DETAILED ACTION
Notice of 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 .
Election/Restrictions
Applicant’s election with traverse of Invention IV (claims 1 and 6-7) in the reply filed on 2026-01-26 is acknowledged. The traversal is on the grounds that the Examiner (A) failed to properly identify species and (B) failed to properly support a species restriction requirement. This is not found persuasive because the Examiner did not perform a species restriction, but instead performed a restriction as “Subcombinations Usable Together” (a particular type of related but distinct restriction) under MPEP § 806.05(d). The arguments presented by applicant regarding the requirements of a species restriction under MPEP § 806.04 are not germane to a subcombinations usable together restriction such as performed by Examiner.
The Examiner additionally notes that although the Examiner did not perform a species restriction, one of the arguments provided by applicant regarding a requirement of species restriction is related with the requirements of a “Subcombinations Usable Together”, and that is the requirement that “the subcombinations do not overlap in scope”, i.e. that they be mutually exclusive. The Examiner notes that Applicant references what appears to be non-official training material (a slide posted outside of – and blocked by – the Agency), and refers to a note on slide 26. The Examiner does not know what the context of the note is; however, the fact pattern suggested by applicant from this note is generally incorrect and in contravention with MPEP § 806.05(d) which gives a specific example of restricting B, C, and ABC from each other.
Regardless, applicant appears to harbor the incorrect notion that any shared subject matter between claims precludes restriction; however, such notion is patently false. Instead, a restriction requirement for related but distinct inventions analyzes whether the differences between the respective inventive groups cause them to be patentably distinct. More particularly, if, among any set of identified inventions, each identified invention has at least one distinct element that is not an “obvious variation” of the other inventions (regardless of how much overlap the inventions share), then the inventions are mutually-exclusive and hence demonstrate two-way distinction; (“Related inventions in the same statutory class are considered mutually exclusive, or not overlapping in scope, if a first invention would not infringe a second invention, and the second invention would not infringe the first invention”, MPEP § 806.05). Further, Applicant has merely provided allegations of similarity between the restricted claims, but did not amend the claims to similar scope or make a clear admission on the record that the inventions are not patentably distinct because they are all “obvious variations”, which would have been sufficient to successfully traverse the restriction requirement; See MPEP § 1504.05(III).
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
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 6-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (35 U.S.C. 101 Judicial Exception) without significantly more. The claims recite changing a Wi-Fi password based on personal information acquired from a user’s key, a form of observation, evaluation, and/or judgment, opinion, which is a concept performed in the human mind and thus grouped as Mental processes. This judicial exception is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered separately and in combination, do not add significantly more to the abstract idea, as they are well-understood, routine, conventional computer functions as recognized by the courts.
Based upon consideration of all the relevant factors with respect to the claimed invention as a whole, the claims are determined to be directed to an abstract idea without significantly more. The rationale for this determination is explained infra:
The following are Principles of Law:
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”; 35 U.S.C. § 101. The Supreme Court has consistently held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable; See Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, an application of these concepts may be deserving of patent protection; See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The test for determining subject matter eligibility requires a first step of determining whether the claims are directed to a process, machine, manufacture, or composition of matter. If the claims are directed to one of the four patent-eligible subject matter categories, then the Examiner must perform a two-part analysis to determine whether a claim that is directed to a judicial exception recites additional elements that amount to significantly more than the exception. The first part of the second step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second part of the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step in the analysis is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent on the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
In the “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), the USPTO has prepared revised guidance for use by USPTO personnel in evaluating subject matter eligibility based upon rulings by the courts.
The Examiner is bound by and applies the framework as set forth by the Court in Mayo and reaffirmed by the Court in Alice and follows the 2019 PEG for determining whether the claims are directed to patent-eligible subject matter.
Step 1: Are the claims at issue directed to a process, machine, manufacture, or composition of matter?
The Examiner finds that the claims are directed to one of the four statutory categories.
Step 2A – Prong One: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
The Examiner finds that the claims are directed to the abstract idea of changing a Wi-Fi password based on personal information acquired from a user’s key, a form of observation, evaluation, and/or judgment, opinion, which is a concept performed in the human mind and thus grouped as Mental processes.
Step 2A – Prong Two: Does the claim recite additional elements that integrate the Judicial Exception into a practical application?
The abstract idea is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer.
In determining whether the abstract idea was integrated into a practical application, the Examiner has considered whether there were any limitations indicative of integration into a practical application, such as:
(1) Improvements to the functioning of a computer, or to any other technology or technical field; See MPEP § 2106.05(a)
(2) Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; See Vanda Memo (Recent Subject Matter Eligibility Decision: Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals)
(3) Applying the judicial exception with, or by use of, a particular machine; See MPEP § 2106.05(b)
(4) Effecting a transformation or reduction of a particular article to a different state or thing; See MPEP § 2106.05(c)
(5) Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception; See MPEP § 2106.05(e) and Vanda Memo
The Examiner notes that clam features of: changing a Wi-Fi password based on personal information acquired from a user’s key do not improve the functioning of a computer or technical field, do not effect a particular treatment or prophylaxis for a disease or medical condition, do not apply or use a particular machine, do not effect a transformation or reduction of a particular article to a different state or thing, and do not apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Instead of a practical application, the claim features of changing a Wi-Fi password based on personal information acquired from a user’s key merely use a general-purpose computer as a tool to perform the abstract idea (See MPEP § 2106.05(f)) and merely generally link the use of the abstract idea to a field of use (See MPEP § 2106.05(h)). Thus, the Examiner finds that the claimed invention does not recite additional elements that integrate the Judicial Exception into a practical application.
Step 2B: Is there something else in the claims that ensures that they are directed to significantly more than a patent-ineligible concept?
The claims, as a whole, require nothing significantly more than generic computer implementation or can be performed entirely by a human. The additional element(s) or combination of element(s) in the claims other than the abstract idea per se amount to no more than a recitation of performing (without even generic computer structure, i.e. there is no defined structure performing any functions) generic computer functions (e.g. acquiring personal information, checking a preset Wi-Fi password, and changing and setting a Wi-Fi password) that are well-understood, routine, and conventional activities previously known to the pertinent industry. The claimed personal information, digital key, and preset Wi-Fi password is/are all numbers, data structures, or datum. Each of these elements are individually dispositive of patent eligibility because of the following legal holdings:
“Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101.” Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014).
The Supreme Court has also explained that “[a]bstract software code is an idea without physical embodiment,” i.e., an abstraction. Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
A claim that recites no more than software, logic, or a data structure (i.e., an abstract idea) – with no structural tie or functional interrelationship to an article of manufacture, machine, process or composition of matter does not fall within any statutory category and is not patentable subject matter; data structures in ethereal, non-physical form are non-statutory subject matter. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994); see Nuijten, 500 F.3d at 1357.
Furthermore, the claimed invention does not have a specific asserted improvement in computer capabilities, nor is it a specific implementation of a solution to a problem in the software arts; See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Rather, the claims are merely directed towards changing a Wi-Fi password based on personal information acquired from a user’s key, which is similar to ideas that the courts have found to be abstract, as noted supra, and the claims are without a “practical application” or anything “significantly more”.
Considering each of the claim elements in turn, the function performed by the computer system at each step of the process does no more than require a generic computer to perform a well-understood, routine, and conventional activity at a high level of generality. For example, “acquiring personal information” is merely receiving or transmitting data over a network, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network). Further, “checking (obtaining) a preset Wi-Fi password” and “changing and setting a Wi-Fi password” are merely forms of storing and retrieving information in memory, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93. Further note that the abstract idea of changing a Wi-Fi password based on personal information acquired from a user’s key to which the claimed invention is directed has a prior art basis outside of a computing environment, e.g. a hotel changing the locks to work with new guest key cards.
The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Viewed as a whole, the claims simply recite the steps of using generic computer components. The claims do not purport, for example, to improve the functioning of the computer system itself. Nor does it effect an improvement in any other technology or technical field. Instead, the claims amount to nothing significantly more than an instruction to implement the abstract idea using generic computer components. This is insufficient to transform an abstract idea into a patent-eligible invention.
The dependent claims likewise incorporate the deficiencies of a claim upon which they ultimately depend and are also directed to non-patent-eligible subject matter.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 6-7 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Specifically, claim 6 recites the limitation “establishing the Wi-Fi connection to the smartphone of the occupant through the Wi-Fi password set during the changing and setting”, and it is unclear whether the prepositional phrase “during the changing and setting” is modifying “the Wi-Fi password set” or “establishing the Wi-Fi connection”. The dependent claims included in the statement of rejection but not specifically addressed in the body of the rejection have inherited the deficiencies of their parent claim and have not resolved the deficiencies. Therefore, they are rejected based on the same rationale as applied to their parent claims above.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Alam et al. (US Pre-Grant Publication No. 20150199855-A1, hereinafter “Alam”).
With respect to independent claim 1, Alam discloses a method of setting a password for a Wi-Fi connection to a smartphone in a vehicle {para. 0026: “controlling a wireless hotspot at the vehicle 12” including “setting and re-setting the password used to access the Wi-Fi hotspot”}, the method comprising:
acquiring personal information of an occupant of the vehicle based on a digital key that has been used to access the vehicle {paras. 0017-0019, 0028, & 0030: “one or more Wi-Fi control variables are received along with a vehicle identity”, with the “one or more Wi-Fi control variables or Wi-Fi diagnostic commands” being sent from the “user who is authorized to control the Wi-Fi hotspot”; the user is “authenticated” using their “private key” which also enables control of the VSM that “governs … the vehicle's power door locks”}.
checking a preset Wi-Fi password based on the personal information {paras. 0026, 0028, & 0030: “the user can maintain at the wireless device a private key with which the device can encode a hash to send to the central facility”; preset can be interpreted as the password provided by the user which is also at once envisaged as previously/currently used by the user elsewhere}.
changing and setting a Wi-Fi password in the vehicle to the preset Wi-Fi password {paras. 0026 & 0031: “cause the unit 30 to change Wi-Fi control variables or execute Wi-Fi diagnostic commands at the vehicle 12” including “setting and re-setting the password used to access the Wi-Fi hotspot”}.
With respect to dependent claim 6, Alam discloses establishing the Wi-Fi connection to the smartphone of the occupant through the Wi-Fi password set during the changing and setting {paras. 0010 & 0015: “remedy problems with the Wi-Fi hotspot” – it is at once envisaged that a user would use their “smart phone” to connect to Wi-Fi after they “remedy problems with the Wi-Fi hotspot”}.
With respect to dependent claim 7, Alam discloses performing control on a video recording device in response to a request input through the smartphone of the occupant on which the Wi-Fi connection is established {para. 0017: “infotainment-related services where music, webpages, movies, television programs, videogames and/or other information is downloaded by an infotainment module (not shown) and is stored for current or later playback”}.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Bechtel whose telephone number is 571-270-5436. The examiner can normally be reached Monday - Friday, 09:00 - 17:00 ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William (“Bill”) Korzuch can be reached at 571-272-7589. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kevin Bechtel/
Primary Examiner, Art Unit 2491