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 .
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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: a locationing engine configured to in claim 1.
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 § 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more and is not integrated into a practical application. The claim(s) recite(s) limitations that are considered to be data processing. Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219—20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594—95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). The 101 guidance instructs us to look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. As best understood, the claims contain limitations are directed to data processing, as is similar to Electric Power Group, Benson and Flook.
Specifically, the claims obtain data and process the data using various algorithms and mathematical concepts to make a determination based on the processed data; mathematical formulas, equations or calculations to provide the output, these will all fall under the category of Mathematical Concepts and along with mental processes they are considered to be abstract. See the updated 101 guidance issued in October 2019, sections A and C.
Analysis of the claims
Step 2A, Prong One: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim.
Claim 10, which is being used for analysis, recites: receiving data from a tag configured to transmit data while within one of a plurality of zones; analyzing at least one property of the data to determine a current zone of the plurality of zones containing the tag with an associated confidence value; analyzing prior data transmitted from the tag to determine whether the current zone is different from a prior zone determined from the prior data; comparing (i) a time differential between receipt of the prior data and receipt of the data and (ii) the associated confidence value with a cost value corresponding to moving from the prior zone to the current zone; and updating a location of the tag based on the comparison.
This judicial exception is not integrated into a practical application because the claims do not recite any limitation that links the process to anything other than the processing of data and output (updating a location) of a result as the steps of calculating and the comparing step encompass the use of mathematical operations or can be performed as a mental process which are recognized abstract ideas.
Step 2A, Prong Two: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See MPEP 2106.04(d).
The claim recites a first additional element of “receiving data from a tag configured to transmit data while within one of a plurality of zones”. This step is recited at a high level of generality and amounts to mere data gathering. It is necessary to acquire the data in order to use the recited judicial exception to perform the calculations. The step amounts to insignificant extra-solution activity and does not integrate the exception into a practical application.
When determining whether a claim simply recites a judicial exception with the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners may consider: (1) whether the 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; (2) whether the claim invokes computers or other machinery merely as a tool to perform an existing process; and (3) the particularity or generality of the application of the judicial exception. See MPEP 2106.05(f). Here, this judicial exception is not integrated into a practical application because the claims do not recite any limitation that links the process to anything other than the processing of data and output (determination) of a result.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because there are no elements in Claim 10 that appear to clearly have any actionable steps other than making a determination or outputting a result which would be mere extra-solution activity. In the system of Claim 1 Applicant claims a tag that transmits data, and a locationing engine (which based on analysis of specification is a processor component of the server), however, as recited it appears the components operate in routine and conventional manners to allow for aid in gathering and processing data and does not provide limitations that would be considered significantly more.
As is best understood Claims 1, 10 and 18 are all directed to gathering data for processing by a processor or processor based elements and there are no explicit structural elements claimed in these claims that would be considered enough to make the claims non-abstract as the heart of the claim is directed to abstract processing steps of the processing module. The use of generic/well known elements and general processors/computers for the mere implementation of an abstract idea on a computer does not qualify as significantly more. It is not claimed what happens after the final selection/determination step. How is the is the data used, is it transmitted or output in some manner for use, does the system perform another task based on the determination or is the operation merely used for determining most likely position. As currently claimed the limitations are just an operation of determining position without anything that would be considered significantly more, the operation of processing data to determine a position has been found to be an abstract idea.
Therefore, the limitation represents no more than mere instructions to apply the judicial exception on a computer and does not integrate the exception into a practical application of the exception.
Step 2B:
A conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B. See MPEP 2106.05, subsection I.A. At Step 2B, the re-evaluation of the insignificant extra-solution activity consideration takes into account whether or not the extra-solution activity is well understood, routine, and conventional in the field. See MPEP 2106.05(g).
Here, the computer software and modules and processor are equal to a machine being merely an object on which the method operates, which does not integrate the exception into a practical application or provide significantly more. Receiving data is basic data gathering and would not provide significantly more and is insignificant extra-solution activity as the use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more (MPEP 2106.05 (b), III). The processor also does` not pertain to an improvement to the functioning of a “computer system.” See MPEP § 2106.05(a). There is no indication that the assumed CPU being used needs to be more than a generic device.
Therefore, these limitation remains insignificant extra-solution activity even upon reconsideration and does not amount to significantly more.
As currently claimed, the computer software and modules and processor are equal to a machine being merely an object on which the method operates, which does not integrate the exception into a practical application or provide significantly more. Receiving data is basic data gathering and would not provide significantly more and is insignificant extra-solution activity as the use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more (MPEP 2106.05 (b), III). The processor also does` not pertain to an improvement to the functioning of a “computer system.” See MPEP § 2106.05(a). There is no indication that the assumed CPU being used needs to be more than a generic device.
The analysis under Step 2A, Prong Two is carried through to Step 2B.
Even when considered in combination, these additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, and therefore the claimed invention is directed to an abstract idea without significantly more.
There are no limitations in the independent or the dependent claims that would make the processor/computer change in operation in a manner that would make it work in a way that is new and not capable of being done on a generic processor/computer. The processor in these claims performs merely as a tool and does not appear to provide an improvement to the functionality of a computer. Absent evidence to the contrary, claims 1-20 merely rely on the processing of data. Making a determination as a result of processed data is well known and conventional.
Claims 2, 3, 11, 12 and 19 expand on the processing limitations by claim limitations directed to determining properties of the processed data and do not provide a practical application of the abstract idea or significantly more than the abstract idea itself.
Claims 4 and 13 expand on the mathematical concepts and define the dimension/coordinates of the zone which do not provide a practical application of the abstract idea or significantly more than the abstract idea itself.
Claims 5-8, 14-16 and 20 expands on the mathematical concepts with respect to cost value and confidence level values which do not provide a practical application of the abstract idea or significantly more than the abstract idea itself.
Claims 9, 17 and 20 expands on the processing limitations and merely compares zones to one another from a database which do not provide a practical application of the abstract idea or significantly more than the abstract idea itself.
Claims 1-20 do not include additional elements that are sufficient to amount to significantly more than the abstract idea itself, and thus, the additional elements (tag, receiver (implicit) and processor) do not transform the abstract idea into a patent eligible application of the abstract idea. The additional elements, individually and as an ordered combination, do not transform the nature of the claim into a patent-eligible application. Taken alone or as an ordered combination, the limitations of claims do not amount to a claim as a whole that is significantly more than the judicial exception. Using obtained values from the computational operations is not a meaningful limitation that alone can amount to significantly more than the exception.
Claims 1-20 merely rely on generic components as a tool to apply the abstract idea. The application of the abstract idea to generic components does not transform the claim into a patent-eligible application of the abstract idea. While the newly provided guidance of December 2025 states that “When evaluating a claim as a whole, examiners should not dismiss additional elements as mere “generic computer components” without considering whether such elements confer a technological improvement to a technical problem, especially as to improvements to computer components or the computer system.” There are no limitations stating that the any assumed structural elements behave in a non-conventional manner or that the assumed processor is using collected and stored data for anything more than evaluation. All other dependent claims build upon the abstract idea and do not result in significantly more or a practical application and merely just expand on how the software and algorithms operate to process the data. There is no claim to how the processed data is used besides simply making a determination or what tangible step is taken once the processing is done that would link the processing of data to practical application or an actual actionable step. While the algorithms and calculation processing may be novel, novelty does not change the claim from being an abstract idea.
Response to Arguments
Applicant's arguments filed 18 May 2026 have been fully considered but they are not persuasive. Applicant’s arguments are directed to the position that their invention is directed to a specific technical improvement in the field of locationing systems and are not just an abstract idea. The Examiner respectfully disagrees and interprets the claim as an improvement to the method of locating but does not see it as an improvement to the technology or use of a computer.
As the Examiner has pointed out above, the tag (transmitter), locationing engine (computer/processor/code as describe in [0054-0057]) and an implicit receiver are all considered to be conventional elements that behave as expected. These elements as are all interpreted as required being in insignificant pre-and post-solution activity, i.e., necessary data gathering and data outputting, to the abstract idea; See MPEP 2016.05(g). The claims nor specification provide and claim to a special algorithm and are interpreted as basic data gathering using common hardware/computer elements to perform the abstract idea. The Examiner does not agree that the claimed limitations amount to an improvement to the computer or the technology or technical field. MPEP 2106.05(a) teaches is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation. That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology. This section teaches several examples that the courts have indicated may not be sufficient to show an improvement in computer functionality, the Examiner points to the following examples: iii. Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017) or speeding up a loan-application process by enabling borrowers to avoid physically going to or calling each lender and filling out a loan application, LendingTree, LLC v. Zillow, Inc., 656 Fed. App'x 991, 996-97 (Fed. Cir. 2016) (non-precedential); iv. Recording, transmitting, and archiving digital images by use of conventional or generic technology in a nascent but well-known environment, without any assertion that the invention reflects an inventive solution to any problem presented by combining a camera and a cellular telephone, TLI Communications, 823 F.3d at 611-12, 118 USPQ2d at 1747. Section II of MPEP 2106.05(a) teaches that to show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. The following example given by the courts show that it may not be sufficient to show improvement to the technology: iii. Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48.
The Examiner interprets the claimed invention to be directed to limitations of mere gathering and analyzing information using conventional techniques and displaying a result. The Examiner has not found the Applicant’s arguments to be persuasive and maintains the rejection as provided above as being proper. The limitations provided do not provide anything that appears to be significantly more or linked to a special algorithm and is interpreted as basic data gathering using conventional tools.
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 WHITNEY T MOORE whose telephone number is (571)270-3338. The examiner can normally be reached Monday-Friday from 7am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jack Keith can be reached at (571) 272-6878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WHITNEY MOORE/Primary Examiner, Art Unit 3646
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