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 .
Response to Amendment
The amendment, filed 08/25/2025, has been entered. The examiner notes claims 1-2, 6-18, 21, and 23-27 are pending.
Response to Arguments
There are new claim objections in view of the amendment.
Applicant’s argument, see Remarks page 9, filed 08/25/2025, with respect to the claim objection to claim 27 has been fully considered and is persuasive. The amendment has resolved the claim objection. The claim objection to claim 27 has been withdrawn.
Applicant’s argument, see Remarks pages 9-10, filed 08/25/2025, with respect to the 35 USC 112 rejection of claim 27 has been fully considered and are persuasive. After further consideration, the claim language used in claim 27 lines 1-2 does not appear to render the claim indefinite. Originally, the examiner had issue with the phraseology of “…a test support program causing a computer to execute…”, which in one possible interpretation could draw the claim to a method. However, the examiner agrees with the applicant that the most reasonable interpretation is an apparatus configured to perform a series of steps. Therefore, the 35 USC 112 rejection of claim 27 has been withdrawn.
Applicant's arguments, see Remarks pages 10-15, filed 08/25/2025, with respect to the 35 USC 101 rejection of claims 1-2, 6-18, 21, and 23-27 have been fully considered but they are not persuasive.
In response to the applicant’s argument that the present application is not drawn into an abstract idea (Step 2A Prong 1), the examiner respectfully disagrees. MPEP 2106.04(a)(2)(III)(A) lists examples of claims that recite mental processes which include, for example “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 v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016)”. The examiner, in the previous office action and below, asserts that the steps provided in the present application are capable of being performed in the human mind and has given examples to convey support for this assertion. Further, in response to the applicant’s argument that MPEP 2106.04(a)(2)(III)(C) allegedly recites that only a computer or computer environment will fail to elevate the mental process beyond a mere abstract idea, the examiner contends that is an improper interpretation of this particular section of the MPEP, which teaches that claims can recite a mental process even if they are claimed as being performed on a computer. Analysis of additional elements drawing the judicial exception into a practical application are performed in Step 2A Prong 2 and Step 2B.
In response to the applicant’s argument that the additional elements integrate the judicial exception into a practical application (Step 2A Prong 2), the examiner respectfully disagrees. MPEP 2106.04(d)(I) recites examples the courts have found indicative that an additional element may have integrated the exception into a practical application, which include:
• An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
• Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
• Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
• Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
• Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e).
Furthermore, the courts also identified limitations that do not integrate a judicial exception into a practical application, such as:
• 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);
• Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
• Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
The present application appears to be a combination of adding insignificant extra-solution activities and generally linking the use of a judicial exception to a particular technological environment or field of use, thus cannot reasonably be considered to draw the judicial exception into a practical application.
In response to the applicant’s argument that the claimed invention makes a technical contribution to a technical field, the examiner notes that the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception. See MPEP § 2106.04(d) (discussing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-04, 125 USPQ2d 1282, 1285-87 (Fed. Cir. 2018)). Thus, it is important for examiners to analyze the claim as a whole when determining whether the claim provides an improvement to the functioning of computers or an improvement to other technology or technical field.
Applicant’s arguments, see Remarks page 16, filed 08/25/2025, with respect to the rejection(s) of claim(s) 1-2, 6-18, 21, and 23-27 under 35 USC 103 have been fully considered and are persuasive. The examiner agrees with the applicant that the references used in the examiner’s previous office action fail to teach the amended limitations. Sekimoto does ask a question to a user, but fails to determine the display position of the test candidate on the scale according to an answer to the question. Therefore, the 35 USC 103 rejection has been withdrawn.
Claim Objections
Claims 1, 26, and 27 are objected to because of the following informalities:
Claim 1 line 18 should recite “the designated items serve as an index…”;
Claim 26 line 16 should recite “the designated items serve as an index…”;
Claim 27 line 17 should recite “the designated items serve as an index…”.
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 1-2, 5-18, 21, and 23-27 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 test support system comprising: a measurement device that is a wearable device and that includes a sensor that acquires first biological information of a user; and
a test support apparatus including at least one processor, wherein the processor is configured to determine whether or not there is an abnormal tendency in the first biological information by monitoring the first biological information,
determine, as a plurality of action candidates to be recommended for the user, a plurality of action candidates including at least one test candidate for acquiring second biological information that is associated with the first biological information but is different from the first biological information, in a case where there is the abnormal tendency in the first biological information, and
display the plurality of action candidates on a display,
receive designation of at least two items serving as an index in a case where the user selects the presented action candidates, and
present the action candidates in a display form according to the designated items, wherein
the item serves as an index in a case where the user selects the test candidate included in the presented action candidates, and the processor is further configured to present the test candidate in a display form according to the designated items, and wherein the processor is further configured to
present, to the user, a question for determining a display position of the test candidate on at least two scales according to the designated at least two items,
determine the display position of the test candidate on the scales according to an answer to the question, and
present, to the user, the test candidate in a display form in which an icon representing the test candidate is displayed at the determined display position on the scales.
Independent Claim 26 recites:
A test support method comprising:
providing a measurement device that is a wearable device and that includes a sensor that acquires first biological information of a user;
determining whether or not there is an abnormal tendency in the first biological information of a user by monitoring the first biological information;
determining, as a plurality of action candidates to be recommended for the user, a plurality of action candidates including at least one test candidate for acquiring second biological information associated with the first biological information but is different from the first biological information, in a case where there is the abnormal tendency in the first biological information; and
displaying the plurality of action candidates on a display,
receiving designation of at least two items, each serving as an index in a case where the user selects the presented action candidates, and
presenting the action candidates in a display form according to the designated items, wherein
the item serves as an index in a case where the user selects the test candidate included in the presented action candidates,
the method further comprising presenting the test candidate in a display form according to the designated items, and wherein the processor is further configured to
present, to the user, a question for determining a display position of the test candidate on at least two scales according to the designated at least two items,
determine the display position of the test candidate on the scales according to an answer to the question, and
present, to the user, the test candidate in a display form in which an icon representing the test candidate is displayed at the determined display position on the scales.
Independent claim 27 recites:
A non-transitory computer-readable storage medium storing a test support program causing a computer to execute:
a procedure of determining whether or not there is an abnormal tendency in first biological information of a user by monitoring the first biological information, the first biological information being acquired by a sensor that is part of a measurement device that is a wearable device;
a procedure of determining, as a plurality of action candidates to be recommended for the user, a plurality of action candidates including at least one test candidate for acquiring second biological information associated with the first biological information but is different from the first biological information, in a case where there is the abnormal tendency in the first biological information; and
a procedure of displaying the plurality of action candidates on a display,
a procedure of receiving designation of at least two items, each serving as an index in a case where the user selects the presented action candidates, and
a procedure of presenting the action candidates in a display form according to the designated items, wherein
the item serves as an index in a case where the user selects the test candidate included in the presented action candidates, and
the computer is further caused to execute a procedure of presenting the test candidate in a display form according to the designated items, and wherein the processor is further configured to
present, to the user, a question for determining a display position of the test candidate on at least two scales according to the designated at least two items,
determine the display position of the test candidate on the scales according to an answer to the question, and
present, to the user, the test candidate in a display form in which an icon representing the test candidate is displayed at the determined display position on the scales.
Step 1:
After applying the Alice/Mayo test to the claims, the examiner finds during step 1 that claims 1 and 27 are drawn to machines and claim 26 is drawn to a method.
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 receiving, acquiring, determining, recommending, displaying, and presenting recite mental processes.
The steps of receiving “designation of at least one item” and acquiring “first biological information” in independent claims 1, 26, and 27 are mere data gathering steps that uses a computational device. The step of “determining whether or not there is an abnormal tendency” in independent Claims 1, 26, and 27 is a mental process capable of being performed in the human mind. For example, the human mind is capable of determining the temperature outside is cold enough to put on a coat. The step of recommending “for the user, a plurality of action candidates” in independent claims 1, 26, and 27 is a mental process capable of being performed in the human mind. For example, the human mind is capable of recommending to another person to seek medical attention when said other person is bleeding. The steps of displaying “a plurality of action candidates” and “presenting the plurality of action candidates to the user” in claims 1, 26, and 27 are examples of mental processes capable of being performed in the human mind. For example, the human mind is capable of creating mental representations to be "displayed" or "presented" for further thought.
The claimed steps of receiving, acquiring, determining, recommending, displaying, and presenting 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, 6-18, 21, and 23-25, 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, 6-18, 21, and 23-27 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 receiving, acquiring, determining, recommending, displaying, and presenting merely invoke a computer as a tool.
• The data-gathering step 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 receiving, acquiring, determining, recommending, displaying, and presenting.
• 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 receiving, acquiring, determining, recommending, displaying, and presenting. 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: processor, sensor, measurement device.
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. paragraph [0169]) which discloses that the processor(s) comprise generic computer components that are configured to perform the generic computer functions (e.g. determining, recommending, and presenting) 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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 /ALEX M VALVIS/Supervisory Patent Examiner, Art Unit 3791