DETAILED ACTION
This action is responsive to arguments filed 01/21/2026.
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 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.
1. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to sending a command to a second device from a first device without significantly more.
Independent claims 1, 11 and 19 recite receiving prefix information at a second device including a random number. The claim additionally adds that the command includes k bits, wherein k is greater than 1, which broadly encompasses any string of digits.
The sending and receiving steps are recited at a high level of generality at a structural level, and amounts to mere data sending and formation, which is a form of extra-solution activity. The devices recited are also recited at a high level of generality, and merely automate the sending and receiving steps. The data itself is also expressed at a high level of generality, and does not require any special calculations that would require any amount of specific technical specification. The data itself is a string of digits which is greater than 1, which is virtually every data string conceivable, and generically covers strings of data that are communicated in many different contexts.
In other words, the data transmission and calculations required by the claims can either be done on most computerized components or by a human without a computerized component, and is tantamount to a method that can be accomplished by pen and paper without extensive technical expertise.
According to the two prong test as per the 2019 revised patent subject matter eligibility guidelines, these claims are directed toward a statutory category, which is the first prong. However, considering the second prong of the two prong test, the additional elements in the claims amount to no more than mere instructions to send and receive a number. This is also known as the judicial exception required in prong 2A, which is expressed in MPEP 2106.05 (d) (II). The combination of the sending and receiving of this random number with the recited devices can be accomplished using generic computer and transceiver components. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea, and therefore the claims are directed to the abstract idea.
Similarly, as the additional elements are considered insignificant extra-solution activity, there is no inventive concept in the claim, and thus it is ineligible. This expression of ineligibility is prong 2B, and uses the same reasons as discussed for prong 2A.
As claims 2-10, 12-18 and 20 depend upon claims 1, 11 and 19, they are also rejected under 35 USC 101 for the same reasons as discussed above.
In order to expedite prosecution, examiner is presenting art that is pertinent despite the claims not being directed toward patent eligible material. If it is determined that an amendment will eliminate the necessity for these 101 rejections, examiner would perform a 102 rejection based on one of the references as discussed below:
Juels (2004/0223481), wherein RFID tags communicate with a server which sends commands to each device (paragraph 0101) wherein the identifiers contained in the tags are random strings, particularly random prefixes in strings (paragraph 0132). It is envisioned that for claims that reference multiple devices and multiple strings corresponding to the additional devices, the network of RFID tags will cover these limitations. For further limitations directed toward a collision bit, paragraphs 0046-0047 discuss a collision bit.
Friedrich (2006/0044114) teaches multiple transponders which are transmitted commands from a base station, wherein the transponders are identified by random numbers which are analyzed by a subsection of the integers, which is being interpreted as the prefix (figure 2). For further limitations directed toward a collision bit, paragraph 0010 is pertinent.
Matsumoto (7,243,855) teaches communication between tag devices and a command device, wherein commands are sent and data packets are transmitted back (fig. 7), wherein the numbers are a random number in a range of digits (column 14 explains specific ranges of digits which are randomized), which is being interpreted as a prefix that is transmitted. For further limitations directed toward a collision bit, the reference it centered around anti-collision methods and it is discussed throughout.
Response to Arguments
Applicant's arguments filed 01/21/2026 have been fully considered but they are not persuasive.
Applicant argues that the 35 USC 101 rejections should be withdrawn because the memorandum from August 2025 cautions examiners not to expand the “mental process” grouping to encompass limitations that cannot practically be performed in the human mind, and the recited operations require device-to-device synchronization, and therefore are not practical pen-and-paper mental steps. However, the guidance put forth in the memorandum and guidance provided by the office makes an exception in the second prong for steps “recited at a high level of generality, i.e., as a generic computer performing generic computer functions”. Merely the fact that a device is recited does not preclude the application of the test. This argument is reflected in the arguments filed in the previous action, and the current action, where examiner acknowledges that the claims as presented do include a device, but the device is presented at a very high level of generality.
Applicant also argues that the amount of specificity presented in the claims with respect to the devices, which are interpreted to be specific RFID devices, and the instructions, which oversimplifies a string of digits, also should render the claims ineligible for the 35 USC 101 rejections. In the arguments presented, applicant references the specification to point out the “specific RFID singulation solution”, and the same argument is provided for the random number being generated in response to a “broadcast prefix”, and is also used to carry out a “hardware-constrained singulation decision”. However, these terms are not found in the claims, but instead read in from various embodiments found in the specification, which are not necessarily exclusive to the devices presented in the claims, which are presented with a very high level of generality. The specification does reference RFID devices, but also references a host of various devices, including an open-ended recitation of any pertinent device. It would not be appropriate for the examiner to choose an embodiment to enforce the meaning of the claims to a concrete specificity.
As is such, examiner disagrees with arguments, and contends that the 35 USC 101 arguments are appropriate. Examiner contends that the specificity provided in the arguments, if amended into the claims properly, would provide enough structural context to negate the concerns about a mental process presented in the rejections. If an interview would help clarify some of these details, examiner invites applicant to contact him for clarity.
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 extension fee 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 DAVID P TARDIF whose telephone number is (571)270-7810. The examiner can normally be reached on M-F 9:30-6:30. If the examiner cannot be reached by telephone, he can be reached through the following email address: david.tardif@uspto.gov
If attempts to reach the examiner by telephone and email are unsuccessful, the examiner’s supervisor, Michael G Lee can be reached on (571)272-2398. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID TARDIF
Examiner
Art Unit 2876
/DAVID TARDIF/
Examiner, Art Unit 2876
david.tardif@uspto.gov
/MICHAEL G LEE/Supervisory Patent Examiner, Art Unit 2876
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