DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/21/2025 has been entered.
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 11/21/2025 have been considered.
Regarding claim[s] 1 – 13, 15,16, 20 – 23 under the statutory rejection – abstract idea, the remarks are not persuasive, therefore, the office has addressed such remarks in the office action below.
Applicant states on page[s] 6 of the remarks as filed: “Claims 1, 20, and 22 were rejected under 35 U.S.C. § 101 as being directed to abstract idea without significantly more. The claims, as amended, are not directed towards an abstract idea without significantly more. The claims are directed towards "a wireless device." A wireless device does not implement a mathematical algorithm that constitutes a mathematical relationship or calculate. Additionally, claim 20 recites, "receiving, from a sensor by an analog-to-digital converter (ADC), analog signals," "converting, by the ADC, the analog signals to digital signals," "encrypting, by an encryption circuit, selected ones of the digital signals into encrypted signals responsive to receiving, by the encryption circuit, an encryption enable signal from a selective encryption enable circuit," and "outputting, by a multiplexer, either an analog signal of the analog signals or an encrypted signal of the encrypted signals responsive to the encryption enable signal." Claims 1 and 22 recite similar limitations. Claims 1, 20, and 22, as amended, are directed towards patentable subject matter. Accordingly, the Applicant respectfully requests that the § 101 rejection be withdrawn. Therefore, Applicant respectfully submits that claims 1-13, 15, 16, and 20-23 are in condition for allowance.”
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. ]
----[Wingdings font/0xE0]***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]
PNG
media_image1.png
18
19
media_image1.png
Greyscale
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.
Response to Amendment
Status of the instant application:
Claim[s] 1 – 13, 15,16, 20 – 23 are pending in the instant application.
Claim[s] 1 – 13, 15,16, 20 – 23 under the statutory rejection for non – statutory subject matter - abstract idea, without significantly more/no practical application, applicant’s claim amendments have been considered and are not persuasive. Therefore, such rejections are maintained.
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, 17, 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, 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.
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 by an analog – to – digital converter (ADC), analog signals at a signal input;
converting, by the ADC, the analog signals to digital signals;
outputting, by a multiplexer, either an analog signal of the analog signals or an encrypted signal of the encrypted signals 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 – 23 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
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, Kambiz Zand can be reached at 571- 272- 3811. 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.
/DANT B SHAIFER HARRIMAN/ Primary Examiner, Art Unit 2434
Prosecution Insights