DETAILED ACTION
Status of Claims
The present application is being examined under the pre-AIA first to invent provisions.
This action is in reply to a request for continued examination (“RCE”) field 3 November 2025, on an application filed 4 December 2020, which is a continuation of application 14/257855 (issued as U.S. Patent 10,886,016), which is a continuation of application 13/877059 (issued as U.S. Patent 8,706,530), which is a national stage filing of PCT/US2011/053971 filed 29 September 2011, and claims domestic priority to a provisional applications filed 29 September 2010 and 9 June 2011.
Claims 1, 25 and 27 have been amended.
Claims 1-11, 13, 18-20 and 25-28 are currently pending and have been examined.
The Office has determined that independent claims 1, 25 and 27 comprise novel material. Accordingly, the prior art rejection of claims 1-11, 13, 18-20 and 25-28 have been removed.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3 November 2025 has been entered.
Claim Rejections - 35 USC § 112
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.
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.
Claims 1-11, 13, 18-20 and 25-28 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claims 1, 25 and 27 recite the limitation substantially in real-time in the providing limitation. The term substantially is a relative term which renders the claim indefinite. The term substantially is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Accordingly, the metes and bounds of the claims are unclear.
To the extent that other claims rely on claims that are rejected under 35 USC 112 and fail to correct the deficiencies of the claims they rely on, those other claims are rejected for the same reasons as the claims they rely on. Appropriate correction is required.
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 1-11, 13, 18-20 and 25-28 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.
Step 1
Claims 1-3, 5-10, 12-22 are within the four statutory categories. Claims 1-11, 13, 27 and 28 are drawn to a method for publishing a masked composite numerical score reflecting the health of the patient, which is within the four statutory categories (i.e. process). Claims 18-20, 25 and 26 are drawn to a system for publishing a masked composite numerical score reflecting the health of the patient, which is within the four statutory categories (i.e. machine).
Prong 1 of Step 2A
Claim 25 recites: A health monitoring system comprising:
a communication unit operable to receive data on at least one intrinsic medical parameter and at least one extrinsic physical activity parameter of a user;
a memory arranged to store the received data and to store weighting factors;
at least one processor arranged to process the received data by executing code that configures the at least one processor to:
receive data associated with a respective health-related event, wherein the data represent at least an intrinsic medical parameter and an extrinsic physical activity parameter associated with an individual;
store the received data in a memory;
assign a respective value for the intrinsic medical parameter;
assign a respective value for the extrinsic physical activity parameter of the individual;
identify respective weighting factors stored in a memory respectively associated with the intrinsic medical parameter and the extrinsic physical activity parameter;
transform the received data into a masked composite numerical value by:
modifying, by applying at least one of the respective weighting factors, the value assigned for the intrinsic medical parameter;
modifying, by applying the modified weighting factor, the value assigned for the extrinsic physical activity parameter; and
combining the modified value assigned for the intrinsic medical parameter and the at least one value assigned for the extrinsic physical activity parameter in accordance with an algorithm;
automatically publish the masked composite numerical value to a computing device, free of human intervention, while maintaining the received data representing the at least one intrinsic medical parameter and the at least one extrinsic physical activity parameter private;
generate, by applying a predictive algorithm using at least some of the received data, a predictive masked composite numerical value, which is indicative of a predicted future state, wherein the at least one processor is further configured to generate the predictive masked composite numerical value by:
modifying the extrinsic physical activity parameter;
assigning a respective value for the modified extrinsic physical activity parameter;
modifying, by applying a respective weighting factor, the value assigned for the modified extrinsic physical activity parameter;
combining the modified value assigned for the intrinsic medical parameter and the modified value assigned for the modified extrinsic physical activity parameter in accordance with an algorithm; and
automatically provide, a predictive feedback communication that includes the predictive masked composite numerical value;
provide, substantially in real-time via the portal in response to receiving the health-related data, the masked composite numerical value, the predictive masked composite numerical value of the user, a plurality of other masked composite numerical values, and a plurality of other predictive masked composite numerical values, wherein each of the other masked composite numerical values and each of the other predictive masked composite numerical values is respectively associated with individuals of the designated group; and
display to the user, via the portal, the masked composite numerical value of the user, the plurality of other masked composite numerical values, a predicted change in the masked composite numerical value of the user, and a predicted change in each of the plurality of other masked composite numerical values.
Claim 1 recites all the limitations recited in claim 25 and also:
determining, by the at least one processor, a respective decay component to reduce a relative weight of the at least one extrinsic physical activity parameter based on at least one factor associated specifically with the user;
modifying, by applying a respective decay component, a respective weighting factor for the at least one extrinsic physical activity parameter;
modifying at least one intrinsic medical parameter and/or at least one extrinsic physical activity parameter in the received data;
assigning a respective value for each of the modified at least one intrinsic medical parameter and/or the modified at least one extrinsic physical activity parameter of the user;
modifying, by applying at least one of the respective weighting factors, at least one value assigned for the modified at least one intrinsic medical parameter;
modifying, by applying the respective decay component, a respective weighting factor for the modified at least one extrinsic physical activity parameter;
modifying, by applying the modified respective weighting factor, at least one value assigned for the modified at least one extrinsic physical parameter.
The underlined limitations as shown above, given the broadest reasonable interpretation, cover the abstract ideas of “mathematical concepts” and/or the abstract idea of a mental process and/or a certain method of organizing human activity because they recite
a mathematical concept (in this case, the identification and application of weighting factors and/or decay component to determine a masked composite numerical value and a predictive masked composite numerical value), and/or a process managing personal behavior or relationships or interactions between people (i.e. social activities, teaching, and following rules or instructions – in this case the assigning of values to a user’s intrinsic medical parameter and extrinsic physical activity parameter in order to determine a masked composite numerical value and a predictive masked composite numerical value that can be published while maintaining the user’s intrinsic medical parameter and extrinsic physical activity parameter as private, which would comprise following rules or instructions), e.g. see MPEP 2106.04(a)(2). Any limitations not identified above as part of the abstract idea(s) are deemed “additional elements,” and will be discussed in further detail below.
Furthermore, the abstract idea for claim 27 is identical as the abstract idea for claim 25, because the only difference between claims 25 and 27 is that claim 27 recites a method, whereas claim 25 recites a system.
Dependent claims 2-11, 13, 18-20, 26 and 28 include other limitations, for example claims
2, 26, 28 applies the decay component, claim 3 processes the masked composite numerical value, claim 4 provides and processes an extrinsic modified lifestyle parameter, claims 5-11 and 20 processes and communicates data, and claim 13 provides processing of a metabolic equivalent, but these only serve to further narrow the abstract idea, and a claim may not preempt abstract ideas, even if the judicial exception is narrow, e.g. see MPEP 2106.04. Additionally, any limitations in dependent claims 2-11, 13, 18-20, 26 and 28 not addressed above are deemed additional elements to the abstract idea, and will be further addressed below. Hence dependent claims 2-11, 13, 18-20, 26 and 28 are nonetheless directed towards fundamentally the same abstract idea as independent claims 1, 25, and 27.
Prong 2 of Step 2A
Claims 1, 25 and 27 are not integrated into a practical application because the additional elements (i.e. any limitations that are not identified as part of the abstract idea) amount to no more than limitations which:
amount to mere instructions to apply an exception – for example, the recitation of the structural components of the computer, which amounts to merely invoking a computer as a tool to perform the abstract idea, e.g. see pgs. 6-7 of the present Specification, see MPEP 2106.05(f); and/or
adding insignificant extrasolution activity to the abstract idea, for example mere data gathering, data publishing, data storage, selecting a particular data source or type of data to be manipulated, and/or insignificant application (e.g. see MPEP 2106.05(g)).
Additionally, dependent claims 2-11, 13, 18-20, 26 and 28 include other limitations, but these limitations also amount to no more than amount to mere instructions to apply the exception (e.g. the recitation of the remote user device and monitoring unit of claims 18 and 19), and/or do not include any additional elements beyond those already recited in independent claims 1, 25 and 27, and hence also do not integrate the aforementioned abstract idea into a practical application.
Step 2B
Claims 1, 25 and 27 do not include additional elements that are sufficient to amount to “significantly more” than the judicial exception because the additional elements (i.e. the non-underlined limitations above – in this case, the structural components of the computer), as stated above, are directed towards no more than limitations that amount to mere instructions to apply the exception, generally link the abstract idea to a particular technological environment or field of use, and/or add insignificant extra-solution activity to the abstract idea, wherein the insignificant extra-solution activity comprises limitations which:
amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields, as demonstrated by:
The Specification expressly disclosing that the additional elements are well-understood, routine, and conventional in nature:
Pages 6-7 of the Specification discloses that the additional elements (i.e. the structural components of the computer) comprise a plurality of different types of generic computing systems that are configured to perform generic computer functions (i.e. receive and process data) that are well-understood, routine, and conventional activities previously known to the pertinent industry (i.e. healthcare);
Relevant court decisions: The following are examples of court decisions demonstrating well-understood, routine and conventional activities, e.g. see MPEP 2106.05(d)(II):
Receiving or transmitting data over a network, e.g. see Intellectual Ventures v. Symantec – similarly, the current invention receives data, processes the data, and publishes data; and
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.
Dependent claims 2-11, 13, 18-20, 26 and 28 include other limitations, but none of these limitations are deemed significantly more than the abstract idea because, as stated above, the aforementioned dependent claims do not recite any additional elements not already recited in independent claims 1, 25 and 27, and/or the additional elements recited in the aforementioned dependent claims similarly amount to mere instructions to apply the exception (e.g. the recitation of the remote user device and monitoring unit of claims 18 and 19), and hence do not amount to “significantly more” than the abstract idea.
Thus, taken alone, the additional elements do not amount to significantly more than the abstract idea identified above. Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually, and there is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and their collective functions merely provide conventional computer implementation.
Therefore, whether taken individually or as an ordered combination, claims 1-11, 13, 18-20 and 25-28 are nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Appropriate correction is required.
Response to Arguments
Applicant’s arguments filed 3 November 2025 concerning the statutory rejection of all claims 14-20 under 35 U.S.C. 101 have been fully considered but they are not persuasive.
With regard to the rejection of the claims under 35 USC 101, Applicant argues on pages 11-13 that the claims are improperly rejected under 101 because the recite limitations that goes beyond a judicial exception. The Applicant cites various limitations from the claims and “asserts that the claimed subject matter provides technical improvements over conventional systems by processing, generating, and providing the above-identified information for across a plurality of users and substantially in real-time as updated health-related data are received.”
The Office respectfully disagrees. Please see the statutory rejection of the claims, issued above, that indicate that the claims are directed to a judicial exception, without significantly more. The cited elements are indicated as being either part of the judicial exception or are directed to additional material that do not amount to significantly more, either alone or in combination with the other elements.
MPEP 2106.04(d)(1) and MPEP 2106.05(a) indicates that a practical application may be present where the claimed invention provides a technical solution to a technical problem. See, e.g., DDR Holdings, LLC. v. Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014) (finding that claiming a website that retained the “look and feel” of a host webpage provided a technological solution to the problem of retention of website visitors by utilizing a website descriptor that emulated the “look and feel” of the host webpage, where the problem arose out of the internet and was thus a technical problem). Here, the Examiner cannot find, nor has the Applicant identified, any technological problem that was caused by the technological environment to which the claims are confined.
Accordingly, the statutory rejection is upheld.
Conclusion
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to Mark Holcomb, whose telephone number is 571.270.1382. The Examiner can normally be reached on Monday-Friday (8-5). If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Kambiz Abdi, can be reached at 571.272.6702.
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/MARK HOLCOMB/
Primary Examiner, Art Unit 3685
20 February 2025