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 .
Amendment Entered
In response to the amendment filed on March 2nd, 2026, amended claims 1, 10, 13, 21, and 23-24 are entered. Claims 4, 8, and 20 are cancelled. Claims 1-3, 5-7, 9-18 and 21-24 are pending and under examination.
Response to Arguments
Applicant's remarks and amendments with respect to the rejections under 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejections are withdrawn in view of the amendment.
Applicant's arguments, filed on March 2nd, 2026, with respect to the rejections under 35 U.S.C. 101 have been fully considered but they are not persuasive. The rejections are maintained, and further clarified, in view of the amendment.
At Pg. 9 of the Reply, Applicant argues that the claims have been amended and therefore “the claimed invention is a technical optical measurement and correction and compensation pipeline, not a mental process”. Examiner respectfully disagrees. The newly added limitation of “by illuminating the body part with spectrally distinct light beams, and capturing the spectrally distinct images corresponding to the spectrally distinct light beams” merely recites a step for data-gathering. Mere data-gathering is recognized by the court as insignificant, extra-solution activity. “As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978)” MPEP 2106.05(g). The newly added limitations of “wherein determining the skin liquid level comprises correcting the obtained spectrally distinct light levels by a factor based on the acquired angular orientation to compensate for reduced light levels in the area due to the angular orientation being farther from being perpendicular to the optical axis and/or to the direction of illumination of the area” and “wherein the acquiring of the angular orientation of the area comprises processing depth data captured by the detector array that captured at least one of the spectrally distinct images” further describe the abstract idea, but fail to differentiate the abstract idea from a mental process. The Examiner notes that the newly added correcting and acquiring steps are completed through data-processing, rather than a physical correction such as an actual adjustment of the placement of the light beams. Therefore, regardless of the new amendments, the claims recite mental processes performed on a computer control system. The “Federal Circuit has explained, ‘[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.’ Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015).” MPEP 2106.04(a)(2) III. Thus, the use of the processor and medium does not prevent identification of the abstract idea as a mental process. There is no time limit recited for performing the steps. The claimed steps can be performed via pen and paper or in a person’s mind with no time limit. The computer is merely utilized as a tool to perform the mental steps.
At Pgs. 9-10 of the Reply, Applicant argues that “the specification (and amended claims) expressly addresses a technical imaging problem and its solution…[t]he present claims recite a specific technical solution to that problem: acquiring angular orientation and applying a correction factor. This is not a generalized calculation; it is a signal-processing correction of a known physical distortion mechanism in optical measurement systems”. The Examiner would like to clarify that the claimed steps do not improve the functioning of the data acquisition or the signal exchange. “It is important to note, the judicial exception alone cannot provide the improvement.” MPEP 2106.05(a). The data acquisition and signal exchange appear to perform the same with or without the abstract idea. Therefore, any improvement resides solely within the abstract idea. “The full scope of the claim under the BRI should be considered to determine if the claim reflects an improvement in technology (e.g., the improvement described in the specification).” MPEP 2106.05(a). “That is, the claim must include the components or steps of the invention that provide the improvement described in the specification.” Id.
“[I]n McRO, the court relied on the specification’s explanation of how the particular rules recited in the claim enabled the automation of specific animation tasks that previously could only be performed subjectively by humans, when determining that the claims were directed to improvements in computer animation instead of an abstract idea.” MPEP 2106.05 (a). There is no improvement to a computer or other technology. Unlike McRO, the claimed system invokes a computer as a tool to perform a mathematical concept and/or mental process.
The processor, units, and medium perform the same with or without the claimed abstract idea. Therefore, it is unclear how the abstract idea can improve the standard functions of the additional elements.
At Pgs. 10-11 of the Reply, Applicant references the accompanying Declaration of Professor Menachem Nathan under 37 C.F.R. § 1.132 (Subject Matter Eligibility Declaration) to argue that “the claimed operations depend on machine-generated optical and geometric datasets that do not exist absent specialized sensing hardware (the detector array) and computational processing”. The Examiner notes that the Declaration has been separately responded to below, after addressing the remaining arguments of the Applicant’s Reply.
Further at Pg. 11 of the Reply, Applicant argues that “the claimed method performs a concrete transformation of data representing a physical object…[t]his transformation – from raw, geometry-distorted optical measurements to an orientation-corrected physiological state map – constitutes a technical processing of sensor data tied directly to physical reality, not an abstract manipulation of numbers”. Examiner would like to point out that the Applicant seems to be misinterpreting the usage of “transformation” by the MPEP. The transformation of an article means that the “article”, which is a physical object or substance, has changed to a different state or thing. In this case, the claimed method completes data-processing of optical measurements in order to generate a map, which can be displayed on a display or saved to tangible memory storage, which does not constitute a “transformation”, as there is no “article” (physical object or substance) that has changed to a different state or thing. Therefore, the claim limitations fail to recite any sort of “transformation”.
Further at Pg. 11 of the Reply, Applicant cites Thales Visionx, Inc. v. United States, 850 F.3d 1343, 1345 (Fed. Cir. 2017), arguing that in Thales, “the court explained that the claims were not ‘directed to the abstract idea of using mathematical equations’ but rather to ‘a system and method that uses inertial sensors in a non-conventional manner to reduce errors’…[s]imilarly here, the claims use spectrally distinct optical measurements and depth-derived angular orientation in a defined manner to reduce angle-induced attenuation errors in physiological measurement”. Examiner respectfully disagrees.
The claimed method steps lack the specificity of those in Thales Visionx, Inc. v. United States (Fed. Cir. 2017). In this case, the computer is simply used as a tool; thus, the claims still recite mental processes performed on a computer control system. The “Federal Circuit has explained, ‘[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.’ Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015).” MPEP 2106.04(a)(2) III. There is no time limit recited for performing the steps. The claimed steps can be performed via pen and paper or in a person’s mind with no time limit. The computer is merely utilized as a tool to perform the mental steps. Therefore, the claims fail to be patent eligible for the same reasons the Court found the claims eligible in Thales Visionx, Inc. v. United States (Fed. Cir. 2017).
The steps of obtaining, acquiring, determining, and generating set forth a judicial exception. These steps describe concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Thus, the claim is drawn to a Mental Process, which is an Abstract Idea. The current claims do not have any limitations drawn to performing any decisions, procedures, or steps in response to the determination. Therefore, there is nothing outside of the abstract idea that shows integration into practical application or significantly more.
Furthermore, Thales Visionx, Inc. v. United States (Fed. Cir. 2017) was found to be patent eligible because the Federal Circuit found its claims were directed to a “particular configuration” of inertial sensors and a particular method of using the raw data from the sensors in order to more accurately calculate the position and orientation of an object on a moving platform. In this case, the claims of the current application have no limitations regarding “inertial sensors”. Rather, the current claims merely recite “a detector array” and “spectrally distinct light beams” as data-gathering elements, and there is no language regarding a particular placement or configuration; therefore, the claims of the current application cannot be considered analogous to those of Thales.
At Pgs. 11-12 of the Reply, Applicant further cites McRO, Inc. v. Bandai Namco Games AM. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016), arguing that the “present claims focus on a specific technical method for improving hyperspectral/optical skin liquid estimation by applying an angular-orientation-dependent correction factor to spectrally distinct light levels obtained from machine-captured images”. Examiner respectfully disagrees. The claims of the instant application fail to recite a specific, unconventional set of rules to automate a process similar to that of McRO; and, therefore, the claims of the current application cannot be considered analogous to those of McRO or patent eligible for the same reasons.
At Pg. 12 of the Reply, Applicant argues that “[w]hen considered as a whole…[t]he claims therefore integrate any alleged abstract concept into a concrete technological application that enhances optical measurement and reliability”. Examiner respectfully disagrees. When viewed as whole, the above-identified additional elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Thus, Claims 1-3, 5-7, 9-18 and 21-24 merely apply an abstract idea to a computer and do not (i) improve the performance of the computer itself (as in Bascom and Enfish), or (ii) provide a technical solution to a problem in a technical field (as in DDR).
Therefore, none of the Claims 1-3, 5-7, 9-18 and 21-24 amounts to significantly more than the abstract idea itself. Accordingly, Claims 1-3, 5-7, 9-18 and 21-24 are not patent eligible and remain rejected under 35 U.S.C. 101.
The Affidavit, Subject Matter Eligibility Declaration (SMED) under 37 C.F.R. § 1.132 of Professor Menachem Nathan, filed on March 2nd, 2026, has been fully considered but has not been found persuasive.
At Pgs. 1-2 of the Affidavit, Professor Menachem Nathan argues “6. The amended claims further require illuminating the body part with spectrally distinct light beams and capturing the spectrally distinct images corresponding to those light beams using a detector array. In my professional opinion, illumination with spectrally distinct light beams and capture using a detector array are physical measurement operations that require optical components, light sources, and optoelectronic sensors. These are not conceptual or observational steps”.
Examiner would like to clarify that the functions of the “spectrally distinct light beams” and “detector array” were never categorized as conceptual or observational steps. Rather, the “spectrally distinct light beams” and “detector array” were categorized as additional elements used for data-gathering. Mere data-gathering is recognized by the court as insignificant, extra-solution activity. “As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978)” MPEP 2106.05(g).
At Pg. 2 of the Affidavit, Professor Menachem Nathan argues “8. The claims do not require any particular mathematical model for determining angular orientation. Rather, they require that angular orientation be acquired from detector-captured data. In my opinion, this is a hardware-dependent sensing operation, not a mental inference”.
Examiner would like to clarify that an invention being a “hardware-dependent sensing operation” does not preclude it from reciting an abstract idea. Although the “detector” is in fact “hardware”, the “detector” is considered an additional element used for data-gathering. The Examiner would like to emphasize that the Examiner is not asserting that the whole claim is an abstract idea. Rather, the Examiner is arguing that the abstract idea is only coupled with limitations that are insufficient in showing integration into practical application or amounting to significantly more than the abstract idea itself.
At Pgs. 2-3 of the Affidavit, Professor Menachem Nathan argues “10. In my professional opinion, this correction step is not a generalized calculation. It is a geometry-dependent transformation applied to machine-acquired spectral measurements in order to remove a physical distortion. The operation transforms orientation-distorted spectral intensity from real-world sensor and illumination into corrected measurement data that more accurately reflects the true physical properties of the imaged skin. This is a technical signal transformation tied directly to optical physics and sensor geometry. The angular compensation described in the specification and claims allows for accurate hydration mapping on non-flat surfaces”.
Examiner would like to clarify that it was never argued that the correction step was a “generalized calculation”. However, the Examiner would like to note that even newly discovered abstract ideas can still be considered abstract, no matter how complex or general it may be. The Court recognized that “a novel and useful structure created with the aid of knowledge of scientific truth” might be patentable. Id., at 67 (quoting Mackay Radio, 306 U. S., at 94). But it held that simply implementing a mathematical principle on a physical machine, namely a computer, was not a patentable application of that principle. For the mathematical formula had “no substantial practical application except in connection with a digital computer.” Benson, supra, at 71. Hence the claim (like the claims before us) was overly broad; it did not differ significantly from a claim that just said “apply the algorithm.” See Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012).
Thus, the claimed steps do not improve the functioning of the data acquisition or the storing in the database. “It is important to note, the judicial exception alone cannot provide the improvement.” MPEP 2106.05(a). The data acquisition and the database storage appear to perform the same with or without the abstract idea. Therefore, any improvement resides solely within the abstract idea.
Additionally, the Examiner would like to point out that the term “transformation” has a specific meaning according to the MPEP. The transformation of an article means that the “article”, which is a physical object or substance, has changed to a different state or thing. In this case, the claimed method completes data-processing of optical measurements in order to generate a map, which does not constitute any type of “transformation”, as there is no “article” (physical object or substance) that has changed to a different state or thing. Therefore, the claim limitations fail to recite any sort of transformation.
At Pg. 3 of the Affidavit, Professor Menachem Nathan argues “11. The amended claims further require generating a skin liquid levels map based on the corrected measurements. The specification describes generating such a map as part of the processing pipeline. This reflects a structured output derived from hardware-acquired measurement data”. Examiner respectfully disagrees. A “skin liquid levels map based on the corrected measurements” fails to qualify as a “structured output” as there is no tangible structure; rather, it is the output of the determination of the skin liquid level for each of the plurality of areas.
Further at Pg. 3 of the Affidavit, Professor Menachem Nathan argues “12. In my professional opinion, it is not technically plausible to characterize the claimed operations as capable of being performed in the human mind or with pen and paper. The steps described in the claims depend on machine-acquired optical and geometric datasets that do not exist without specialized imaging hardware. The spectral intensity values and depth measurements are numerical sensor outputs, not perceptible human observations. A human observer cannot illuminate a surface with spectrally distinct infrared light, cannot perceive or measure per-area spectral intensity values across multiple bands, cannot generate depth maps of tissue geometry, and cannot compute orientation-dependent radiometric correction factors for transformation of received data across many spatial regions without computational processing. In my experience designing and evaluating imaging systems, the suggestion that such a process could be performed mentally does not align with the physical and technical realities of how optical sensing systems operate”. Examiner respectfully disagrees.
Although Professor Menachem Nathan argues that “the claims depend on machine-acquired optical and geometric datasets that do not exist without specialized imaging hardware”, the Examiner would like to note that the “specialized imaging hardware” merely comprises of the “detector array” and “spectrally distinct light beams”. There are no specific details regarding the “detector array” and “spectrally distinct light beams”, as both are recited at a high level of generality, and they are ultimately categorized as data-gathering elements.
Furthermore, Professor Menachem Nathan argues that the “spectral intensity values and depth measurements are numerical sensor outputs, not perceptible human observations”. Examiner would like to clarify that it was never argued that the spectral intensity values and depth measurements were “perceptible human observations”. Examiner acknowledges that the spectral intensity values and depth measurements are numerical sensor outputs, which were obtained from the data-gathering elements. The further steps of obtaining corresponding spectrally distinct light levels, acquiring an angular orientation, determining the skin liquid level, and generating a skin liquid levels map are the limitations that are being considered an abstract idea, in the form of a mental process. As argued above, the claims recite mental processes performed on a computer control system. The “Federal Circuit has explained, ‘[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.’ Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015).” MPEP 2106.04(a)(2) III. Thus, the use of the processor and medium does not prevent identification of the abstract idea as a mental process. There is no time limit recited for performing the steps. The claimed steps can be performed via pen and paper or in a person’s mind with no time limit. The computer is merely utilized as a tool to perform the mental steps.
Professor Menachem Nathan further argues that “[a] human observer cannot illuminate a surface with spectrally distinct infrared light, cannot perceive or measure per-area spectral intensity values across multiple bands, cannot generate depth maps of tissue geometry, and cannot compute orientation-dependent radiometric correction factors for transformation of received data across many spatial regions without computational processing”. Examiner would like to once again clarify that it was never stated that the human could illuminate a surface with a spectrally distinct infrared light. That step is considered pre-solution activity in the form of data-gathering completed by an additional element. The data-gathering step also includes receiving the measured data from the sensors. The abstract idea (mental process) comprises computing the correction factors and generating the maps. Furthermore, it is certainly possible for a clinician to look at print outs of the plurality of spectrally distinct images and make these types of observations (i.e., determining skin liquid level based on obtained data and factoring in light level corrections). There is no level of complexity claimed that would preclude a person from practically completing this process in the mind.
Lastly at Pg. 3 of the Affidavit, Professor Menachem Nathan argues “[i]n conclusion, the amended claims describe a concrete optical sensing and correction system involving physical illumination, sensor-based acquisition of spectral and depth data, geometry-based transformation of measured light levels, and generation of a spatially resolved measurement map. This is a technical measurement and correction pipeline implemented using physical hardware and data processing, not a mental process”.
Examiner would like to thank Professor Menachem Nathan for the time taken to review the technology of the invention and the claims of the instant application. However, the Examiner would like to point out that the claim limitations can be directed to both “a technical measurement and correction pipeline implemented using physical hardware and data processing” as well as a “mental process”. Overall, the claims recite data-gathering elements that require physical hardware, equivalent to the “detector array” and “spectrally distinct light beams”, to obtain measurements, which is completed during pre-solution activity. The further steps of obtaining corresponding spectrally distinct light levels, acquiring an angular orientation, determining the skin liquid level, and generating a skin liquid levels map are the limitations that are being considered an abstract idea, in the form of a mental process. These data-processing steps recite mental processes performed on a computer control system.
The “Federal Circuit has explained, ‘[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.’ Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015).” MPEP 2106.04(a)(2) III. Thus, the use of the processor and medium does not prevent identification of the abstract idea as a mental process. There is no time limit recited for performing the steps. The claimed steps can be performed via pen and paper or in a person’s mind with no time limit. The computer is merely utilized as a tool to perform the mental steps.
Therefore, none of the Claims 1-3, 5-7, 9-18 and 21-24 amounts to significantly more than the abstract idea itself. Accordingly, Claims 1-3, 5-7, 9-18 and 21-24 are not patent eligible and remain rejected under 35 U.S.C. 101.
Claim Objections
Claims 1, 7, 10, 12-13, 18, 21-22, and 24 are objected to because of the following informalities:
Claim 1 recites “of a skin of a body part by illuminating” in line 4, but should read “of the skin of the body part by illuminating”
Claim 1 recites “to the optical axis and/or” in line 16, but should read “to the optical axis of the detector array and/or”
Claim 7 recites “wherein the same” in line 1, but should read “wherein when same”
Claim 7 recites “part, wherein different angular” in line 2, but should read “part and different angular”
Claim 7 recites “area, and wherein the method” in line 3, but should read “area, the method”
Claim 10 recites “generating of the skin liquid levels is” in line 3, but should read “generating of the skin liquid levels map is”
Claim 12 recites “of the spectrum” in line 2, but should read “of a spectrum”
Claim 13 recites “to the optical axis and/or” in line 17, but should read “to the optical axis of the detector array and/or”
Claim 18 recites “wherein the same” in line 1, but should read “wherein when same”
Claim 18 recites “part, wherein different angular” in line 2, but should read “part and different angular”
Claim 18 recites “area, and wherein the processor” in line 3, but should read “area, the processor”
Claim 21 recites “generate the skin liquid levels further” in line 3, but should read “generate the skin liquid levels map further”
Claim 22 recites “of the spectrum” in line 2, but should read “of a spectrum”
Claim 24 recites “to the optical axis and/or” in line 16, but should read “to the optical axis of the detector array and/or”
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 1-3, 5-7, 9-18 and 21-24 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.
Each of Claims 1-3, 5-7, 9-18 and 21-24 has been analyzed to determine whether it is directed to any judicial exceptions.
Step 1
Claims 13-18 and 21-24 recite a system and non-transitory computer readable medium for estimating skin liquid levels. Thus, the claims are directed to a machine, which is one of the statutory categories of invention.
Claims 1-3, 5-7, and 9-12 recite a series of steps or acts for estimating skin liquid levels. Thus, the claims are directed to a process, which is one of the statutory categories of invention.
Step 2A, Prong 1
Each of Claims 1-3, 5-7, 9-18 and 21-24 recites at least one step or instruction for estimating skin liquid levels, which is grouped as a mental process under the 2019 PEG. The claimed steps of obtaining corresponding spectrally distinct light levels, acquiring an angular orientation, determining a skin liquid level, and generating a skin liquid levels map 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. The steps of providing a detector array to acquire a plurality of images, acquiring the images by illuminating spectrally distinct light beams, and displaying or saving the skin liquid levels map are categorized as insignificant extra-solution activity in the form of data-gathering and data-outputting. Accordingly, each of Claims 1-3, 5-7, 9-18 and 21-24 recites an abstract idea.
Specifically, independent Claim 1 recites the abstract idea of:
obtaining, from the plurality of spectrally distinct images, corresponding spectrally distinct light levels of the area;
acquiring, from the plurality of spectrally distinct images, an angular orientation of the area relative to an optical axis of the detector array or to a direction of illumination of the area;
based on the obtained spectrally distinct light levels and the angular orientation of the area, determining a skin liquid level for the area, wherein determining the skin liquid level comprises correcting the obtained spectrally distinct light levels by a factor based on the acquired angular orientation to compensate for reduced light levels in the area due to the angular orientation being farther from being perpendicular to the optical axis and/or to the direction of illumination of the area; and
based on the skin liquid level for each area, generating a skin liquid levels map for the body part indicative of the skin liquid levels of the plurality of areas on the body part…
wherein the acquiring of the angular orientation of the area comprises processing depth data captured by the detector array that captured at least one of the spectrally distinct images.
Specifically, independent Claim 13 recites the abstract idea of:
obtaining, from the plurality of spectrally distinct images, corresponding spectrally distinct light levels of the area;
acquiring, from the plurality of spectrally distinct images, an angular orientation of the area relative to an optical axis of the detector array or to a direction of illumination of the area;
based on the obtained spectrally distinct light levels and the angular orientation of the area, determining a skin liquid level for the area, wherein determining the skin liquid level comprises correcting the obtained spectrally distinct light levels by a factor based on the acquired angular orientation to compensate for reduced light levels in the area due to the angular orientation being farther from being perpendicular to the optical axis and/or to the direction of illumination of the area; and
based on the skin liquid level for each area, generating a skin liquid levels map for the body part indicative of the skin liquid levels of the plurality of areas on the body part…
wherein the acquiring of the angular orientation of the area comprises processing depth data captured by the detector array that captured at least one of the spectrally distinct image.
Specifically, independent Claim 24 recites the abstract idea of:
obtaining, from the plurality of spectrally distinct images, corresponding spectrally distinct light levels of the area;
acquiring, from the plurality of spectrally distinct images, an angular orientation of the area relative to an optical axis of the detector array or to a direction of illumination of the area;
based on the obtained spectrally distinct light levels and the angular orientation of the area, determining a skin liquid level for the area, wherein determining the skin liquid level comprises correcting the obtained spectrally distinct light levels by a factor based on the acquired angular orientation to compensate for reduced light levels in the area due to the angular orientation being farther from being perpendicular to the optical axis and/or to the direction of illumination of the area; and
based on the skin liquid level for each area, generating a skin liquid levels map for the body part indicative of the skin liquid levels of the plurality of areas on the body part…
wherein the acquiring of the angular orientation of the area comprises processing depth data captured by the detector array that captured at least one of the spectrally distinct images.
Further, dependent Claims 2-3, 5-7, 9-12, 14-18 and 21-23 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Accordingly, as indicated above, each of the above-identified claims recites an abstract idea.
Step 2A, Prong 2
The above-identified abstract idea in each of independent Claims 1, 13, and 24 (and their respective dependent Claims 2-3, 5-7, 9-12, 14-18 and 21-23) is not integrated into a practical application under 2019 PEG because the additional elements, either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use.
More specifically, the additional elements of: “detector/detector array”, “display”, “tangible memory storage/memory storage”, “light source/light beams”, “processor”, “portable communication device”, and “non-transitory computer readable medium” are generically recited elements (which can be categorized as one of: data-gathering element, data-outputting element, generic computing element) in independent Claims 1, 13, and 24 (and their respective dependent claims) which do not improve the functioning of a computer, or any other technology or technical field. Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Furthermore, the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. For at least these reasons, the abstract idea identified above in independent Claims 1, 13, and 24 (and their respective dependent claims) is not integrated into a practical application under 2019 PEG.
Moreover, the above-identified abstract idea is not integrated into a practical application under 2019 PEG because the claimed method, system, and medium merely implement the above-identified abstract idea (e.g., mental process) using rules (e.g., computer instructions) executed by a computer (e.g., “processor” as claimed). In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claims 1, 13, and 24 (and their respective dependent claims) is not integrated into a practical application under the 2019 PEG.
Accordingly, independent Claims 1, 13, and 24 (and their respective dependent claims) are each directed to an abstract idea under 2019 PEG.
Step 2B
None of Claims 1-3, 5-7, 9-18 and 21-24 include additional elements that are sufficient to amount to significantly more than the abstract idea for at least the following reasons.
These claims require the additional elements of: “detector/detector array”, “display”, “tangible memory storage/memory storage”, “light source/light beams”, “processor”, “portable communication device”, and “non-transitory computer readable medium”. The above-identified additional elements are generically claimed computer components which enable the above-identified abstract idea(s) to be conducted by performing the basic functions of automating mental tasks and/or can be categorized as one of either data-gathering or data-outputting elements. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
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:
The Applicant’s specification (e.g. paragraphs [0038-0041]) which discloses that the processor(s) comprise generic computer components that are configured to perform the generic computer functions (e.g. obtaining, acquiring, determining, generating, and compensating) that are well-understood, routine, and conventional activities previously known to the pertinent industry; and
Chhibber et al (U.S. Patent No. 2010/0309300) which teaches a method and system for analyzing physical conditions using digital images (Abstract), comprising well-known additional elements such as an “image sensor 114” (Chhibber [0072-0074]) and a “plurality of light sources 129” (Chhibber [0075-0076]), which use “conventional” techniques for image correction before being used for analyzing skin conditions (Chhibber [0092]).
Accordingly, in light of Applicant’s specification, the claimed term “processor” is reasonably construed as a generic computing device. Like SAP America vs Investpic, LLC (Federal Circuit 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available computers, with their already available basic functions, to use as tools in executing the claimed process.
Furthermore, Applicant’s specification does not describe any special programming or algorithms required for the “processor”. This lack of disclosure is acceptable under 35 U.S.C. §112(a) since this hardware performs non-specialized functions known by those of ordinary skill in the computer arts. By omitting any specialized programming or algorithms, Applicant's specification essentially admits that this hardware is conventional and performs well-understood, routine and conventional activities in the computer industry or arts. In other words, Applicant’s specification demonstrates the well-understood, routine, conventional nature of the above-identified additional elements because it describes these additional 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 Berkheimer memo from April 19, 2018, (III)(A)(1) on page 3). Adding hardware that performs “‘well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible (TLI Communications).
The recitation of the above-identified additional limitations in Claims 1-3, 5-7, 9-18 and 21-24 amounts to mere instructions to implement the abstract idea on a computer. Simply using a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
A claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
For at least the above reasons, the method, system, and medium of Claims 1-3, 5-7, 9-18 and 21-24 are directed to applying an abstract idea as identified above on a general purpose computer without (i) improving the performance of the computer itself, or (ii) providing a technical solution to a problem in a technical field. None of Claims 1-3, 5-7, 9-18 and 21-24 provides meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself.
Taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claims 1, 13, and 24 (and their dependent claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment. That is, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity. When viewed as a combination, these above-identified additional elements simply implement the claimed functions with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. When viewed as whole, the above-identified additional elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Thus, Claims 1-3, 5-7, 9-18 and 21-24 merely apply an abstract idea to a computer and do not (i) improve the performance of the computer itself (as in Bascom and Enfish), or (ii) provide a technical solution to a problem in a technical field (as in DDR).
Therefore, none of the Claims 1-3, 5-7, 9-18 and 21-24 amounts to significantly more than the abstract idea itself. Accordingly, Claims 1-3, 5-7, 9-18 and 21-24 are not patent eligible and rejected under 35 U.S.C. 101.
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.
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/CHANEL J YOON/Examiner, Art Unit 3791
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