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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/18/2026 has been entered.
Response to Arguments
Applicant's arguments, see Remarks pages 8-10, filed 05/18/2026, with respect to the 35 USC 101 rejection of claims 1-2, 4-11, and 15-20 have been fully considered but they are not persuasive.
In response to the applicant's argument that the claims are not reasonably able to be considered mental processes, the examiner respectfully disagrees. To provide clarity, the examiner is interpreting the steps of "assigning" and "informing" as mental processes capable of being performed in the human mind (the examiner further notes that the step of "informing" could also be reasonably considered as insignificant extra-solution activity as a output step). The steps of generating, detecting, and receiving are considered to be insignificant extra-solution activities that amount to necessary data gathering and data outputting (see MPEP 2106.05(g)) as discussed in the previous office action on page 12 during the Step 2A Prong 2 analysis. The examiner maintains the contention that the steps of "assigning" a score and "informing" the user are both mental processes capable of being performed in the human mind when applying Step 2A Prong 1 of the Alice/Mayo test.
In response to the applicant's argument that the judicial exception is integrated into a practical application, the examiner respectfully disagrees. As mentioned above, the examiner contends that the additional elements are adding insignificant extra-solution activity to the judicial exception that amount to mere data gathering and data output and "merely reciting the words "apply it" (or an equivalent) with the judicial exception or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f)".
Thus, for the reasons provided above, the examiner maintains the assertion that the 35 USC 101 rejection of the claims is proper.
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 1-2, 4-11, and 15-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Independent Claim 1 recites:
A wearable electronic user device comprising:
a processor configured to generate a scoring scale comprising at least three distinct scores comprising a first distinct score, a second distinct score and a third distinct score, each of which concerns different disease- related states of a user;
a touch-sensitive display operably coupled to the processor and configured to display the scoring scale as generated by the processor to enable a user to input disease-related states of the user through interaction with the displayed scoring scale and detect a first detected user interaction and a second detected user action;
a timer operably coupled to the processor and configured for generating timing information for registering a first timing instance associated with the first detected user interaction and a second timing instance associated with the second detected user interaction;
wherein the processor is configured for detecting interaction of the user with the touch-sensitive display on or nearby the scoring scale to assign scoring information based on one of the at least three distinct scores;
wherein the processor is further configured to assign scoring information comprising a first scoring information and a second scoring information, the first scoring information being assigned to the first detected user interaction at a first position of the scoring scale associated with the first distinct score at the first timing instance and to maintain this the first scoring information during a time interval between the first timing instance and the second timing instance, wherein the second timing instance coincides with the second detected user interaction at a second position of the scoring scale associated with the second distinct score, whereby the processor maintains the first scoring information input by the user at the first user interaction during the time interval until the user perceives a change in the disease-related state and is enabled to enter a new disease-related state at the second timing instance through the second detected user interaction at an arbitrary time selected by the user, and
wherein the processor is configured to assign the second scoring information to the second detected user interaction that is different from the first scoring information,
wherein the processor is configured to generate the scoring scale shaped as an arc aligned with and extending along at least a part of a boundary of the touch-sensitive display, providing a longer length of the scoring scale than a straight line over the touch-sensitive display, wherein the processor assigns scoring information associated with a good state of the user to a color-coded middle part of the arc and assigns scoring information distinct from the good state to distinctly color-coded parts of the arc on both sides of the middle part of the arc.
Independent Claim 11 recites:
A wearable electronic user device comprising:
a processor configured to generate a color-coded scoring scale comprising at least three distinctly color-coded scores comprising a first distinct score, a second distinct score and a third distinct score, each of which concerns different disease-related states of the user;
a touch-sensitive display operably coupled to the processor and configured to display the scoring scale as generated by the processor to enable a user to input disease-related states of the user through interaction with the displayed scoring scale;
wherein the processor is configured to generate the color-coded scoring scale as an arc-shape aligned with and extending along at least a part of a boundary of the touch-sensitive display so as to provide a longer length of the scoring scale than a straight line over the touch-sensitive display and comprises at least a first input region, a second input region and a third input region associated with the at least three distinct scores enabling the user to select different disease related states of the user, wherein the device informs the user if the different disease related states have already been selected; and
wherein the processor is configured for detecting the user interaction of the user with the first input region, the second input region and the third input region on the touch-sensitive display to assign at least first, second and third scoring information by associating interaction of the user with one of the at least three distinct scores.
Independent claim 15 recites:
A system comprising:
a wearable electronic user device comprising:
a processor configured to generate a color-coded scoring scale comprising at least three distinctly color-coded scores comprising a first distinct score in a first input region, a second distinct score a second input region and a third distinct score a third input region, each of which concerns different disease-related states of a user;
a touch-sensitive display operably coupled to the processor and configured to display the color-coded scoring scale as generated by the processor to enable a user to input disease-related states of the user through interaction with the displayed scoring scale;
wherein the processor is configured for detecting the user interaction of the user with the first input region, the second input region and the third input region on the touch-sensitive display to assign at least first, second and third scoring information by associating the user interaction of the user with one of the at least three distinct scores;
wherein the processor is configured to generate the scoring scale as an arc- shape on the touch-sensitive display, aligned with and extending along at least a part of a boundary of the touch-sensitive display so as to provide a longer length of the scoring scale than a straight line over the touch-sensitive display, wherein the processor assigns scoring information associated with a good state of the user to a middle part of the arc and assigns scoring information distinct from the good state to parts of the arc on both sides of the middle part of the arc;
wherein the processor assigns timing information comprising one or more timing instances when the user interacted with the touch-sensitive display, and wherein the processor associates the timing information with the scoring information; and
an external computer system for use in communication with the user device,
wherein the external computer system comprises:
a receiver configured to receive at least the scoring information assigned by the processor of the user device associated with the timing information; and
means for generating a diagram showing a variation of the assigned scoring information over a time interval based on the timing information.
Step 1:
The examiner finds claims 1, 11, and 15 drawn to machines.
Step 2A Prong 1:
The above claim limitations constitute an abstract idea that is part of the Mathematical Concepts and/or Mental Processes group identified in the 2019 Revised Patent Subject Matter Eligibility Guidance published in the Federal Register (84 FR 50) on January 7, 2019.
“A mathematical relationship is a relationship between variables or numbers. A mathematical relationship may be expressed in words ….” October 2019 Update: Subject Matter Eligibility, II. A. i. “[T]here are instances where a formula or equation is written in text format that should also be considered as falling within this grouping.” Id. at II. A. ii. “[A] claim does not have to recite the word “calculating” in order to be considered a mathematical calculation.” Id. at II. A. iii. See for example, SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163-65 (Fed. Cir. 2018).
The claimed steps of generating, detecting, assigning, receiving, and informing recite a mental processes capable of being performed in the human mind.
The steps of “generating a color-coded scoring scale” in independent Claims 1, 11, and 15 and “receive at least the scoring information” in independent claim 15 are mere data gathering steps that utilizes a computational device and further as mental processes capable of being performed in the human mind. The steps of “detecting interaction of the user” in independent Claims 1, 11, and 15 is a mental process capable of being performed by the human mind. For example, the human mind is capable of detecting a person behind the steering wheel of a moving vehicle is interacting with the vehicle to operate it. The step of “assigns scoring information” in claims 1, 11, and 15 is a mental process capable of being performed by the human mind. For example, the human mind is capable of applying “scores” to various aspects of different houses when in the market to buy a new home to aid in the decision-making process. The step of “informing” a user in independent claim 11 is example of a mental process capable of being performed by the human mind. For example, the human mind is capable of creating and conveying speech to inform another person of the current weather conditions.
The claimed steps of generating, detecting, assigning, receiving, and informing can be practically performed in the human mind using mental steps or basic critical thinking, which are types of activities that have been found by the courts to represent abstract ideas.
“[T]he ‘mental processes’ abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions.” MPEP 2106.04(a)(2) III. The pending claims merely recite steps for estimation that include observations, evaluations, and judgments.
Examples of ineligible claims that recite mental processes include:
• a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind,
Electric Power Group, LLC v. Alstom, S.A.;
• claims to “comparing BRCA sequences and determining the existence of alterations,” where the claims cover any way of comparing BRCA sequences such that the comparison steps can practically be performed in the human mind,
University of Utah Research Foundation v. Ambry Genetics Corp.
• a claim to collecting and comparing known information, which are steps that can be practically performed in the human mind, Classen Immunotherapies, Inc. v. Biogen IDEC.
See p. 7-8 of October 2019 Update: Subject Matter Eligibility.
Regarding the dependent claims 2, 4-10, and 16-20, the dependent claims are directed to either 1) steps that are also abstract or 2) additional data output that is well-understood, routine and previously known to the industry. Although the dependent claims are further limiting, they do not recite significantly more than the abstract idea. A narrow abstract idea is still an abstract idea and an abstract idea with additional well-known equipment/functions is not significantly more than the abstract idea.
Step 2A Prong 2:
This judicial exception (abstract idea) in Claims 1-2, 4-11, and 15-20 is not integrated into a practical application because:
• The abstract idea amounts to simply implementing the abstract idea on a computing device. For example, the recitations regarding the generic computing components for generating, detecting, assigning, receiving, and informing merely invoke a computer as a tool.
• The data-gathering step (generating and receiving) and the data-output step do not add a meaningful limitation to the method as they are insignificant extra-solution activity.
• There is no improvement to a computer or other technology. “The McRO court indicated that it was the incorporation of the particular claimed rules in computer animation that "improved [the] existing technological process", unlike cases such as Alice where a computer was merely used as a tool to perform an existing process.” MPEP 2106.05(a) II. The claims recite a computing device that is used as a tool for generating, detecting, assigning, receiving, and informing.
• The claims do not apply the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition. Rather, the abstract idea is utilized to determine a relationship among data to estimate bio-information.
• The claims do not apply the abstract idea to a particular machine. “Integral use of a machine to achieve performance of a method may provide significantly more, in contrast to where the machine is merely an object on which the method operates, which does not provide significantly more.” MPEP 2106.05(b). II. “Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not provide significantly more.” MPEP 2106.05(b) III. The pending claims utilize a computing device for generating, detecting, assigning, receiving, and informing. The claims do not apply the obtained prediction to a particular machine. Rather, the data is merely output in a post-solution step.
Step 2B:
The additional elements are identified as follows: display, timer, and processor.
Those in the relevant field of art would recognize the above-identified additional elements as being well-understood, routine, and conventional means for data-gathering and computing, as demonstrated by
• Applicant’s specification (e.g. page 10 lns. 15-20) which discloses that the processor(s) comprise generic computer components that are configured to perform the generic computer functions (e.g. generating, detecting, assigning, and receiving) that are well-understood, routine, and conventional activities previously known to the pertinent industry.
• Applicant’s Background in the specification; and
• The non-patent literature of record in the application.
Thus, the claimed additional elements “are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a).” Berkheimer Memorandum, III. A. 3.
Furthermore, the court decisions discussed in MPEP § 2106.05(d)(lI) note the well-understood, routine and conventional nature of such additional generic computer components as those claimed. See option III. A. 2. in the Berkheimer memorandum.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the units associated with the steps do not add meaningful limitation to the abstract idea. A computer, processor, memory, or equivalent hardware is merely used as a tool for executing the abstract idea(s). The process claimed does not reflect an improvement in the functioning of the computer.
When considered in combination, the additional elements (i.e. the generic computer functions and conventional equipment/steps) do not amount to significantly more than the abstract idea. Looking at the claim limitations as a whole adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN M HANEY whose telephone number is (571)272-0985. The examiner can normally be reached Monday through Friday, 0730-1630 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Valvis can be reached at (571)272-4233. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN M HANEY/Examiner, Art Unit 3791
/JUSTIN XU/Primary Examiner, Art Unit 3791
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