DETAILED ACTION
Claims 1, 7, 8, 10 and 15 have been amended.
Claims 1 – 20 have been examined and are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 02/23/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Terminal Disclaimer
The terminal disclaimer filed on 30 December 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Pat. No. 12052155 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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, 8 and 15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (mental process) without significantly more. Each of the independent claims recites steps that result in:
collecting location/using data
evaluating patterns
sending provisional requests
All of the recited steps are processes that, under its broadest reasonable interpretation, covers the limitations under the organized human activity – mental processes (MPEP § 2106.04(a)(2), subsection III). That is, other than reciting “processor and memory electrically connected to the processor” nothing in the claim element precludes the concepts performed in the human mind. The claimed invention is characterized as an abstract idea of “analyzing location/use patterns and initiating a network connection” (a business/administrative or mental process). The claims do not contain significantly more or a technical improvement.
The claim features above as drafted, under its broadest reasonable interpretation, are certain methods of mental processes performed by generic computer components. Nothing in the claim element precludes the step from practically being a method of mental process (thinking) that can be performed by a human mind, or by a human using a pen and paper. 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 (2012) (“[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 courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed “conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally,” i.e., “as a person would do it by head and hand.”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473, 1474 (Fed. Cir. 2016) (holding that claims to a mental process of “translating a functional description of a logic circuit into a hardware component description of the logic circuit” are directed to an abstract idea, because the claims “read on an individual performing the claimed steps mentally or with pencil and paper”).
Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, “[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.” Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer"). Mental processes recited in claims that require computers are explained further below with respect to point C.
Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures “can be carried out in existing computers long in use, no new machinery being necessary.” 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of “anonymous loan shopping” recited in a computer system claim is an abstract idea because it could be “performed by humans without a computer”).
1. Performing a mental process on a generic computer. An example of a case identifying a mental process performed on a generic computer as an abstract idea is Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385, 126 USPQ2d 1498, 1504 (Fed. Cir. 2018). In this case, the Federal Circuit relied upon the specification in explaining that the claimed steps of voting, verifying the vote, and submitting the vote for tabulation are “human cognitive actions” that humans have performed for hundreds of years. The claims therefore recited an abstract idea, despite the fact that the claimed voting steps were performed on a computer. 887 F.3d at 1385, 126 USPQ2d at 1504. Another example is Versata, in which the patentee claimed a system and method for determining a price of a product offered to a purchasing organization that was implemented using general purpose computer hardware. 793 F.3d at 1312-13, 1331, 115 USPQ2d at 1685, 1699. The Federal Circuit acknowledged that the claims were performed on a generic computer, but still described the claims as “directed to the abstract idea of determining a price, using organizational and product group hierarchies, in the same way that the claims in Alice were directed to the abstract idea of intermediated settlement, and the claims in Bilski were directed to the abstract idea of risk hedging.” 793 F.3d at 1333; 115 USPQ2d at 1700-01.
2. Performing a mental process in a computer environment. An example of a case identifying a mental process performed in a computer environment as an abstract idea is Symantec Corp., 838 F.3d at 1316-18, 120 USPQ2d at 1360. In this case, the Federal Circuit relied upon the specification when explaining that the claimed electronic post office, which recited limitations describing how the system would receive, screen and distribute email on a computer network, was analogous to how a person decides whether to read or dispose of a particular piece of mail and that “with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper”. 838 F.3d at 1318, 120 USPQ2d at 1360. Another example is FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 120 USPQ2d 1293 (Fed. Cir. 2016). The patentee in FairWarning claimed a system and method of detecting fraud and/or misuse in a computer environment, in which information regarding accesses of a patient’s personal health information was analyzed according to one of several rules (i.e., related to accesses in excess of a specific volume, accesses during a pre-determined time interval, or accesses by a specific user) to determine if the activity indicates improper access. 839 F.3d. at 1092, 120 USPQ2d at 1294. The court determined that these claims were directed to a mental process of detecting misuse, and that the claimed rules here were “the same questions (though perhaps phrased with different words) that humans in analogous situations detecting fraud have asked for decades, if not centuries.” 839 F.3d. at 1094-95, 120 USPQ2d at 1296.
3. Using a computer as a tool to perform a mental process. An example of a case in which a computer was used as a tool to perform a mental process is Mortgage Grader, 811 F.3d. at 1324, 117 USPQ2d at 1699. The patentee in Mortgage Grader claimed a computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The interface prompts a borrower to enter personal information, which the grading module uses to calculate the borrower’s credit grading, and allows the borrower to identify and compare loan packages in the database using the credit grading. 811 F.3d. at 1318, 117 USPQ2d at 1695. The Federal Circuit determined that these claims were directed to the concept of “anonymous loan shopping”, which was a concept that could be “performed by humans without a computer.” 811 F.3d. at 1324, 117 USPQ2d at 1699. Another example is Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018), in which the patentee claimed methods for parsing and evaluating data using a computer processing system. The Federal Circuit determined that these claims were directed to mental processes of parsing and comparing data, because the steps were recited at a high level of generality and merely used computers as a tool to perform the processes. 881 F.3d at 1366, 125 USPQ2d at 1652-53.
The judicial exception is not integrated into a practical application. In particular, the claim only recites one additional element: "processor and memory electrically connected to the processor". The processor in communication with a memory comprises a general-purpose computer, and is recited at a high-level of generality such that it amounts to no more than mere instructions in memory and executed by a processor to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
"[A]fter determining that a claim is directed to a judicial exception, 'we then ask, [w]hat else is there in the claims before us?"' MPEP 2106.05 (emphasis in MPEP) citing Mayo, 566 U.S. at 78. "What is needed is an inventive concept in the non-abstract application realm." SAP Inc. v. lnvestPic, LLV, Appeal No. 2017-2081 (Fed. Cir. 2018). For step two, the examiner must "determine whether the claims do significantly more than simply describe [the] abstract method" and thus transform the abstract idea into patent-eligible subject matter. Ultramercial, Inc. v. Hutu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
A primary consideration when determining whether a claim recites "significantly more" than abstract idea is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry. See MPEP 2106.0S{d). "If the additional element (or combination of elements) is a specific limitation other than what is well- understood, routine and conventional in the field, for instance because it is an unconventional step that confines the claim to a particular useful application of the judicial exception, then this consideration favors eligibility. If, however, the additional element {or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility." Id.
The Federal Circuit has held that "[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination." Bahr, Robert (April 19, 2018). Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) citing Berkheimer at 1369. "As set forth in MPEP 2106.05(d)(I), an examiner should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry. This memo clarifies that such a conclusion must be based upon a factual determination that is supported as discussed in section III [of the memo]." Berkheimer Memo at 3 (emphasis in memo).
Generally, "[i]f a patent uses generic computer components (computing device) to implement an invention, it fails to recite an inventive concept under Alice step two." West View Research v. Audi, CAFC Appeal Nos. 2016-1947-51 (Fed. Cir. 04/19/2017) citing Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324-25 (Fed. Cir. 2016) (explaining that "generic computer components such as an 'interface,' 'network,' and 'database' ... do not satisfy the inventive concept requirement"; but see Bascom (finding that an inventive concept may be found in the non-conventional and non-generic arrangement of the generic computer components, i.e., the installation of a filtering tool at a specific location, remote from the end- users, with customizable filtering features specific to each end user).
In accordance with the above guidance, the examiner has searched the claim(s) to determine whether there are any "additional elements" in the claims that constitute "inventive concept," thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Alice, 134 S. Ct. 2347 (2014). Those "additional features" must be more than "well understood, routine, conventional activity." See Alice. To note, "under the Mayo/Alice framework, a claim directed to a newly discovered ... abstract idea [] cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility." Genetic Techs. Ltd v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016); Diamond v. Diehr, 450 U.S. 175, 188-89 (1981). As an example, the Federal Circuit has indicated that "inventive concept" can be found where the claims indicate the technological steps that are undertaken to overcome the stated problem(s) identified in Applicant's originally-filed Specification. See Trading Techs. Inc. v. CQG, Inc., No. 2016-1616 (Fed. Cir. 2017); but see IV v. Erie Indemnity, No. 2016-1128 (Fed. Cir. March 7, 2017) ("The claims are not focused on how usage of the XML tags alters the database in a way that leads to an improvement in technology of computer databases, as in Enfish.") (emphasis in original) and IV. v. Capital One, Nos. 2016-1077 (Fed. Cir. March 7, 2017) ("Indeed, the claim language here provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it. Our law demands more. See Elec. Power Grp., 830 F.3d 1356 (Fed. Cir. 2016) (cautioning against claims 'so result focused, so functional, as to effectively cover any solution to an identified problem.')"). Furthermore, "[a]bstraction is avoided or overcome when a proposed new application or computer-implemented function is not simply the generalized use of a computer as a tool to conduct a known or obvious process, but instead is an improvement to the capability of the system as a whole." Trading Techs. Int'l, Inc. v. CQG, Inc., No. 2016-1616 (Fed. Cir. 2017) (emphasis added).
In the search for inventive concept, the Berkheimer Memo describes "an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
A citation to one or more of the court decisions discussed in the MPEP as noting the well-understood, routine, conventional nature of the additional element(s).
A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s).
See Berkheimer Memo at 3-4.
As set forth in MPEP § 2106.0S(d)(I), an examiner should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry. The Berkhiemer memo clarifies that such a conclusion must be based upon a factual determination that is supported as discussed in section III the memo.
In this case, the additional elements do not integrate the judicial application into a practical application. The claim does not recite (i) an improvement to the functionality of a computer or other technology or technical field; (ii) a particular machine to apply or use the judicial exception; (iii) a particular transformation of an article to a different thing or state; or (iv) any other meaningful limitation.
The additional elements beyond the judicial exception are (i) network connectivity request. Using a computer network to send the request(s) is merely applying the judicial exception using a generic computing component. Additionally, the claim does not improve the functioning of the system, or other technology or field.
Response to Arguments
Claim Rejections - 35 USC § 101
Applicant’s arguments and amendments, filed on 12/30/2025 with respect to the Claims 1 – 20 have been fully considered and they are not persuasive. Hence, the 35 USC § 101 rejection is maintained.
In response to the applicant’s arguments, (Pg. 8), that “…claims are not directed to a judicial exception,” the examiner respectfully disagrees.
The claims, as drafted, recite the following steps:
determining, by a computing device, a location pattern of a user device connected to a first network, wherein the location pattern is indicative of a quantity of presences of the user device within a second network; and
sending, based at least on the location pattern, a network connectivity request to the user device.
The claim limitations amount to collecting and analyzing information (i.e., location pattern, presence within a network) and making a decision (i.e., sending a request) based on that information. These steps are analogous to collecting information, analyzing it, and acting on the result—activities that have been found by the courts to be abstract ideas (see Electric Power Group v. Alstom, 830 F.3d 1350 (Fed. Cir. 2016); Alice Corp. v. CLS Bank, 573 U.S. 208 (2014)). The Federal Circuit has held that claims directed to collecting, analyzing, and displaying data are abstract, even when performed by a computer.
While the claim recites a “computing device,” the recited steps do not require any specialized computer functionality or improvement to computer technology. The recited steps could be performed mentally or with pen and paper, as they amount to observing a pattern and making a decision based on that observation. The Applicant’s argument that the human mind cannot practically perform these steps is unpersuasive, as the claims are drafted at a high level of generality and do not specify any technical implementation details that would preclude mental performance.
Accordingly, the claims are directed to an abstract idea under Prong One of Step 2A.
In response to the applicant’s arguments, (Pg. 9), “… the problem of network congestion and inefficient bandwidth utilization across multiple network operators is addressed by a notably technical solution. The solution may involve location pattern analysis, subscriber identity module provisioning, and coordinated network connectivity management. The additional elements in claim 1 as amended impose meaningful limits. These elements include the computing device associated with both networks, the location pattern determination, and the network connectivity request based on the location pattern. These elements tie the alleged "mental" decision-making to a particular technological context,” the Examiner notes that the applicant's amendment does not overcome the abstract idea rejection. Detecting the location pattern of the user device, or detecting time is still a mental process, and the additional elements do not change the abstract scope of the claims. The Examiner notes that the location pattern of the user is well-defined in [Fig. 4 and 0050] as a representation of the time spent within a location, or the data used within the location, direction of movement, geofences, transiency, data types, data latency tolerance, previous connections, user input, data propensity, coordinates of location, building or street addresses associated with locations, subscription types, or combinations thereof). However, for the term quantity of presences of the user device [0055] it is unclear if this is tied to various user devices each with different subscriber ID/Key and physically entering or exiting a geofenced area, or this term quantity of presences of the user device means multiple provisioned eSIM profiles on a single user device to be able to connect with various different networks.
Further, the claims do not recite any specific improvement to a computer or network technology, nor do they provide a technical solution to a technical problem. The claimed steps of determining a location pattern and sending a network connectivity request are generic and do not amount to more than applying the abstract idea using a computer as a tool. The claim does not recite how the location pattern is determined, how the connectivity request is generated or processed, or how these steps improve network performance or eSIM provisioning in a specific, technical manner.
The Federal Circuit has held that merely automating an abstract idea using a generic computer does not integrate the idea into a practical application (Alice, 573 U.S. at 223; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)). The recited elements are described at a high level of generality and do not impose meaningful limits on the application of the abstract idea.
In response to the applicant’s arguments, (Pg. 10), “…they show an inventive concept”, the examiner respectfully disagrees.
The claims do not recite any additional elements that amount to significantly more than the alleged abstract idea. The use of a generic computing device to perform routine data analysis and communication steps is not sufficient to provide an inventive concept (Alice, 573 U.S. at 225). The claims do not recite any particular technical solution, novel algorithm, or unconventional arrangement of components. The combination of generic steps, even if novel, does not transform the abstract idea into patent-eligible subject matter (Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 82 (2012)).
Furthermore, the claim language does not specify any improvement to the functioning of the computer or network itself, nor does it provide a technical solution to a technical problem. The claims are directed to generic computer implementation of abstract data analysis and decision-making.
The examiner recommends amending the sending step in the independent claims as follows to overcome the current 101 rejection:
sending, based at least on the location pattern of the user device, a subscriber identifier and an identifier key associated with the second network operator to connect to the second network of the second network operator, wherein the computing device is associated with both first and second network work.
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 HASSAN ABDUR-RAHMAN KHAN whose telephone number is (313)446-6574. The examiner can normally be reached TEAPP - (M-Sa) 9/30/17-9/30/18, 6am-10pm IFP.
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/H. A. K./
Examiner, Art Unit 2451
/Chris Parry/Supervisory Patent Examiner, Art Unit 2451
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