Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/23/2026 has been entered.
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 and 9-14 are rejected under 35 USC 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 recites
(Currently Amended) A method, comprising
storing in a memory of a device during one or more executions of a process that configures a remote control application resident on the device to control a plurality of appliances in a home entertainment system of a user a first data;
receiving a second data that functions to identify a first appliance being considered for integration into the home entertainment system of the user;
using the first data stored in the memory of the device and the received second data to determine whether a transmission protocol used to transmit commands to the plurality of appliances is compatible with a transmission protocol used to transmit commands to a the first appliance; and
providing to a computing device a result of the determination for presentation via use of a display device associated with the computing device.
Examiner finds that the bolded portions of claim 1 above recite an abstract idea—namely, mental processes and mathematical concepts. See MPEP 2106.04(a)(2) (III):
Accordingly, the ‘mental processes’ abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions
When read as a whole, the recited limitations are directed to using mental steps to observe, evaluate, and make judgements about electronic data.
Taking each element individually, Examiner provides the following analysis:
Bolded Abstract Idea Claim Elements
Examiner analysis of bolded abstract idea elements considered individually
using the first data . . . and the received second data to determine whether a transmission protocol used to transmit commands to the plurality of appliances is compatible with a transmission protocol used to transmit commands to a the first appliance;
This element merely requires observation and evaluation of the first and second data and an evaluation/judgment of whether the protocols are “compatible.” Examiner finds the compatibility determination is merely an evaluation as to whether two pieces of data contain the same information (e.g. do both pieces of data contain the term “RF4CE”). Thus, Examiner finds a human can make this determination using evaluation and judgment.
Turning to the additional elements and whether they integrate the exception, Examiner provides the following analysis:
Italicized Additional elements
Examiner analysis of italicized additional elements and whether they integrate the exception.
Relevant MPEP sections
(Currently Amended) A method, comprising
storing in a memory of a device during one or more executions of a process that configures a remote control application resident on the device to control a plurality of appliances in a home entertainment system of a user a first data;
This element recites mere data gathering and thus is an insignificant extra solution activity. This element recites a well-understood, routine, and conventional (WURC) computer function (i.e. storing and retrieving information in memory).
As such, this element fails to integrate the exception and fails to recite an inventive concept.
2106.05(g)
2106.05(d)(II)
receiving a second data that functions to identify a first appliance being considered for integration into the home entertainment system of the user;
This element recites mere data gathering and thus is an insignificant extra solution activity. This element recites a well-understood, routine, and conventional (WURC) computer function (receiving or transmitting data over a network).
As such, this element fails to integrate the exception and fails to recite an inventive concept.
2106.05(g)
2106.05(d)(II)
stored in the memory of the device
This language uses a computer as a tool to perform the known process of comparing two items to see if they are the same. As such, it recites mere instructions to apply the exception and does not integrate the exception and does not recite an inventive concept.
This language also generally links the abstract idea to a computing environment. It does not integrate the exception and does not recite an inventive concept.
2106.05(f), (h)
2106.04(a)(2)(III)(C)
providing to a computing device a result of the determination for presentation via use of a display device associated with the computing device.
This element recites selecting a particular data source or type of data to be manipulated and thus is an insignificant extra solution activity. This element recites a well-understood, routine, and conventional (WURC) computer function (receiving or transmitting data over a network).
As such, this element fails to integrate the exception and fails to recite an inventive concept.
2106.05(g)
2106.05(d)(II)
The additional elements above “[a]dd nothing … that is not already present when the steps are considered separately’”. MPEP 2106.05 (I)(B)(quoting Alice).
As such, when the claim elements are considered as a whole and individually, claim 1 recites an abstract idea without significantly more.
Dependent claims are rejected under 35 USC 101 for the reasons indicated below.
Claim
Italics = additional element
Bold = abstract idea element
Analysis
MPEP
9. (Currently Amended) The method as recited in claim 1, wherein the result of the determination includes an option for the display of additional information screens containing recommended interconnection schemes for integrating the first appliance into the system.
This language generally links the abstract idea (see above) to a computing/home entertainment environment. As such, it does not integrate or recite an inventive concept.
2106.05(h)
10. (Currently Amended) The method as recited in claim 1, wherein the result of the determination includes an option for posting to a social networking site information representative of the first appliance for receiving feedback from others.
This language generally links the abstract idea (see above) to an online/social media computing environment. As such, it does not integrate or recite an inventive concept.
2106.05(h)
11. (Currently Amended) The method as recited in claim 1, wherein the result of the determination includes an option to locate a merchant offering the appliance corresponding to the first information.
This language generally links the abstract idea (see above) to an online/e commerce computing environment. As such, it does not integrate or recite an inventive concept.
2106.05(h)
12. (Previously Presented) The method as recited in claim 1, wherein the second data comprises data obtained from a UPC label.
This language generally links the abstract idea (see above) to a computing/home entertainment environment. As such, it does not integrate or recite an inventive concept.
2106.05(h)
l3. (Previously Presented) The method as recited in claim 1, wherein the second data comprises data obtained from an RFID tag.
This language generally links the abstract idea (see above) to a computing/home networking/home entertainment environment. As such, it does not integrate or recite an inventive concept.
2106.05(h)
14. (Previously Presented) The method as recited in claim 1, wherein the computing device and the device having the remote control application are the same.
This language generally links the abstract idea (see above) to a computing environment. As such, it does not integrate or recite an inventive concept.
2106.05(h)
The additional elements above “[a]dd nothing … that is not already present when the steps are considered separately’”. MPEP 2106.05 (I)(B)(quoting Alice).
As such, when the claim elements above are considered as a whole and individually, claims recite an abstract idea without significantly more.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 and 9-14 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Belimpasakis US 20090259515 A1 in view of Huang US 2004/0070491.
With respect to claim 1, Belimpasakis; US 20090259515 A1 teaches : storing in a memory of a device during one or more executions of a process” in para. 57 and para. 85
[0057] The network 102 is adapted to allow an interoperability scanner (device and/or application) 120 to gather 122 device descriptor data 116, media types 118, application data 117, and API data 119 from numerous devices of the network 102. The scanner 120 may be included one of the locally networked devices (e.g., mobile device 104, PC 112, or gateway 114), or may be remotely executed from a remote network via the Internet 124. The scanner 120 utilizes the network protocols and services that enable peer devices to access the relevant data 116, 118, albeit with a different focus. The scanner 120 gathers 122 the device, media, application and API data (116, 118, 117, 119) for purposes of determining a composition/profile of the network 102 and its devices, applications, APIs and media files so that additional, compatible devices, media, applications and/or APIs may be chosen.
[0085] As described above, a scanning software component that gathers compatibility data can run either on a locally attached network device or remotely. In reference now to FIG. 8, a block diagram illustrates an apparatus 800 that, in one embodiment of the invention, that may perform any combination of local or remote scanning functions. The apparatus 800 may include a processor 802, memory 804, and an I/O bus 806 that couples peripheral devices to the processor 802. Those peripheral devices may include persistent memory storage 808 (e.g., disc drives, flash memory), one or more network interfaces 812, and a media reader 810 (e.g., tape reader, floppy drive, Compact Disc player, Digital Versatile Disc player, memory card reader, etc.). The media reader 810 is capable of reading from a storage medium 814, such as optical or magnetic media. The media reader 810 may also be capable of writing to the media 814. The network interfaces 812 may be capable of communicating via one or more networks 816 and the Internet 124. The network 816 may utilize such media such as phone lines, coaxial cable, Ethernet, wireless radio transmissions, infrared transmissions, etc. The network 816 may include Internet Protocol (IP) based public and private networks, as well as proximity networking such as Bluetooth, WLAN, UWB, WiBree, and IrDA.
(Examiner finds the scanner teaches a mobile device with memory);
“a first data” in Fig. 4 item 404 and 406;
[0053] In reference now to FIG. 1, a block diagram shows a system according to an embodiment of the invention. Generally, a local network 102 couples a number of computing apparatuses, such as mobile device 104 (such as a mobile communication device, audio/video player, digital camera/camcorder, positioning device, a game device, a mobile television, or any combination of the aforementioned), media server 106 (such as personal computer, server, set-top box, storage device, or digital video recorder), input device 108 (e.g., keyboard), media renderer 110 (e.g., television (TV), projector, audio player), personal computer (PC) 112, router/gateway/wireless access point 114, and sensors (such a movement, temperature, humidity, audio, still/video camera. The local network 102 may be suited for encompassing a physical space suitable for a home or small office application, as well as dealing with a (sometimes small) quantity of devices that might be seen in home or small business environment. Such a local network 102 may also be adaptable for use in other user environments, such as industrial computing/automation, vehicle/automotive computing or mobile/wearable computing. Additionally, the network 102 may comprise networks also in other locations such as in vehicles (such as cars or boats) and/or summer homes.
(Examiner finds local network 102 and the devices attached thereto teaches a home entertainment system);
[0058] In one arrangement, the scanner reports 126 this network profile data to an e-commerce Web server 128 or similar entity. The server 128 uses the report data 126 to determine suggestions 130 for devices that are compatible with the local network 102 and/or associated devices. In another arrangement, instead of reporting 126 the network profile data to the server 128, the server could instead send 132 relevant product data to the scanner 120. In this case, the scanner 120 could determine compatible products, and either suggest the products directly, or report 126 the suggestion to the server 128, which then suggests 130 the components to the user. The suggested components may be selected based further on user inputs that limit the applicability of the prospective purchase to a particular subset of devices.
[0058] In one arrangement, the scanner reports 126 this network profile data to an e-commerce Web server 128 or similar entity. The server 128 uses the report data 126 to determine suggestions 130 for devices that are compatible with the local network 102 and/or associated devices. In another arrangement, instead of reporting 126 the network profile data to the server 128, the server could instead send 132 relevant product data to the scanner 120. In this case, the scanner 120 could determine compatible products, and either suggest the products directly, or report 126 the suggestion to the server 128, which then suggests 130 the components to the user. The suggested components may be selected based further on user inputs that limit the applicability of the prospective purchase to a particular subset of devices.
[0059] For example, the user may control some aspect of the TV 110 or the set top box (not shown) using a wireless keyboard 108, and wishes to obtain a pointing device that cooperates with both devices. The keyboard 108 may have been chosen for the user (e.g., by a salesperson when the TV 110 was purchased) and thus the user may not know exactly how the keyboard 108 interacts with the TV 110. In this example, the gathered data 122 may include not only the protocol used by the keyboard 108 and TV 110, but may determine whether the keyboard 108 interacts directly with the TV 110 or via some other component such as a set top box. Thus, the user may be able to make a selection via a Web page associated with the e-commerce server 128 that states, in effect, "select a pointer/mouse that works with my TV in cooperation with the existing keyboard." This query along with the scanned and processed device/media reporting data 126 can be used to form a more accurate suggestion 130 for presentation to the end user.
(Examiner finds the remote control application is the software that allows the keyboard and/or mouse to control the TV; Examiner finds first data is “processed device/media reporting data 126”);
“receiving a second data that functions to identify a first appliance being considered for integration into the home entertainment system of the user” in Fig. 4 item 408 and
[0059] For example, the user may control some aspect of the TV 110 or the set top box (not shown) using a wireless keyboard 108, and wishes to obtain a pointing device that cooperates with both devices. The keyboard 108 may have been chosen for the user (e.g., by a salesperson when the TV 110 was purchased) and thus the user may not know exactly how the keyboard 108 interacts with the TV 110. In this example, the gathered data 122 may include not only the protocol used by the keyboard 108 and TV 110, but may determine whether the keyboard 108 interacts directly with the TV 110 or via some other component such as a set top box. Thus, the user may be able to make a selection via a Web page associated with the e-commerce server 128 that states, in effect, "select a pointer/mouse that works with my TV in cooperation with the existing keyboard." This query along with the scanned and processed device/media reporting data 126 can be used to form a more accurate suggestion 130 for presentation to the end user.
(Examiner finds query teaches second data; Examiner finds pointing device is the first appliance considered for integration;);
“using the first data stored in the memory of the device”
[0058] In one arrangement, the scanner reports 126 this network profile data to an e-commerce Web server 128 or similar entity. The server 128 uses the report data 126 to determine suggestions 130 for devices that are compatible with the local network 102 and/or associated devices. In another arrangement, instead of reporting 126 the network profile data to the server 128, the server could instead send 132 relevant product data to the scanner 120. In this case, the scanner 120 could determine compatible products, and either suggest the products directly, or report 126 the suggestion to the server 128, which then suggests 130 the components to the user. The suggested components may be selected based further on user inputs that limit the applicability of the prospective purchase to a particular subset of devices.
[0059] For example, the user may control some aspect of the TV 110 or the set top box (not shown) using a wireless keyboard 108, and wishes to obtain a pointing device that cooperates with both devices. The keyboard 108 may have been chosen for the user (e.g., by a salesperson when the TV 110 was purchased) and thus the user may not know exactly how the keyboard 108 interacts with the TV 110. In this example, the gathered data 122 may include not only the protocol used by the keyboard 108 and TV 110, but may determine whether the keyboard 108 interacts directly with the TV 110 or via some other component such as a set top box. Thus, the user may be able to make a selection via a Web page associated with the e-commerce server 128 that states, in effect, "select a pointer/mouse that works with my TV in cooperation with the existing keyboard." This query along with the scanned and processed device/media reporting data 126 can be used to form a more accurate suggestion 130 for presentation to the end user.
[0084] It will be appreciated there may be alternate approaches to those shown in FIGS. 5-7 that will yield similar results. For example, referring again to FIG. 5, instead of the scanning software 504 sending 530 the device/media data to the online shop 502, the shop could instead send to the scanning software 504 a specially formatted database of all products available via the shop, or at least those products relevant to the current request 514. In such a case, the operations of checking the database 532 and providing suggestions 536 may be performed partially or wholly by the scanning software 504 or some other device of the home environment 500. For example, a suggestion page 402 such as seen in FIG. 4 could be generated locally by the scanner 504, and that page 402 could contain links for accessing the appropriate data from the shop 502 when further inquiries 538 are performed. The procedures in FIGS. 6 and 7 could be similarly modified. Additionally, the process steps between the embodiments in FIGS. 5-7 may be combined in any combinations and order.
(First data (“scanned and processed device/media reporting data 126”) is stored in scanner’s memory in an embodiment);
“and the received second data to determine whether a transmission protocol used to transmit commands to the . . . of appliances is compatible with a transmission protocol used to transmit commands to the first appliance”
[0059] For example, the user may control some aspect of the TV 110 or the set top box (not shown) using a wireless keyboard 108, and wishes to obtain a pointing device that cooperates with both devices. The keyboard 108 may have been chosen for the user (e.g., by a salesperson when the TV 110 was purchased) and thus the user may not know exactly how the keyboard 108 interacts with the TV 110. In this example, the gathered data 122 may include not only the protocol used by the keyboard 108 and TV 110, but may determine whether the keyboard 108 interacts directly with the TV 110 or via some other component such as a set top box. Thus, the user may be able to make a selection via a Web page associated with the e-commerce server 128 that states, in effect, "select a pointer/mouse that works with my TV in cooperation with the existing keyboard." This query along with the scanned and processed device/media reporting data 126 can be used to form a more accurate suggestion 130 for presentation to the end user.
(Examiner finds the query is the second data; Examiner finds “protocol used by the keyboard” to interact with the TV is a transmission protocol; Examiner further finds protocol used by mouse is the transmission protocol used by the keyboard);
“providing to a computing device a result of the determination for presentation via use of a display device associated with the computing device.”
[0059] For example, the user may control some aspect of the TV 110 or the set top box (not shown) using a wireless keyboard 108, and wishes to obtain a pointing device that cooperates with both devices. The keyboard 108 may have been chosen for the user (e.g., by a salesperson when the TV 110 was purchased) and thus the user may not know exactly how the keyboard 108 interacts with the TV 110. In this example, the gathered data 122 may include not only the protocol used by the keyboard 108 and TV 110, but may determine whether the keyboard 108 interacts directly with the TV 110 or via some other component such as a set top box. Thus, the user may be able to make a selection via a Web page associated with the e-commerce server 128 that states, in effect, "select a pointer/mouse that works with my TV in cooperation with the existing keyboard." This query along with the scanned and processed device/media reporting data 126 can be used to form a more accurate suggestion 130 for presentation to the end user.
[0084] It will be appreciated there may be alternate approaches to those shown in FIGS. 5-7 that will yield similar results. For example, referring again to FIG. 5, instead of the scanning software 504 sending 530 the device/media data to the online shop 502, the shop could instead send to the scanning software 504 a specially formatted database of all products available via the shop, or at least those products relevant to the current request 514. In such a case, the operations of checking the database 532 and providing suggestions 536 may be performed partially or wholly by the scanning software 504 or some other device of the home environment 500. For example, a suggestion page 402 such as seen in FIG. 4 could be generated locally by the scanner 504, and that page 402 could contain links for accessing the appropriate data from the shop 502 when further inquiries 538 are performed. The procedures in FIGS. 6 and 7 could be similarly modified. Additionally, the process steps between the embodiments in FIGS. 5-7 may be combined in any combinations and order.
Belimpasakis further teaches a mobile device that controls appliances of a home network. See Fig. 4 item 404 (BT Universal Remote). Belimpasakis further teaches the “[t]he scanner 120 may be included one of the locally networked devices (e.g., mobile device 104, PC 112, or gateway 114),” para. 57. Belimpasakis further teaches “the operations of checking the database 532 and providing suggestions 536 may be performed partially or wholly by the scanning software 504 or some other device of the home environment 500.” Para. 84.
It appears Belimpasakis fails to explicitly teach “storing in a memory of a device during one or more executions of a process that configures a remote control application resident on the device to control a plurality of appliances in a home entertainment system of a user a first data” in its entirety (emphasis added on what Belimpasakis fails to teach).
However, Huang (US 2004/0070491) teaches “storing in a memory of a device during one or more executions of a process that configures a remote control application resident on the device to control a plurality of appliances in a home entertainment system of a user a first data” in Fig. 5 item 10 and Fig. 6 item 10 and para. 69 “FIG. 6 shows a system wherein the universal remote control 10 communicates with the electronically controlled appliances directly”); paras. 32-34; 41 (executions of processes to configured remote control application to control a plurality of appliances); paras. 38, 48, 52, and 64 (user data is the data that comprises the user’s home entertainment system setup).
Belimpasakis and Huang are analogous art because they are from the same field of endeavor as the claimed invention.
It would have been obvious to one skilled in the art at the time of the invention to modify “storing in a memory of a device during one or more executions of a process . . . a first data” in Belimpasakis to include “a process that configures a remote control application resident on the device to control a plurality of appliances in a home entertainment system of a user a first data” as taught by Huang.
It would have also been obvious to one skilled in the art at the time of the invention to modify the device in Belimpasakis to include the functionality of the device (i.e. the universal remote) as taught by Huang.
It would have also been obvious to one skilled in the art at the time of the invention to modify the first data in Belimpasakis to include the first data in Huang.
It would have been obvious to modify “the received second data to determine whether a transmission protocol used to transmit commands to the . . . of appliances is compatible with a transmission protocol used to transmit commands to the first appliance” in Belimpasakis to include a plurality of appliances as taught by Huang at the time of the invention.
The motivation for all combinations would have been “to make[] sure that [a] proposed device is compatible with existing home devices, thereby minimizing the chances for bad experiences when first using the new device” (Belimpasakis para. 33); to reduce the burden of manually setting up a universal remote (Huang para. 6); and to reduce the number of remotes a user requires (Huang para. 4).
With respect to claim 9, Belimpasakis teaches “9. (Currently Amended) The method as recited in claim 1, wherein the result of the determination includes an option for the display of additional information screens containing recommended interconnection schemes for integrating the first appliance into the system” in Fig. 4 item 408.
With respect to claim 10, Belimpasakis teaches the results of the determination. See above. It appears Belimpasakis et al. fails to explicitly teach “The method as recited in claim 1, wherein the result of the determination includes an option for posting to a social networking site information representative of the first appliance for receiving feedback from others.”
However, Examiner takes official notice that “wherein the result of the determination includes an option for posting to a social networking site information representative of the first appliance for receiving feedback from others” was well known in the art at the time of the invention.
It would have been obvious to one skilled in the art at the time of the invention to modify the result in Belimpasakis to include “an option for posting to a social networking site information representative of the first appliance for receiving feedback from others.” The motivation would have been to allow a user to quickly communicate interesting information to their friends.
With respect to claim 11, Belimpasakis teaches “11. (Currently Amended) The method as recited in claim 1, wherein the result of the determination includes an option to locate a merchant offering the appliance corresponding to the first information” in para. 12, para. 34 and para. 84
With respect to claim 12, Huang teaches UPC label in paras. 45, 57, and 81. 12. Belimpasakis teaches a second data. See above.
It would have been obvious to one skilled in the art at the time of the invention to modify the second data in Belimpasakis to include “data obtained from a UPC label” as taught by Huang.
The motivation would have been to quickly “cross-reference command codes in a command code library that are appropriate for commanding functions of [an] identified appliance.” Huang at para. 45.
With respect to claim 13, Huang teaches RFID tag the abstract. Belimpasakis teaches a second data. See above.
It would have been obvious to one skilled in the art at the time of the invention to modify the second data in Belimpasakis to include “data obtained from an RFID tag” as taught by Huang.
The motivation would have been to quickly and automatically “set[] up and configure[] a universal remote control to command functions of one or more types of remotely controllable appliances of one or more manufacturers.” Huang at para. 3, abstract.
With respect to claim 14, it would have obvious to one skilled in the art at the time of the invention to modify the device in Belimpasakis to include the functionality of the device (i.e. the universal remote) as taught by Huang. That is, it would have been obvious to one skilled in the art at the time of the invention to make the computing device in Belimpasakis and the computing device with the remote control application in Huang the same device.
The motivation would have been reduce the number of remotes a user requires to control devices on the network (Huang para. 4). See also Belimpasakis Fig. 4 item 404 (BT univ. remote) and Huang Fig. 6 item 10 (univ. remote). Having two universal remotes would have been unnecessary and confusing to the user at the time of the invention.
Response to Arguments
Applicant argues
As to the outstanding rejection under 35 U.S.C. § 101, it is submitted that amended claim 1 does not recite a mental process because, under its broadest reasonable interpretation, the claimed "using" steps cannot be practically performed in the human mind.
The language “using the first data stored in the memory of the device and the received second data” merely involves using a computer as a tool to perform a known process i.e. “to determine whether a transmission protocol used to transmit commands to the plurality of appliances is compatible with a transmission protocol used to transmit commands to a the first appliance.” As such, the language “using the first data stored in the memory of the device and the received second data” is equivalent to “apply [the determination of a compatible transmission protocol] on a computer.” See MPEP 2106.05(f)
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 the following:
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.
See also 2106.04(a)(2)(III)(C). As such, “using the first data stored in the memory of the device and the received second data to determine whether a transmission protocol used to transmit commands to the plurality of appliances is compatible with a transmission protocol used to transmit commands to a the first appliance” recites an abstract idea without significantly more.
Applicant further argues
In particular, because a human cannot see or understand the "data" stored in memory, a human cannot "use" this data for any purpose, let alone the purpose claim.
The MPEP and related case law is clear—"A Claim That Requires a Computer May Still Recite a Mental Process”. MPEP 2106.04(a)(2)(III)(C). Examiner finds Applicant’s claims are similar to “Using a computer as a tool to perform a mental process.” See id. Examiner finds “using the first data stored in the memory of the device and the received second data to determine whether a transmission protocol used to transmit commands to the plurality of appliances is compatible with a transmission protocol used to transmit commands to a the first appliance” is recited at a high level of generality such that it amounts to using a computer as a tool to perform the mental process of parsing and comparing data. See id (discussing Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018):
In 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
(emphasis added). Thus, Applicant’s argument is not persuasive.
Applicant further argues
Similarly, because a human cannot see or otherwise observe a transmission protocol, a human cannot simply "determine" whether transmission protocols are compatible. Accordingly, it is respectfully submitted that claim I as amended does not recite a judicial exception and, as such, it is requested that the rejection under 35 U.S.C. § 101 be withdrawn.
The claimed invention does not require a human to see or observe a transmission protocol per se. The claimed invention merely requires observation and evaluation of data that merely reflects recordation of said transmission protocol standard (e.g. does the stored data contain the term “RF4CE”). Stated another way, a human can look at two pieces of data and determine whether the protocols recorded in that data are the same (i.e. compatible). Applicant’s argument is not persuasive.
Applicant further argues
While it is believed that amended claim I is not directed to a mental process under Step 2A, Prong One, it is additionally submitted that amended claim I as a whole integrates any such alleged abstract idea into a practical application. The claim is directed to a specific technological use of stored remote-control configuration data to determine whether a proposed appliance can be integrated into an existing multi-appliance home entertainment system without protocol incompatibilities or command-code conflicts.
Examiner finds the prior art of record firmly establishes, at the time of the invention, “stored remote-control configuration data” is nothing more than stored data on conventional computing devices. Examiner finds the “remote-control” device’s specific involvement in the actual integration of an appliance in a multi-appliance home entertainment system is indistinguishable from that of a general purpose, conventional computer. As such, Examiner finds the addition of the device with a “remote control application” is, at most, a field of use limitation. See MPEP 2106.05(b).
Applicant further argues
The specification expressly describes this technical compatibility-check context. In the "shopping companion" mode, the system performs "a compatibility check algorithm" for a particular appliance relative to the user's existing configuration (See, e.g., [0048] and [0049]).
This compatibility check is nothing more than using a computer as a tool to parse and compare data This is not enough to confer patent eligibility. MPEP 2106.04(a)(2)(III)(C) (discussion of Berkheimer, above).
Applicant further argues
Thus, because amended claim 1 is not an attempt to monopolize a generalized concept of "evaluating compatibility" but is instead a particular technical solution for improving appliance integration and control interoperability in a home entertainment system and sets forth a method that includes a particular machine or manufacture, e.g., a device having a remote control application, that is integral to the claim, it is submitted that amended claim I is directed to patent eligible subject matter for at least the reasons discussed in MPEP § 2106.05(b). It is therefore respectfully requested that the rejection of the claims under 35 U.S.C. § 101 be withdrawn.
Applicant’s assertion that a “device having a remote control application” is integral to the claim is not persuasive. The device’s “a remote control application” does not perform any elements that reflect an improvement in technology. The claimed invention merely invokes a universal remote (indistinguishable from a conventional mobile computing device) as a tool to perform the known process of parsing and comparing data. As such, Examiner finds it is not integral to the claim. See MPEP 2106.05(b)(II)(. . .additional elements that invoke computers or other machinery merely as a tool to perform an existing process will generally not amount to significantly more than a judicial exception. . . “).
Applicant further argues
In addition, it is noted that MPEP §2106.05(a) also instructs that the claim must be considered "as an ordered combination" and that examiners should be "careful to avoid oversimplifying the claims." When considered as an ordered combination, amended claim 1 recites more than a result-oriented assessment.
Whether the claim recites a “result-oriented assessment” is not relevant to the issue of patent eligibility. Examiner has considered the claim as a whole and individually and has not oversimplified the claims.
Applicant further argues
Amended claim 1 recites a specific sequence:
storing configuration-derived first data in device memory, receiving second data identifying a candidate appliance, using the data to determine whether the transmission protocol used for the candidate appliance is compatible with the transmission protocols used for the existing appliances, and outputting the determination for display. That ordered combination imposes meaningful technological limits and reflects the disclosed technical improvement of using remote-control configuration data and command/protocol compatibility information to improve integration of appliances into an existing controllable system. (See, e.g., 11 [0007], [0020]- [0021], [0041]-[0044], [0048]-[0049]. For this still further reason, it is submitted that the claims as amended are directed to patent eligible subject matter and it is requested that the outstanding rejection under 35 U.S.C. § 101 be withdrawn.
When the claimed invention is considered as a whole, Examiner finds using a mobile device that doubles as a remote control to add an appliance to an existing system by evaluating whether recorded transmission protocols between the appliance and two or more existing appliances in the system are the same is not an improvement to technology. See arguments above and the prior art of record. As such, Applicant’s argument is not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALBERT M PHILLIPS, III whose telephone number is (571)270-3256. The examiner can normally be reached 10a-6:30pm EST M-F.
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/ALBERT M PHILLIPS, III/ Primary Examiner, Art Unit 2159
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