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 12/23/2024. Claims 1-20, of which claims 1, 10, and 14 are independent, were pending in this application and are considered below.
Information Disclosure Statement
The references cited on the information disclosure statement (IDS) submitted on 12/23/2024 have been considered and made of record by the examiner.
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 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, 6, 8-11, 14-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claims 1, 10, and 16, Step 1: method/process claim.
Step 2A, Prong 1: Claim recites the limitations: “determining/determine, by a first computing device, a signal metric …”; “determining/determine, by the first computing device and based on the signal metric, a measured distance …”; “determining/determine, by the first computing device and based on the comparison, an offset distance …”; “determining/determine, by the first computing device and based on the device-pair calibration profile, a distance …”. Each of the above mentioned “determining…” limitations, as drafted, 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. That is, other than reciting “by the first computing device,” nothing in the claim precludes the determining step from practically being performed in the human mind. For example, but for the “by the first computing device” language, the claim encompasses the user manually perform these limitations. These limitation are Mental Process (observation, evaluation, judgment, and/or opinion)
The claim recites the limitation of “comparing/compare, by the first computing device, the measured distance …”. This limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “by the first computing device,” nothing in the claim element precludes the step from practically being performed in the mind. The mere nominal recitation of a generic computing device, which merely automates the comparison step, does not take the claim limitation out of the mental processes grouping. Thus, the claim recites a Mental Process (observation, evaluation, judgment, and/or opinion).
Step 2A, Prong 2: The additional element, "a first computing device", is used to perform both the comparing and all determining steps. The first computing device, in all claimed steps, is recited at a high level of generality, i.e., as a generic computing device, e.g., a generic processor, performing a generic computer function of processing data. The additional element, “a first computing device" is applying abstract idea using a general-purpose computer (i.e., “apply it”, MPEP 2106.05(f)). It invokes a generic computer (a first computing device) merely as a tool to perform the judicial exception or an existing process by using of a computer or other machinery in its ordinary capacity.
The additional element “generating/generate, based on the offset distance, a device-pair calibration profile for the first computing device and the second computing device.” are 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.
As discussed with respect to Step 2A Prong Two, the additional element in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
The limitations “generating, based on the offset distance, a device-pair calibration profile” 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).
When considered as a whole, the claimed invention still fails amount to significantly more than applying a judicial exception in a particular technological environment (ranging) using a generic computer.
Regarding claims 2, 11, and 117, Step 2A, Prong 1: “determining/determine, a second signal metric …”; is a Mental Process (observation, evaluation, judgment, and/or opinion)
The limitation “compute, based on the device-pair calibration profile and the second signal metric, the distance …” fall within the mathematical concepts grouping of abstract ideas. analysis.
Regarding claims 6, and 14, Step 2A, Prong 1: the limitation “updating/update the device-pair calibration profile …” is a Mental Process (observation, evaluation, judgment, and/or opinion)
Step 2A, Prong 2: The limitation “obtaining …” is merely data gathering 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.
Specifically, the limitation, “obtaining …” is just receiving/transmitting data over a network, which is mere judicial-recognized well-understood, routine, conventional activity (MPEP 2106.05(d)(II).
Regarding claim 8, Step 2A, Prong 1: the limitation “determining the measured distance …” is a Mental Process (observation, evaluation, judgment, and/or opinion)
Step 2A, Prong 2: The limitation “wherein the wireless ranging protocol includes one of: an ultra-wideband protocol, a personal area network channel sounding protocol, or a local area network round trip time protocol” is merely data gathering 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.
Specifically, the limitation, “wherein the wireless ranging protocol includes one of …” is generally linking the use of the judicial exception to a particular technological environment or field of use (network protocol) (MPEP 2106.05(h)).
Regarding claims 9 and 15, Step 2A, Prong 1: the limitations: “determining/determine … a second signal metric …”; “determining/determine … a second measured distance …”; comparing/compare … the second measured distance …”; “determining/determine …” a second offset distance …”; determining/determine … a distance ...” are Mental Process (observation, evaluation, judgment, and/or opinion)
Step 2A, Prong 2: The additional element “generating, based on the second offset distance, a second device-pair calibration profile for the first computing device and the third computing device.” 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 “generating, based on the second offset distance, a second device-pair calibration profile for the first computing device and the third computing device” 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 claims 3-5, 7, 12-13, and 18-20, claims are objected due to their dependency to rejected claims 1, 10, and 16, correspondingly.
Claims 16-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter.
The claimed invention is directed to a “Computer-readable storage media” that is non-statutory subject matter. The broadest reasonable interpretation of a claim drawn to a Computer-readable storage media (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. See MPEP 2111.01.
It is also noted that the specification discloses: “computer-readable media generally may correspond to (1) tangible computer-readable storage media, which is non-transitory or (2) a communication medium such as a signal or carrier wave. Data storage media may be any available media that can be accessed by one or more computers or one or more processors to retrieve instructions, code and/or data structures for implementation of the techniques described in this disclosure.” (¶[0094] – emphasis added). In view of the aforementioned disclosure, the application claim drawn to such computer-readable storage media covers both non-transitory tangible media and transitory propagating signals, e.g., carrier wave, is directed to non-statutory subject matter.
A claim drawn to such a computer-readable storage media that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101. It is recommended to amend the claim 17 to recite: “A non-transitory computer-readable storage media encoded with instructions that when executed by a processor cause a computing device to:”, and add the limitation "non-transitory" to the language “computer-readable storage media” in claims 17-20.
Allowable Subject Matter
Claims 3-5, 7, and 12-13 are objected 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.
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
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).
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.
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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.”
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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.
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/Nader Bolourchi/
Primary Examiner, Art Unit 2631
Prosecution Insights