REISSUE NON-FINAL OFFICE ACTION
This is a second Non-Final Office Action in Reissue Application 19/080,621 (“the ‘621 application”) for U.S. Patent No. 8,965,408 (“the ‘408 Patent”).
This second Non-Final Office Action is in response to the amendments and Remarks filed June 9, 2026. This is a second Non-Final Office Action because claims 21 and 35 are rejected under 35 USC 112, first paragraph.
Claims 1-17 have been cancelled. Claims 18-37 have been added. Claims 18, 20, and 21 have been amended. Claims 18-37 are currently pending.
Related Reissue Applications
The ‘621 application is a continuation reissue of 17/693,102 (now RE50345), which was a continuation reissue of 16/551,544 (now RE49003), which was a continuation reissue application of 15/441,140 (now RE47585), which was a reissue of the ‘408 Patent.
Reason for Reissue
This is a broadening reissue based on the Reissue Declaration by Inventor (“Reissue Dec by Inventor”) and the Substitute Statement in Lieu of an Oath or Declaration for Reissue Patent Application (“Substitute Statement”) both filed March 14 2025, and both filed as copies from parent reissue application 15/441,140. Their error statements say,
“Original patent 8,965,408 does not include a full range or scope of claims to which the patentee is entitled. Original independent claims 1, 3, 6, and 12, for example, recites ‘'receive, from the second device, a second agent activation response based at least in part on the second copy of the agent application executing on the second device" and “record that the second copy of the agent application is executing successfully on the second device based at least in part on receiving the second agent activation response from the second device within a predetermined amount of time." These features are unnecessary for the patentability of the invention, but nonetheless limit the claimed invention to a scope that is less than that to which the applicant is entitled.”
Terminal Disclaimer
The terminal disclaimer filed on June 9, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of RE49003 and RE50345 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Objections
Claim 18 is objected to because of the following informalities:
Claim 18 recites “perform operations comprising: transmitting… receive…; and in response to the signal, execute.” It appears “receive” should be “receiving” and “execute” should be “executing.”
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Functional Phrase # (“FP#”)
Claim
No.
Functional Phrases that Invoke
§ 112 ¶ 6
Corresponding Structure in the ‘408 Patent
1
18
instructions executable by one or more physical processors to perform operations comprising transmitting
a signal, associated with a first mobile device, to a second remote mobile device, wherein the signal: 1) is configured to trigger the second remote mobile device to determine whether to execute an agent on the first mobile device, based at least in part on whether a location of the first mobile device coincides with a region of interest, or 2) includes data associated with the region of interest, and indicates a location of the first mobile device
See at least 3:40-4:11; Figs. 3 and 5
2
20
wherein the operations further comprise determining
whether to place the agent on the first mobile device into a stand-by mode based on a remotely generated communication
See at least 5:56-6:4; Fig. 6
3
21
wherein the operations further comprise terminating
execution of the agent based on a remotely generated communication control signal
Unable to find corresponding structure in the specification.
Table 1: Identification of Corresponding Structure
Because these claim limitations are interpreted under § 112 ¶ 6, they are “construed to cover the corresponding structure … described in the specification and equivalents thereof.” § 112 ¶ 6.
A review of the ‘408 specification shows that the claims are computer-implemented limitations requiring programming/software. For example, the ‘408 Patent at 6:21-7:6.
“The components of the system 10 may be embodied in hardware, software, firmware or a combination of hardware, software and/or firmware. In a hardware embodiment, a mobile device such as Device_1 31 may include a processor 61 operatively associated with a memory 62 as shown in FIG. 7. The memory 62 may store an instruction set 400 executable by the processor 61 which may include the bootstrap code described above. The bootstrap code allows the processor 61 to receive an agent application, either from the server 20 or from another mobile device. The instruction set 400, shown in FIG. 8, may include instructions that, when executed, causes the processor 61 to execute the agent application (step 401) which may include storing a definition of the region of interest in the memory 62. When executing, the agent application can receive an agent participation request from a second processor 71 of a second device (step 402), e.g. Device_2 32 (FIG. 3). The agent participation request may be received through a suitable communications link 65, such as a peer-to-peer link or via one or more base stations and/or a server. From the agent participation request, the processor 61 can determine the location of the second device and compare the second device's location with a definition of the region of interest (step 403). If the second device is shown to be within the region of interest, the processor 61 can provide a serialized version of the agent application to the second processor 71 (step 404). The second processor 71, upon receiving the serialized agent application, may deserialize the agent application, store the ROI definition in its respective memory 72 and activate the agent application.
Although embodiments of the present invention have been illustrated in the accompanied drawings and described in the foregoing description, it will be understood that the invention is not limited to the embodiments disclosed, but is capable of numerous rearrangements, modifications, and substitutions without departing from the spirit of the invention as set forth and defined by the following claims. For example, the capabilities of the invention can be performed fully and/or partially by one or more of the blocks, modules, processors or memories. Also, these capabilities may be performed in the current manner or in a distributed manner and on, or via, any device able to provide and/or receive information. Further, although depicted in a particular manner, various modules or blocks may be repositioned without departing from the scope of the current invention. Still further, although depicted in a particular manner, a greater or lesser number of modules and connections can be utilized with the present invention in order to accomplish the present invention, to provide additional known features to the present invention, and/or to make the present invention more efficient. Also, the information sent between various modules can be sent between the modules via at least one of a data network, the Internet, an Internet Protocol network, a wireless source, and a wired source and via plurality of protocols.”
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 21’s limitation, “wherein the operations further comprise terminating execution of the agent based on a remotely generated communication control signal” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
The ‘408 Patent at 5:56-6:14 discusses a process for terminating an agent on a device. However, the process does not discuss terminating the execution of the agent based on a remotely generated communication control signal. Further, Fig. 6, which illustrates the process for termination, does not show any steps where the execution of the agent is terminated based on a remotely generated communication control signal.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21 and 35 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 21 and 35 – 35 USC 112, 1st based on new matter1
Claims 21 and 35 recite, “terminating execution of the agent based on a remotely generated communication control signal.”
The ‘408 Patent at 5:56-6:14 discusses a process for terminating the execution of an agent on a device that includes the agent “enter[ing] a termination mode.” However, the process does not discuss terminating the execution of the agent based on a remotely generated communication control signal. Further, Fig. 6, which illustrates the process for termination, does not show any steps where the execution of the agent is terminated based on a remotely generated communication control signal. The ‘408 Patent only discusses the agent terminating itself. (3:10-13, 5:27-29) As such, the specification does not describe terminating execution of the agent based on a remotely generated communication control signal.
Claim 21 – 35 USC 112, 1st based on 35 USC 112, 6th
Claim 21 recites, “wherein the operations further comprise terminating execution of the agent based on a remotely generated communication control signal.”
The ‘408 Patent at 5:56-6:14 discusses a process for terminating the execution of an agent on a device. However, the process does not discuss terminating the execution of the agent based on a remotely generated communication control signal. Further, Fig. 6, which illustrates the process for termination, does not show any steps where the execution of the agent is terminated based on a remotely generated communication control signal. As such, the specification does not appear to describe any algorithm for the claimed function of terminating execution of the agent based on a remotely generated communication control signal. See MPEP 2161.01.2
Response to Arguments/Amendments
Applicant’s amendments to the claims are not sufficient to overcome the 35 USC 112, sixth paragraph claim interpretation. As evidenced by the citations to the specification of the ‘408 Patent above, Examiner finds the claimed functionalities of claims 18-21 to be computer-implemented, requiring a combination of hardware and software. See MPEP 2161.01.
Furthermore, based upon the express wording within the phrases identified in Table 1 above, the Original Disclosure, and the prosecution history, the Examiner finds that special programming (i.e., algorithms) are required to perform the claimed functions identified in Table 1. In other words, the Examiner finds that the claimed functionalities are not coextensive with a microprocessor or general purpose computer.
Because special programming (or algorithms) are required to perform the claimed functions identified in Table 1, the Examiner finds that one or more processors are not general purpose computers but special purpose computers which require special programming (i.e., algorithms) to perform the claimed functions. See e.g., EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 622 (Fed. Cir. 2015)(quoting In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (en banc)) (“Specifically, Alappat reasoned that ‘a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.’”).
Based upon the express wording within the phrases identified above in Table 1, the Original Disclosure, and the prosecution history, the Examiner finds that to a POSITA, the claim language itself does not expressly recite algorithm(s) for accomplishing each of the claimed functions. Because algorithm(s) to perform each phrase identified above are not expressly recited in the claims, the claim language, by definition, does not expressly recite sufficient structure (i.e., in the form of algorithms) to perform the claimed functions.
For example, the claim language itself does not provide a step-by-step procedure (i.e., an algorithm) explaining how to perform the functions identified in Table 1.
Because the algorithms needed to perform the claimed functions (for each phrase identified in Table 1 above) are not expressly recited in the claims and to avoid improperly reading the specification into the claim,3 another claim construction principle is needed to properly bring any algorithms from the specification into the claims. Thus, the claim language requires the use of § 112 ¶ 6.
Notification of Prior or Concurrent Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the ‘408 Patent is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Future Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to C. Michelle Tarae whose telephone number is (571)272-6727. The Examiner can normally be reached on M-F 8:00-4:30.
If attempts to reach the Examiner by telephone unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, can be reached on 571-272-6779.
Information regarding the status of published reissue 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.
Signed:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992
Conferees:
/JOHN M HOTALING II/Reexamination Specialist, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 “If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph - written description requirement. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).” See MPEP 2163.06.
2 “When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing.”
3 I.e., Applying the “general claim construction principle that limitations found only in the specification of a patent or patent application should not be imported or read into a claim.” In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc).
Prosecution Insights