DETAILED ACTION
Remarks
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action is responsive to the communication(s) filed on 09/05/2024. Claims 1-21, of which claims 1, 11, 19 and 21 are independent, were pending in this application and are considered below.
Priority
Applicant's claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/05/2024 have been considered and made of record by the examiner, except where lined through due to failure to comply with 37 CFR 1.98(a)(3)(i), because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of the lined through reference listed, that is not in the English language. If a complete translation of the information into English is submitted with the non-English language information, no concise explanation is required. It has been placed in the application file, but the lined through information referred to therein has not been considered. (MPEP 609.04(a) III)
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 1-13 and 21 are objected to because of the following informalities:
replace the phrase “plurality locator devices” (line 4 of claim 1; line 3 of claim 11; line 10 of claim 21) with the phrase -- plurality of locator devices.
Claims 2-10 and 12-13 are objected due to their dependency to the objected claim 1 and 11, correspondingly. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b) or pre-AIA 35 USC § 35 USC § 112, second paragraph
Examiner Note: The Leahy-Smith America Invents Act (AIA ) made technical changes to 35 U.S.C. § 112 that only apply to patent applications filed on or after on September 16, 2012.
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-21 are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention
Regarding claims 1-3, 11-13, and 21, claim recites the limitation “the first locator device” (line 9 of claim 1; line 3 of claim 2; line 4 of claim 3; line 6 of claim 11; lines 3 and 4 of claim 12; line 3 of claim 13; line 13 of claim 21). There is insufficient antecedent basis for this limitation in the claim. It is recommended to replace the limitation with phrase -- each of the plurality of locator device--.
Regarding claims 10, 19, and 21, claims recite the limitation “transmit a test message at predetermined times” (line 7 of claim 10; line 6 of claim 19), “transmitting, by each of a plurality of locator devices and at predetermined times, a test message” (line 2 of claim 21), which term “at predetermined times” makes it vague and indefinite, because the specification merely disclose “Fig. 7 is a flow diagram illustrating processing associated with environment 100 in accordance with an exemplary implementation. Processing may begin with locators 120 each transmitting a test message at predetermined intervals, plus or minus some random offset (block 710). For example, each locator 120 may transmit a test message once a day or at some shorter or longer interval of time (e.g., every eight hours, every two days, etc.) plus/minus a random offset. The random offset may be used to ensure that each locator 120 does not transmit its test message at the same time as other locators 120, which may help avoid data collisions between the test messages.” (¶[0054] – emphasis added). Therefore, contrary to the claim language “predetermined times” (e.g., 7:00 AM; 5:30 PM, etc.), the specification describes “predetermined time intervals (e.g., every eight hours, every two days, etc.). It is recommended to replace the limitation “predetermined times” with phrase --predetermined interval of times-- in the claims 10,19, and 21.
Regarding claim 21, claims recites the limitation “message received” (line 13 of claim 21), which is vague because it is not clear whether it is the same as or different from already recited limitation “message” (line 8 of claim 21) , which are transmitted to and received by the network device. It is recommended to replace the limitation with phrase --the message--.
Regarding claims 4-9, 14-18, and 20, claims are rejected due to their dependency to the rejected claims 1, 10, and 19, correspondingly.
Claim Rejections - 35 U.S.C. 112(d) and 35 U.S.C. 112 (pre-AIA ), Fourth Paragraph
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-3 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 2, which is dependent upon claim 1, only recites: “generate, in response to determining that the current signal strength value is not within the predetermined range”. It does not include all the limitation of claim 1, which is “in response to determining that the current signal strength value is within the predetermined range”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Claim 3, which is dependent on claim 2 is rejected for the same reason.
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.
There are four statutory classes of invention defined in 35 USC § 101: machine, process, article of manufacture and composition of matter. 35 USC § 101. The Supreme Court of the United States has further delineated several subject matter exceptions that are ineligible for patenting. Bilski v. Kappos, 95 USPQ2d 1001, 1005-06 (2010); MPEP § 2106. In particular, claims embracing abstract ideas, physical phenomena and laws of nature are patent ineligible. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208, 134 S. Ct. 2347 (2014), slip op., at 5 (citing Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S 576 (2013), slip op., at 11)); Bilski at 1005-06; MPEP § 2106. According to Alice, the two part analysis of Mayo Collaborative Services v. Prometheus Laboratories Inc., 566 U.S. 66 (2012) should be used for all types of judicial exceptions and all categories of claims. Alice Corp., slip op., at 7, 16, 17. The first part of the analysis is to "determine whether the claims at issue are directed to a patent- ineligible concept." Alice Corp., slip op., at 7. Upon determining that an abstract idea is present in the claim, the second part of the analysis is to determine whether the claim "contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application." Alice Corp., slip op., at 11 (citing Mayo, slip op., at 3, 11). Claims, therefore, must do more than merely add insignificant limitations, such as limiting the field of use, adding token extra solution activity that lacks a particular machine or transform and adding wholly conventional machines and acts. See Alice Corp., slip op., at 12-13 ("[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention . “Stating an abstract idea while adding the words 'apply it with a computer' simply combines those two steps, with the same deficient result."); Bilski at 1009-10; MPEP § 2106.
Claims 1-2 and 4-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claim 1, Step 1: Yes, a general purpose computer (which inherently contains communication interfaces at both internal and external levels to allow its hardware components and external devices to exchange data), thus, a manufacture or a machine.
Step 2A, Prong 1: Claim recites the limitations: “determine whether a …vale received … is within a predetermine range …” is a process that, under its broadest reasonable interpretation, covers performance of the limitations in the mind but for the recitation of a generic computer components (i.e., a device comprising communication interface and processing logic).. That is, other than being performed by a generic computer component, nothing in the claim precludes the determining step from practically being performed in the human mind. The limitation is Mental Process (observation, evaluation, judgment, and/or opinion)
Step 2A, Prong 1: The additional element, “receiving …” is merely data gathering and insignificant extra-solution activity (pre-solution activity) (MPEP 2106.05 (g)).
The additional element, “wherein each of the messages includes …” is generally linking the use of the judicial exception to a particular technological environment or field of use (network paging) (MPEP 2106.05(h)).
Step 2B: the claim does not recite additional elements that are sufficient to amount to significantly more than the abstract idea when considered both individually and as a whole.
Under Step 2B, limitation(s) that are insignificant extra-solution activity under step 2A, Prong 2, need to be re-evaluated to determine whether they are well-understood, routine, conventional activities.
Specifically, the limitation, “receiving …” is just receiving/transmitting data over a network, which is mere judicial-recognized well-understood, routine, conventional activity (MPEP 2106.05(d)(II).
When considered as a whole, the claimed invention still fails amount to significantly more than applying a judicial exception in a particular technological environment (locator device) using a generic computer.
Regarding claim 2, Step 2A, Prong 1: The limitation: “generate …” is Mental Process (observation, evaluation, judgment, and/or opinion).
Regarding claims 4-6, Step 2A, Prong 1: The limitation: “determine …” is Mental Process (observation, evaluation, judgment, and/or opinion).
Regarding claims 7, Step 2A, Prong 1: The limitation: “determine …” is Mental Process (observation, evaluation, judgment, and/or opinion).
Step 2A, Prong 2: The additional element “store, in the memory, …” is merely data storing and insignificant extra-solution activity (pre-solution activity) (MPEP 2106.05 (g)).
Step 2B: The claim does not recite additional elements that are sufficient to amount to significantly more than the abstract idea when considered both individually and as a whole.
Under Step 2B, limitation(s) that are insignificant extra-solution activity under step 2A, Prong 2, need to be re-evaluated to determine whether they are well-understood, routine, conventional activities.
The limitations “store, in the memory, …” is merely storing the determined offset distance information, which is a judicial-recognized well-understood, routine, conventional activity. “The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity ... iv. Storing and retrieving information in memory, 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.” (MPEP 2106.05(d) II).
Regarding claim 8, Step 2A, Prong 1: The additional element, “wherein each of the received messages includes …” is generally linking the use of the judicial exception to a particular technological environment or field of use (locator device) (MPEP 2106.05(h)).
Regarding claim 9, Step 2A, Prong 1: The additional element, “wherein each of the plurality of locator devices is configured to …” is generally linking the use of the judicial exception to a particular technological environment or field of use (locator device) (MPEP 2106.05(h)).
Regarding claim 3, claim is objected due to its dependency to the rejected claim 2.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1,148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
The foregoing obviousness inquiry requires an expansive and flexible approach, not a rigid approach demanding express teachings, suggestions and motivations to combine prior art teachings. KSR International Co. v. Teleflex, Inc., 82 USPQ2d 1385, 1395, 97 (US 2007). The rationale supporting a conclusion of obviousness should be made explicit for review, but the rationale does not require precise teachings directed to the specific subject matter of the claim. Id. at 1396. A rejection can rely on inferences and creative steps that a person of ordinary skill in the art would employ. Id. Obviousness rejections are not limited to showing the obviousness of solutions to the problems Applicant was trying to solve. Id. at 1397. Rather, one can show obviousness of a claim by establishing the obviousness of any solution to any known problem in the field of endeavor and addressed by a patent application's subject matter. Id. Moreover, one of ordinary skill in the art is not an automaton, but is possessed of ordinary creativity. Id. One of ordinary skill could find alternative uses for prior art elements beyond the elements' primary purposes and fit prior art teachings together like a puzzle. Id. A combination of prior art teachings does not require absolute predictability. Eli Lilly and Co. v. Zenith Goldline Pharmaceuticals Inc., 81 USPQ2d 1324, 1329 (Fed. Cir. 2006). All that is required is a reasonable expectation of success. Id.
Claims 1 and 10 are rejected under 35 U.S.C. 103(a) as being unpatentable over U.S. Patent Application Publication No. US 2016/0037300 A1 to Vitek et al.
Regarding claim 1, Vitek et al. disclose a device (Fig. 1: “Target Device102”; ¶[0014]: “A target device (102) is a device that is the target of the distance determination and/or location”) device, comprising:
a communication interface; and processing logic (¶[0014]: “the target device (102) may be a mobile device (e.g., laptop computer, smart phone, personal digital assistant, tablet computer, or other mobile device), desktop computer, server, blade in a server chassis, or any other type of computing device or devices that includes at least the minimum processing power, memory, and input and output device(s) to perform one or more embodiments.”) configured to:
receive messages (¶[0027]: “Determining the locator device may include polling the target devices connected to each locator device to identify the locator device that is associated with the target device, polling each locator device to identify target devices associated with the locator device”) {polling is the message received by target device from the locator device}, from each of a plurality locator devices (¶[0014]: “A target device (102) is connected to a network (106) via a locator device (e.g., locator device H (104X), locator device J (104Z) ).”) wherein each of the messages includes a signal strength value (¶[0020]) associated with a (¶[0027]) {polling is the message}, and
determine whether a current signal strength value received in a message from a first one of the plurality of locator devices is within a predetermined range associated with signal strength values included in messages received from the first locator device (¶¶[0029]-[0032]).
Vitek et al. disclose, as stated above, except for expressly teaching “test” messages. However, Vitek et al. disclose the use of polling messages to obtain target device information from the locater devices (¶[0027]: “Determining the locator device may include polling the target devices connected to each locator device to identify the locator device that is associated with the target device, polling each locator device to identify target devices associated with the locator device”). Therefore, it would have been obvious to one ordinary skill in the art, before the effective filing date of the claimed invention, to use polling messages taught by Vitek et al. to convey test messages of any locator device, in order to arrive at the claimed invention with a reasonable expectation of success.
Regarding claim 10, Vitek et al. disclose as stated above, except for expressly teaching wherein each of the plurality of locator devices is configured to track locations of a plurality of pendants worn or carried by users. Official Notice is taken that using locator devices to track locations of pendants is well known and expected in the art, as disclosed by Roth (¶[0011]: “a pendant transmits beacon signals at predetermined intervals that are detected by various locator devices in wireless range of the pendant. The locator devices identify a signal strength of the beacon and transmit the received signal strength information to other locator devices. The locator devices then compare their received signal strength value associated with the beacon with the signal strength values measured by the other locator devices. The locator device that received the strongest signal with respect to the beacon may then transmit location and/or other information to a central monitoring system, which tracks the locations of the pendants.”) {one of the ordinary skill understands that the locator device may be used for tracking}. Therefore, it would have been obvious to one ordinary skill in the art, before the effective filing date of the claimed invention, to use the aforesaid well known technique of Roth in system of Vitek et al. to reach at the claimed invention with a reasonable expectation of success, because such a combination would have represented the combination of known techniques through conventional manners to provide predictable and expected results.
Claims 1 and 10 are rejected under 35 U.S.C. 103(a) as being unpatentable over U.S. Patent Application Publication No. US 2016/0037300 A1 to Vitek et al. in view of U.S. Patent Application Publication No. US 2025/0080251 A1 to Roth.
Regarding claim 9, Vitek et al. disclose a system, comprising: a plurality of locator devices (¶[0012]: “locator devices (e.g., locator device H (104X), locator device J (104Z)).”); and a network device configured to receive information from the plurality of locator devices (¶[0016]: “A locator device … is a hardware device that is configured to receive and transmit packets to the target device and the network (106).”), wherein each of the plurality of locator devices comprises: a communication interface, and first processing logic (¶[0016]: “The locator device may include one or more hardware processor( s ), associated memory”; ¶[0017]: “the locator device may be the access point, the controller, an access point that includes the functionality of a controller, a switch ( e.g., mobility access switch), or other such device.”) configured to: transmit a (¶[0027]: “Determining the locator device may include polling the target devices connected to each locator device to identify the locator device that is associated with the target device, polling each locator device to identify target devices associated with the locator device”) {polling are the messages}, determine a signal strength value for each of the received other test messages(¶[0020]: “signal strength that was sent from the target device and received by the locator device.”)., and transmit, to the network device, messages including the determined signal strength values (¶[0051]: “the network administrator … receive packets … and determine the received signal strengths from the packets received.”)
Vitek et al. disclose, as stated above, except for expressly teaching “test” messages. However, Vitek et al. disclose the use of polling messages to obtain target device information from the locater devices (¶[0027]: “Determining the locator device may include polling the target devices connected to each locator device to identify the locator device that is associated with the target device, polling each locator device to identify target devices associated with the locator device”). Therefore, it would have been obvious to one ordinary skill in the art, before the effective filing date of the claimed invention, to use polling messages taught by Vitek et al. to convey test messages of any locator device, in order to arrive at the claimed invention with a reasonable expectation of success.
Allowable Subject Matter
Claims 19-21 would be allowable if rewritten or amended to overcome the objection set forth in this Office action.
Claims 19-21 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b), set forth in this Office action.
Claim 11-18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
As applied to the claims above, the specific columns, line numbers, and figures in the references has been cited for the Applicant’s convenience. Although the specified citations are representative of the teachings of the art and are applied to the particular limitations within the individual claims, other passages and figures may apply as well. The Applicant is respectfully requested to fully consider the references, in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage taught by the prior art or disclosed by the Examiner, in preparing responses. Applicant(s) are reminded that MPEP 2123 I. states: “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
The attention of the applicant is drawn to the fact that the application may not be amended in such a way that it contains subject matter which extends beyond the content of the application as originally filed. In order to facilitate the examination of the conformity of the amended application, the applicant is respectfully requested to clearly identify the amendments carried out, irrespective of whether they concern amendments by addition, replacement or deletion, and to indicate the passages of the application as filed on which these amendments are based.
Reliance on the US Pre-Grant Publication (PG PUB) of this application, which is not part of the image file wrapper of the patent application, in the prosecution is improper. All references in the reply to the office action are to be made to the latest version on record of the patent application as filed not as published. The latest version on record of the patent application means the patent application as originally filed and modified by previously entered amendment(s).
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Cannell et al. (US 20190327161 A1) is equivalent and trustworthy translation of the IDS cited Foreign applications CN 110140364 A and WO 2018/125785 A1.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nader Bolourchi whose telephone number is (571) 272-8064. The examiner can normally be reached on M-F 8:30 to 4:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hannah S. Wang, SPE can be reached on (571) 272-9018. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Interviews are available via telephone and video conferencing using a USPTO web-based Video Conferencing and Collaboration Tool. To schedule an interview, Applicants are encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Communications via Internet e-mail are at the discretion of the applicant. See MPEP § 502.03. Without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122 and will not initiate communications with applicants via Internet e-mail. The internet authorization must be submitted on a separate paper to be entitled to acceptance in accordance with 37 CFR 1.4(c). The separate paper will facilitate processing and avoid confusion. The written authorization may be submitted via EFS-Web, mail, or fax. It cannot be submitted by email.
The following is a sample authorization form, which may be used by applicant:
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.”
A written authorization may be withdrawn by filing a signed paper clearly identifying the original authorization. The following is a sample form which may be used by applicant to withdraw the authorization:
“The authorization given on______, to the USPTO to communicate with any practitioner of record or acting in a representative capacity in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application via video conferencing, instant messaging, or electronic mail is hereby withdrawn.”
To facilitate processing of the internet communication authorization or withdraw of authorization, the Office strongly encourages use of Form PTO/SB/439, filed via EFS-Web. The Form is available at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (in USA, or CANADA) or 571-272-1000.
/Nader Bolourchi/
Primary Examiner, Art Unit 2631
