryption without significantly more." For the reasons given above with respect to claim 1, the applicant respectfully submits claim 22, like claim 1, is much more closely aligned to example 39, which is held to not recite a judicial exception as the claimed encryption circuit, while it may involve, in some embodiments, techniques that involve mathematical concepts, "does not set forth or described any mathematical relationships, calculations, formulas, or equations using words of mathematical symbols." For the foregoing reasons, the applicant respectfully submits that proper application of the Alice/Mayo test shows claim 22 is statutory subject matter that is not directed to a judicial exception, and respectfully requests allowance of claim 22 and claim 23 which depends from and further limits independent claim 22.”
In response the examiner isn’t persuaded, the examiner suggests refining what is any specifics as to how the recited “encryption circuit, and selective encryption circuit” encrypts. This could possible provide significantly more or practical application.
Applicant states on page[s] 10 of the remarks as filed: “Claims 24-27: Newly added claims 24-27 recite an Internet of Things device and should be deemed allowable for reasons similar to those stated above with respect to claims 1, 20, and 22. The applicant respectfully requests allowance of newly added claims 24-27.”
In response the examiner points to final rejection and corresponding search documentation in IFW.
Response to Amendment
Status of the instant application:
Claim[s] 1 – 13, 15, 16, 20 – 27 are pending in the instant application.
Claim[s] 14, 17 – 19 have been cancelled in the previous prosecution.
Claim[s] 24 – 27 are newly added claims and are addressed in the office action below.
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[s] 1, 20, 22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea: Mathematical Concepts: mathematical relationship or calculation: encryption without significantly more.
For example, in claim 20, at lines 5 – 6, the claim limitation of:
“encrypting, by an encryption circuit of the wireless device, selected ones of the digital values to produce encrypted digital values responsive to the asserted encryption enable signal…..;”
This judicial exception is not integrated into a practical application because the use of encryption is implemented as a mathematical algorithm that constitutes a mathematical relationship or calculation which is an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the remaining claim limitations do amount to Insignificant extra – solution activity to the judicial exception – for example:
“receiving, from a sensor of a wireless device, a plurality of analog signals;
converting, by an analog to digital converter (ADC), the analog signals to digital values;
determining, by a selective encryption enable circuit, which digital values to encrypt based on an encryption criteria selected from the group consisting of: a count of ADC samples, a comparison of each ADC value to a reference threshold value, and a pseudorandom number sequence;
asserting, by the selective encryption enable circuit, an encryption enable signal indicating which digital values to encrypt;
outputting, by a multiplexer, either unencrypted digital values from the ADC or encrypted digital values responsive to the encryption enable signal unselected ones of the plurality of digital values as unencrypted values to the output.”
Appropriate action required.
***The examiner notes that applicant can overcome the above rejection, by massaging the claim language in a manner that indicates an IOT device implements such steps of the method and the method in how the inputs are selectively chosen..etc.
Allowable Subject Matter
Claim[s] 1 – 13, 15,16, 20 – 27 contain allowable subject matter, but as allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
***The examiner notes that a reasons for allowance could be written in the next subsequent office action – once all formal requirements as identified above have been overcome.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANT SHAIFER - HARRIMAN whose telephone number is (571)272-7910. The examiner can normally be reached M - F: 9am to 5pm.
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, Ali Shayanfar can be reached at 571 – 270 - 1050. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANT B SHAIFER HARRIMAN/ Primary Examiner, Art Unit 2434
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