47DETAILED ACTION
Notice of Pre-AIA or AIA Status
[1] The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Notice to Applicant
[2] This communication is in response to the patent application filed 12 June 2025 and to the Preliminary Amendment filed 12 June 2025. It is noted that this application is a National Stage Entry of PCT/TR2023/051526, having an International Filing Date of 12 December 2023, which claims priority to Foreign Application Serial No. 2022/019009, (Turkey), filed 12 December 2022. The Information Disclosure Statement12 June 2025 has been entered and considered. Claims 1-20 are pending.
Claim Rejections - 35 USC § 112
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.
[3] Claims 1-10 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.
Claim 1 is directed to a system having stated functions including:
“…calculating the frequency of device change and the time of device change of corporate customers…” and “…to process the data included in the database (2); to calculate how often the corporate customers who are registered in the database (2) change their device…”
Claim 1 further provides a listing of data elements that are identified as accessible by the recited server to perform the claimed “processing” to calculate the frequency of device change and the time of device change. However, with respect to the acts of calculating and processing, the written description is limited to the recitation in the claims. No further explanation or description of any “calculations” or “processing” which utilizes the listed data elements to calculate a frequency or timing of device change. While the claims and supportive disclosure provide examples of data which could be useful in calculating a device change frequency, the calculations and processing functions are not described in the specification in a way as to reasonably convey that the inventor, at the time the application was filed, had possession of a system which calculates a device change frequency and/or timing given the listed data elements.
For purposes of further examination, Examiner assumes the inventive system aggregates phone plan, customer, and device data and determines or estimates in a general manner a frequency and timing of device changes associated with wireless plan customer.
Claims 2-10 inherit and fail to remedy the deficiencies of claim 1 through dependency and are also 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.
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.
[4] Claims 1-10 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter, specifically an abstract idea without significantly more.
The following analysis is based on the framework for determining patent subject matter eligibility under 35 U.S.C. 101 established in the decisions of the Supreme Court in Mayo Collaborative Services v. Prometheus Labs., Incorporated and Alice Corporation Pty. Ltd. v. CLS Bank International, et al. (See MPEP 2106 subsection III and 2106.03-2106.05). Claim(s) 1-10 as a whole is/are determined to be directed to an abstract idea. The rationale for this determination is explained below:
Abstract ideas are excluded from patent eligibility based on a concern that monopolization of the basic tools of scientific and technological work might serve to impede, rather than promote, innovation. Still, inventions that integrate the building blocks of human ingenuity into something more by applying the abstract idea in a meaningful way are patent eligible (See MPEP 2106.04).
Consistent with the findings of the Supreme Court in Mayo Collaborative Services v. Prometheus Labs., Incorporated and Alice Corporation Pty. Ltd. v. CLS Bank International, et al. ineligible abstract ideas are defined in groups, namely: (1) Mathematical Concepts (e.g., mathematical relationships, mathematical formulas or equations, and mathematical calculations; (2) Mental Processes (e.g., concepts performed or performable in the human mind including observations, evaluations, judgements, or opinions); and (3) Certain Methods of Organizing Human Activity. Groupings of Certain Methods of Organizing Human Activity include three sub-categories within the group, namely: (1) fundamental economic principles or practices; (2) commercial or legal interactions (e.g., agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations); (3) managing personal behavior or relationships or interactions between people (e.g., social activities, teaching, and following rules or instructions) (See MPEP 2106.04(a).
Eligibility Step 1: Four Categories of Statutory Subject Matter (See MPEP 2106.03): Independent claim 1 is directed to a system and is reasonably understood to be properly directed to one of the four recognized statutory classes of invention designated by 35 U.S.C. 101; namely, a process or method, a machine or apparatus, an article of manufacture, or a composition of matter. While the claims, generally, are directed to recognized statutory classes of invention, each of method/process, system/apparatus claims, and computer-readable media/articles of manufacture are subject to additional analysis as defined by the courts to determine whether the particularly claimed subject matter is patent-eligible with respect to these further requirements. In the case of the instant application, claim 1 is determined to be directed to ineligible subject matter based on the following analysis/guidance:
Eligibility Step 2A prong 1: (See MPEP 2106.04): In reference to claim 1, the claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do/does not amount to significantly more than an abstract idea. The claim(s) is/are directed to the abstract idea of calculating or determining a frequency of device change of corporate mobile device customers by analyzing device attributes and usage information, which is reasonably considered to be an inventive concept directed to
ineligible processes/functions which are performable by Human Mental Processing
With respect to functions/steps limited to ineligible processes/functions which are performable by Human Mental Processing and/or or by a human using pen and paper (See CyberSource Corp v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011). The courts have previously identified subject matter limited to steps/processes performable by Human Mental Processing and/or by a human using pen and paper to be ineligible abstract ideas (See CyberSource Corp v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011). Further, if a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for a recitation of generic computer components, then the claim is still to be grouped as a mental process unless the limitation cannot practically be performed in the human mind (See MPEP 2106.04(a)(2)).
With respect to functions/steps limited to processes performable by Human Mental Processing and/or by a human using pen and paper, representative claim 10 recites:
“…calculating the frequency of device change and the time of device change of corporate customers -who get service from a telecom operator and have contracted devices- characterized by…GSM numbers of corporate customers, customer/company names, customer number, campaign information, device IMEI information, device information of corporate customers, launch date and network signal date, segment information of customers, customer authorized information; and…process the data…to calculate how often the corporate customers…change their device; then to classify corporate customers according to the contract expiration period in accordance with their contract information; then to ensure that the time of device change is calculated considering the depreciation period of the smartphone by using signal date of device, launch date of phone, commencement date of contract; and to calculate at least information of how many contracted devices the customer has, how many of them are due for change, the brand tendency of customer, the frequency of phone change, and the total number of devices used on the lines, on customer basis in quantity; and to share it with the customer…”
Respectfully, absent further clarification of the processing steps executed by the recited database and/or server, one of ordinary skill in the art would readily be relied upon to analyze customer device information and customer attributes and/or preferences to predict or estimate a timeline or likelihood of when, or how often, a customer would upgrade or exchange a mobile device or smartphone for a new device employing by the human mental processing (See CyberSource Corp v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“a method that can be performed by human thought alone is merely an abstract idea and is not patent eligible under 35 U.S.C 101).
Claim 1 recites technical elements which have been considered at each step of Examiner’s analysis but are determined to constitute generic computing structures executing generic computing functions previously identified by the courts, as further analyzed under Step 2A prong 2 and Step 2B below.
Eligibility Step 2A prong 2: (See MPEP 2106.04(d)): Under step 2A prong two, Examiners are to consider additional elements recited in the claim beyond the judicial exception and evaluate whether those additional elements integrate the exception into a practical application. Further, to be considered a recitation of an element which integrates the judicial exception into a practical application, the additional elements must apply, rely on, or use the judicial exception in a manner that imposes meaningful limits on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception.
Additional technical elements of claim 1 that potentially integrate the claimed ineligible subject matter into a practical application of the claimed subject are limited to: “database” and “server”. With respect to these potential additional elements:
(1) The “server” is identified as being able to realize data exchange with the database and process data in the database.
(2) The “database” is identified as storing customer and device information useful to calculating a device change timeline or frequency.
With respect to the above noted functions attributable to the identified additional elements, MPEP 2106.05 stipulates that: Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea – see MPEP 2106.05(f); Adding insignificant extra-solution activity to the judicial exception – see MPEP 2106.05(g); and/or Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h) serve as indications that the use of the technology recited does not indicate integration into a practical application of the judicial exception.
Each of the above noted limitations states a result (e.g., data is stored, accessed, and processed to calculate or estimate device change frequency etc.) as associated with a respective “server” or “database”. Beyond the general statement that the server exchanges and processes data and database stores data accessed by the server, the limitations provide no further clarification with respect to the functions performed by the “server” and “database” in producing the claimed result. A recitation of “by a server”, absent clarification of particular processing steps executed by the underlying technology to produce the result are reasonably understood to be an equivalent of “apply it”. The identified functions performed by the recited technology are limited to: (1) receiving and sending data via a computer network (e.g., data exchange); (2) storing and retrieving information and data from a generic computer memory (e.g., phone and customer data); and (3) performing repetitive calculations and/or mental observations using the obtaining information/data (e.g., calculating a frequency of device change for a customer) (See MPEP 2106.05(f)).
Accordingly, claim 1 is reasonably understood to be conducting standard, and formally manually performed process of calculating or determining a frequency of device change of corporate mobile device customers by analyzing device attributes and usage information using the generic devices as tools to perform the abstract idea. The identified functions of the recited additional elements reasonably constitute a general linking of the abstract idea to a generic technological environment. The claimed calculating or determining a frequency of device change of corporate mobile device customers by analyzing device attributes and usage information benefits from the inherent efficiencies gained by data transmission, data storage, and information display capacities of generic computing devices, but fails to present an additional element(s) which practical integrates the judicial exception into a practical application of the judicial exception.
Eligibility Step 2B: (See MPEP 2106.05): Analysis under step 2B is further subject to the Revised Examination Procedure responsive to the Subject Matter Eligibility Decision in Berkheimer v. HP, Inc. issued by the United States Patent and Trademark Office (19 April 2018). Examiner respectfully submits that the recited uses of the underlying computer technology constitute well-known, routine, and conventional uses of generic computers operating in a network environment. In support of Examiner’s conclusion that the recited functions/role of the computer as presented in the present form of the claims constitutes known and conventional uses of generic computing technology, Examiner provides the following:
The Specification provides listings of generic computing systems, e.g., a general computing platform including exemplary servers, network configurations and various processor configuration which are identified as capable and interchangeable for performing the disclosed processes. The disclosure does not identify any particular modifications to the underlying hardware elements required to perform the inventive methods and functions. Accordingly, it is reasonably understood that this disclosure indicates that the hardware elements and network configurations suitable for performing the inventive methods are limited to commercially available systems at the time of the invention. Absent further clarification, it is reasonably understood that any modifications/improvements to the underlying technology attributable to the inventive method/system are limited to improvements realized by the disclosed computer-executable routines and the associated processes performed.
While the above noted disclosure serves to provide sufficient explanation of technical elements required to perform the inventive method using available computing technology, the disclosure does not appear to identify any particular modifications or inventive configurations of the underlying hardware elements required to perform the inventive methods and functions. Accordingly, it is reasonably understood that the disclosure indicates that the hardware elements and network configurations suitable for performing the inventive methods are limited to commercially available systems at the time of the invention. Further, absent further clarification, it is reasonably understood that any modifications/improvements to the underlying technology attributable to the inventive method/system are limited to improvements realized by the disclosed computer-executable routines and the associated processes performed.
The claims specify that the above identified generic computing structures and associated functions/routines include:
(1) The “server” is identified as being able to realize data exchange with the database and process data in the database.
(2) The “database” is identified as storing customer and device information useful to calculating a device change timeline or frequency.
While Examiner acknowledges that the noted limitations are computer-implemented, Examiner respectfully submits that, in aggregate (e.g., “as a whole”) they do not amount to significantly more than the abstract idea/ineligible subject matter to which the claimed invention is primarily directed.
While utilizing a computer, the claimed invention is not rooted in computer technology nor does it improve the performance of the underlying computer technology. The computer-implemented features of the claimed invention noted above are reasonably limited to: (1) receiving and sending data via a computer network (e.g., data exchange); (2) storing and retrieving information and data from a generic computer memory (e.g., phone and customer data); and (3) performing repetitive calculations and/or mental observations using the obtaining information/data (e.g., calculating a frequency of device change for a customer).
The above listed computer-implemented functions are distinguished from the generic data storage, retrieval, transmission, and data manipulation/processing capacities of the generic systems identified in the Specification solely by the recited identification of particular data elements that are of utility to a user performing the specific method of calculating or determining a frequency of device change of corporate mobile device customers by analyzing device attributes and usage information. In summary, the computer of the instant invention is facilitating non-technical aims, i.e., calculating or determining a frequency of device change of corporate mobile device customers by analyzing device attributes and usage information, because it has been programmed to store, retrieve, and transmit specific data elements and/or instructions that is/are of utility to the user. The non-technical functions of calculating or determining a frequency of device change of corporate mobile device customers by analyzing device attributes and usage information benefit from the use of computer technology, but fail to improve the underlying technology.
In support, the courts have previously found that utilization of a computer to receive or transmit data and communications over a network and/or employing generic computer memory and processor capacities store and retrieve information from a computer memory are insufficient computer-implemented functions to establish that an otherwise unpatentable judicial exception (e.g. abstract idea) is patent eligible. With respect to the determinations of the Courts regarding using a computer for sending and receiving data or information over a computer network and storing and retrieving information from computer memory, see at least: 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; sending messages over a network OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); receiving and sending information 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); 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 and see performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199; and Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) with respect to the performance of repetitive calculations does not impose meaningful limits on the scope of the claims.
Dependent claims 2-10, when analyzed as a whole are held to be ineligible subject matter and are rejected under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claimed invention is not directed to an abstract idea.
Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
For further guidance and authority, see Alice Corporation Pty. Ltd. v. CLS Bank International, et al. 573 U.S.____ (2014)) (See MPEP 2106).
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
[5] Claim(s) 1-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stachiw (United States Patent Application Publication No. 2013/0204682 hereinafter ‘Stachiw’)
With respect to claim 1, Stachiw discloses a system characterized for calculating the frequency of device change and the time of device change of corporate customers -who get service from a telecom operator and have contracted devices (Stachiw; paragraphs [0007]-[0008] [0021] [0029] [0035] [0050]; See at least plans and calculation of points including generating frequency of device upgrades) characterized by - at least one database (2) which is configured to store GSM numbers of corporate customers, customer/company names, customer number, campaign information, device IMEI information, device information of corporate customers, launch date and network signal date, segment information of customers, customer authorized information (Stachiw; paragraphs [0024] [0028] [0035] [0040]; See at least customer account information stored in data repositories. See further data including at least customer identification, contract/plan status and provisions, plan and device activation time/date etc.); and - at least one server (3) which is configured to be in communication with the database (2) and to realize data exchange with the database (2); to process the data included in the database (2) (Stachiw; paragraphs [0024] [0028] [0035] [0050]; See at least server in communications with data repositories/database); to calculate how often the corporate customers who are registered in the database (2) change their device (Stachiw; paragraphs [0028] [0035] [0050] [0061]; See at least phone change analysis including frequency and phone upgrade calculations); then to classify corporate customers according to the contract expiration period in accordance with their contract information (Stachiw; paragraphs [0024] [0028] [0035] [0040]; See at least customer account information stored in data repositories. See further data including at least customer identification, contract/plan status and provisions, plan and device activation time/date etc.); then to ensure that the time of device change is calculated considering the depreciation period of the smartphone by using signal date of device, launch date of phone, commencement date of contract; and to calculate at least information of how many contracted devices the customer has, how many of them are due for change, the brand tendency of customer, the frequency of phone change, and the total number of devices used on the lines, on customer basis in quantity; and to share it with the customer (Stachiw; paragraphs [0028] [0035] [0050] [0061]; See at least phone change analysis including frequency and phone upgrade calculations).
With respect to claim 2, Stachiw discloses a system characterized by the database (2) which is in communication with the server (3) and configured to realize data exchange with the server (3) (Stachiw; paragraphs [0024] [0028] [0035] [0050]; See at least server in communications with data repositories/database).
With respect to claim 3, Stachiw discloses a system characterized by the database (2) which is configured to store company name, GSM numbers, customer number information of active lines of corporate customers (Stachiw; paragraphs [0028] [0035] [0050] [0061]; See at least phone change analysis including frequency and phone upgrade calculations. See analysis by lines and devices).
With respect to claim 4, Stachiw discloses a system characterized by the database (2) which is configured to store information campaign details comprising contract status and contract date of corporate customers (Stachiw; paragraphs [0024] [0028 [0029] [0038] [0050]; See at least customer account and plan information used to calculate sweepstakes points. The sweepstakes are reasonably a form of campaign directed to phone upgrade incentivization and customer retention).
With respect to claim 5, Stachiw discloses a system characterized by the database (2) which is configured to store brand, model, type, launch date information of devices included on the corporate line and information on the date when they first gave signal to the network (Stachiw; paragraphs [0028] [0035] [0050]; See at least deice plan activation date. See further frequency of upgrade and upgrade analysis).
With respect to claim 6, Stachiw discloses a system characterized by the database (2) which is configured to store information of segment and sales managers of customers in order to inform customer representatives that it is time to change the device (Stachiw; paragraphs [0035] [0050]; See at least device upgrade analysis for customer).
With respect to claim 7, Stachiw discloses a system characterized by the server (3) which is configured to calculate how often the customers included in the database (2) change their device on the basis of line, by using the company details wherein contract status and contract date information of customers are included (Stachiw; paragraphs [0028] [0035] [0050] [0061]; See at least phone change analysis including frequency and phone upgrade calculations. See further analysis by lines).
With respect to claim 8, Stachiw discloses a system characterized by the server (3) which is configured to analyze campaign detail data, wherein contract status and contract date information are included, from the data in the database (2) and to classify the customers according to the contract expiration period (Stachiw; paragraphs [0024] [0028 [0029] [0038] [0050]; See at least customer account and plan information used to calculate sweepstakes points. The sweepstakes are reasonably a form of campaign directed to phone upgrade incentivization and customer retention).
With respect to claim 9, Stachiw discloses a system characterized by the server (3) which is configured to calculate the depreciation period of devices by analyzing brand, model, type, launch date information of the devices and the information of date they first signaled to the network and to calculate the time of device change by using the depreciation information (Stachiw; paragraphs [0028] [0035] [0050] [0061]; See at least phone change analysis including frequency and phone upgrade calculations. The upgrade and time since last upgrade re reasonably a form of depreciation analysis absent further clarification).
With respect to claim 10, Stachiw discloses a system characterized by the server (3) which is configured to calculate how many contracted devices the corporate customers have, how many of them are due for change, the brand tendency of customer, the frequency of phone change, and the total number of devices used on the lines, on customer basis in quantity and to share it with the customer via a table, by using the campaign and device information analyzed (Stachiw; paragraphs [0028] [0035] [0050] [0061]; See at least phone change analysis including frequency and phone upgrade calculations. See further analysis by lines and devices).
Conclusion
[6] The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Cited PATENT Literature:
Jahr, DEVICE AND METHOD FOR PROVISIONING SERVICES TO MOBILE COMMUNICATION DEVICE, United States Patent Application Publication No. 2019/0239042, paragraphs [0016]-[0022]: Relevant Teachings: Jahr discloses a system/method that provides an analysis method to calculate the useful life and functional depreciation of mobile devices with respect to upgrade/replacement timing.
Poynter et al., APPLICATION PROGRAM INTERFACES, PORTALS, AND USER INTERFACES FOR MOBILE DEVICE MANAGEMENT, United States Patent Application Publication No. 2018/0276601, paragraphs [0044]-[0046]: Relevant Teachings: Poynter discloses a system/method that provides depreciation analysis of an organization’s mobile devices for the purposes of scheduling upgrades and replacement of devices.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT D RINES whose telephone number is (571)272-5585. The examiner can normally be reached M-F 9am - 5pm.
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, Beth V Boswell can be reached at 571-272-6737. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT D RINES/Primary Examiner, Art Unit 3625
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