DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), 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 1-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the claim is rejected as being incomplete for omitting essential step(s) or an end result. The omitted step(s) is the step(s) wherein the claimed limitation is actually doing something tangible with the end result, i.e. the object location to be located in the identified area is put to use or output a concrete result.
Other claims are also rejected based on their dependency of the defected parent claim.
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 1-4 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite a method that uses a fingerprint to identify a location of an object to be located that is accomplished through a series of mental processes. The claims also require no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because all claims elements, both individually and in combination, are directed to the manipulation of data by a general purpose computer and/or performing by a person. Thus, it does not integrate the abstract idea into a practical application.
An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217—18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75—77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices {Alice, 573 U.S. at 219—20, Bilski, 561 U.S. at 611); mathematical formulas {Parker v. Flook, 437 U.S. 584, 594—95 (1978)); and mental processes {Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” {Diamond v. Diehr, 450 U.S. 175, 192 (1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores” {id. at 184 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267—68 (1854))); and manufacturing flour {Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 192 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract...is not accorded the protection of our patent laws,…and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].”” Id. ((alteration in the original) quoting Mayo, 566 U.S. at 77). “[M]erely requiring] generic computer implementation fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance (“Memorandum”). Under Step 2A of that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
Analysis
Step 1 – Statutory Category
Claim 1 recites a method. Thus, the claim is a process, which is one of the statutory categories of invention.
Step 2A, Prong One – Recitation of Judicial Exception
Step 2A of the 2019 Guidance is a two-prong inquiry. In Prong One, we evaluate whether the claims recites a judicial exception. For abstract ideas, Prong One represents a change as compared to prior guidance because we here determine whether the claim recites mathematical concepts, certain methods of organizing human activity, or mental processes.
Claim 1 recites the steps of:
individually creating a machine learning model for predicting coordinate values based on strength of radio waves received from each of a plurality of radio wave transmitters, with respect to each of a plurality of areas divided in advance;
identifying an area in which the object to be located is situated, out of the plurality of areas, based on the strength of the radio waves received by a radio wave receiver provided to the object to be located; and
identifying coordinate values of the object to be located in the area that is identified, using the machine learning model that is created for the area that is identified.
The “creating” step may be performed in the human mind using observation and evaluation.
The “identifying an area…” step may be performed in the human mind using observation, evaluation, opinion, and judgement.
The “identifying coordinate values …” step may be performed in the human mind using observation, evaluation, opinion, and judgement.
Therefore, such step of as claimed in claim 1 encompasses processes that can be performed mentally; thus, fall within “mental processes” grouping of abstract ideas.
In addition, dependent claims 2-4 further claiming information gleaned from the mental processes.
Regarding claims 2-4, the further steps of identifying a location of an object to be located as claimed may be practically performed in the human mind observation, evaluation, opinion, and judgment.
Therefore, dependent claims 1-4 also falls within the “mental processes” grouping of abstract ideas.
Since the claims recite an abstract idea, the analysis proceeds to Prong Two to determine whether the claim is “directed to” the judicial exception.
Step 2A, Prong Two – Practical Application
If a claim recites a judicial exception, in Prong Two we next determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.
If the recited judicial exception is integrated into a practical application, the claim is not directed to the judicial exception. This evaluation requires an additional element or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception.
The only additional elements of claim 1 is receiving radio waves from transmitters. This limitation, at a high-level of generality, merely recites data communication and gathering steps for further analyzing/determining steps. The receiver acts only for data gathering and do not add a meaningful limitation to the method as they are insignificant extrasolution activity which simply provide what all receivers provide. As such, it amounts to no more than insignificant extra--solution activity to the judicial exception. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because all claims elements, both individually and in combination, are directed to the manipulation of data by a general purpose computer and/or performing by a person. Accordingly, it does not integrate the judicial exception into a practical application of the exception.
Step 2B – Inventive Concept
For Step 2B of the analysis, it is determined whether the claim adds a specific limitation beyond the judicial exception that is not “well-understood, routine, convention” in the field.
As stated above, claims 1-4 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Since this judicial exception is not integrated into a practical application because the additional elements amount to no more than data gathering steps and mental processes. Merely adding insignificant extra-solution activity to the judicial exception does not provide an inventive concept.
The courts have considered the following examples to be well-understood, routine, and conventional when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, 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).
As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Therefore, the claims are patent ineligible under 35 USC 101.
Claim Rejections - 35 USC § 103
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, 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 for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 1 are rejected under 35 U.S.C. 103 as being unpatentable over Seki (WO 2020/250437 in which a machine English translation is incorporated herein).
Regarding claim 1, Seki discloses a locating method comprising:
identifying an area in which the object to be located is situated, out of the plurality of areas, based on the strength of the radio waves received by a radio wave receiver provided to the object to be located (i.e. a plurality areas 31, 32, 33) (Fig 1-3, 5, 7-10; Abstract; pages 1-4 of the description of Embodiment 1); and
identifying coordinate values of the object to be located in the area that is identified (i.e. “Therefore, the position detection system identifies the position of the wireless tag 11…”) (Abstract; page 4, second paragraph).
Seki does not explicitly disclose individually creating a machine learning model and using the machine learning model as claimed. It would have been an obvious matter of design choice to create a machine learning model and using the machine learning model as claimed for identifying a location of an object, since Applicant has not disclosed such machine learning model solves any stated problem. It appears that the invention would perform equally well with the locating method as taught by Seki for properly identifying the location of the object to be located in the area.
While patent drawings are not drawn to scale, relationships clearly shown in the drawings of a reference patent cannot be disregarded in determining the patentability of claims. See In re Mraz, 59 CCPA 866, 455 F.2d 1069, 173 USPQ 25 (1972).
For applicant’s benefit portions of the cited reference(s) have been cited to aid in the review of the rejection(s). While every attempt has been made to be thorough and consistent within the rejection it is noted that the PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS. See MPEP 2141.02 VI.
Allowable Subject Matter
Claims 2-4 are rejected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and if overcome the 35 USC 112(b) and 35 USC 101 rejections stated above.
Conclusion
The cited prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 9,408,040 discloses a method of identifying a location of a mobile device in a building includes identifying non-overlapping regions in a building. A server collects base station signal strength measurements at a plurality of distinct points in the building, with at least one point in each region. The server trains region classifiers for each region. Each region classifier is configured to compute a probability estimate that the test point is inside the region, using inputs that are signal strength differences. The server receives signal strength measurements from the base stations, taken by a mobile device at an unknown point. The server computes differences in signal strengths between pairs of base stations, and applies the region classifiers to the signal strength differences, thereby estimating the region where the mobile device is located. The server then transmits the estimated region to a user.
US 8,874,137 discloses apparatus for determining a positioning error includes: database for storing grid cells separated by each pCell ID and WLAN environment information matched to grid cells; information receiving unit for receiving terminal WLAN environment information from mobile communication terminal; identification information checking unit for checking AP identification information included in terminal WLAN environment information; triangulating unit for calculating triangulation coordinate value by performing triangulation with AP position estimation information corresponding to AP identification information; grid cell positioning unit for selecting one or more grid cells corresponding to AP identification information and calculating grid cell coordinate value based on coordinate value corresponding to grid cell selected; and error determining unit for comparing triangulation coordinate value and grid cell coordinate value and determining whether there is positioning error in any one of triangulation coordinate value and grid cell coordinate value.
US 6,108,556 discloses a mobile station locating method for locating a mobile station based on a mobile communications system. Radio zones of base stations are dissected into a plurality of search areas (grid sections). A positional relationship between base stations and a concerned search area is defined by mutual time differences in the radio wave propagation between them. The base stations transmit their characteristic signals. Time differences in the propagation of the characteristic signals are caused between transmission of the characteristic signals at respective base stations and reception at a mobile station. Mutual differences in their propagation times are used to identify a search area where the mobile station is present. Thus, the position of the mobile station can be identified by an area not by a point.
KR 20240055623 discloses fingerprint-based indoor positioning method using reduced reference information comprises the following steps in which: a positioning device receives signal information received by a terminal at a current location; the positioning device divides reference locations into a plurality of clusters based on coordinates of reference locations belonging to a reference database; the positioning device compares the signal intensity of the received signal information with the signal intensities of representative locations of the clusters to determine a target cluster as a cluster having the most similar signal intensity; and the positioning device compares the received signal information with the signal information of reference locations belonging to the target cluster to estimate the location of the reference location having the most similar signal as the location of the terminal.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHUONG P NGUYEN whose telephone number is (571)272-3445. The examiner can normally be reached Mon-Fri, 10:00-10:00 EST.
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, JACK KEITH can be reached at (571) 272-6878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHUONG P NGUYEN/Primary Examiner, Art Unit 3646
Prosecution Insights