DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/19/26 has been entered.
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.
Claims 14-15, 18-21, 23, 26-27, 29-32, 37 and 39-44 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 14 and 26 include the limitations of “wherein pre-processing the raw inertial data comprises segmenting the raw inertial data into windows corresponding to repetitions of the first activity” and said subject matter does not have written description support.
Claims 14 and 26 include the limitations of “thereafter delivering pacing haptic pulses synchronized to a target cadence derived from the selected second activity” and said subject matter does not have written description support.
Claims 14 and 26 include the limitations of “writing, in the non-volatile memory, a record including timestamps, identifiers of the first activity and the second activity, and the performance-delta value” and said subject matter does not have written description support.
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 14-15, 18-21, 23, 26-27, 29-32, 37 and 39-44 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 14-15, 18-21, 23, 26-27, 29-32, 37 and 39-44 are directed to an abstract idea without significantly more. The claims recite a mental process that can be performed by human being and/or recite a method of organizing human activity and/or mathematical concepts and/or claim the rules of a game.
In regard to Claims 14 and 26, the following limitations can be performed as a mental process by a human being in terms of claiming collecting data, analyzing that data, and providing outputs based on that analysis which has been held by the CAFC to be an abstract idea in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); and/or recite a method of organizing human activity in terms of claiming the teaching/training/evaluation of a human subject’s which has been identified by MPEP 2106.04(a)(2)(II) as being a method of organizing human activity; and/or claim mathematical concepts as outlined at MPEP 2106.04(a)(2)(I); and/or claiming the rules of a game which has been identified by the CAFC as being an abstract ides in decisions such as, e.g., Savvy Dog Systems v. Pennsylvania Coin (non-precedential; 2023-1073; 3/21/24), in terms of the Applicant claiming:
[a] method for improving athletic performance of a user, the method comprising:
collecting, during a first activity and a first time period, raw inertial data […];
pre-processing […] the raw inertial data […] to generate a first movement signature that includes a first value of at least one biomechanical parameter selected from force, power, speed, reaction time, flight time, and contact time, the first movement signature […] wherein pre-processing…activity;
collecting, during a second repetition of the first activity in a second time period subsequent to the first time period, second raw inertial data […];
applying […] the same pre-processing to the second raw inertial data to generate a second movement signature and extracting a second value of the at least one biomechanical parameter;
computing […] a performance-delta value equal to a difference between the first value and the second value;
receiving […] personal data that include at least one user objective;
delivering […] a […] prompt […] during the first activity;
receiving […] an indication of a sensation experienced by the user in response to the […] prompt as a selection among predefined options presented [to the user];
comparing […] the performance-delta value with an adaptivity threshold that is dynamically calculated […] from the at least one user objection and the indication of the sensation;
selecting, when the performance-delta value satisfies the adaptivity threshold […], a second activity […], each activity in the attribute-tagged activity database being indexed by at least one required physical attribute level and at least one contraindication;
[providing an output] indicative of the selection;
Thereafter delivering pacing [outputs] synchronized to a target cadence derived from the selected second activity;
displaying […] the second activity to the user; and
[storing] a record including timestamps…and the performance-delta value.
In regard to the dependent claims, they also claim an abstract idea to the extent that they merely claim further limitations that likewise could be performed as a mental process by a human being and/or recite a method of organizing human activity and/or claim mathematical concepts and/or the rules of a game.
Furthermore, this judicial exception is not integrated into a practical application because to the extent that additional elements are claimed either alone or in combination such as, e.g., a three-axis accelerometer of a wrist-worn watch, wherein the wrist-worn watch includes a touch screen, a haptic actuator, a non-volatile memory, and a microcontroller and a database; and/or computer code embodying Applicant’s abstract idea, these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., data gathering), to embody the abstract idea on a general purpose computer, and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use. In this regard, see MPEP 2106.04(d)(I) in regard to “courts have also identified limitations that did not integrate a judicial exception into a practical application…”
Furthermore, the claims do not include additional elements that taken individually, and also taken as an ordered combination, are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g., a three-axis accelerometer of a wrist-worn watch, wherein the wrist-worn watch includes a touch screen, a haptic actuator, a non-volatile memory, and a microcontroller and a database; and/or computer code embodying Applicant’s abstract idea, these are well-understood, routine, and conventional elements and are claimed for the well-understood, routine, and conventional functions of collecting and processing data and/or providing an analysis/outputs based on that processing. To the extent that an apparatus is claimed as an additional element said apparatus fails to qualify as a “particular machine” to the extent that it is claimed generally, merely implements the steps of Applicant’s claimed method, and is claimed merely for purposes of extra-solution activity or field of use. See MPEP 2106.05(b). As evidence that these additional elements are well-understood, routine, and conventional, Applicant’s specification discloses the support for these elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a). See, e.g., Figures 1 and 2 in Applicant’s PGPUB and text regarding same; and see, e.g., p44 in regard to employing a three-axis accelerometer, specifically.
Response to Arguments
Applicant cited the PTAB opinion in Fautz in regard to the rejections made under 35 USC 101. PTAB opinions are not binding, however, on Examiner and nor is Fautz indicated as precedential on the PTAB itself. Additionally, Applicant’s claimed invention is not analogous to that of Fautz because Applicant’s claimed invention makes no improvement to its claimed watch/sensors in terms of, e.g., resulting in them using less power, providing more precise results, and/or being able to be manufactured more cheaply. Instead, Applicant’s claimed invention may be more closely analogized as being directed to collecting data (e.g., motion data), analyzing that data (e.g., pre-processing it, computing a performance delta-value, comparing that value to a threshold, selecting a successive activity based on that comparison), and providing outputs based on that analysis (e.g., displaying the successive activity to the user). Such subject matter has been repeatedly held by the CAFC to be patent ineligible as directed to an abstract idea in the form of a mental process in decisions such as those cited in the rejection supra. Applicant’s claimed invention is particularly analogous to that of Yousician (non-precedential), in terms of both are likewise directed to gathering data regarding human performance of a task, comparing that data to a metric, and then providing a differential visual output based on that comparison.
Applicant additionally argues that its claimed invention is analogous to that of Desjardins. Applicant’s argument is not persuasive because Applicant’s invention does not concern an alleged improvement to machine learning.
Conclusion
The prior art made of record and not relied upon is listed in the attached PTO-Form 892 and is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Mike Grant whose telephone number is 571-270-1545. The Examiner can normally be reached on Monday through Friday between 8:00 a.m. and 5:00 p.m., except on the first Friday of each bi-week.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's Supervisory Primary Examiner, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C GRANT/Primary Examiner, Art Unit 3715
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