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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/2/2026 has been entered.
Response to Arguments
Applicant's arguments and amendments filed 1/2/2026 have been fully considered but they are not persuasive. The Applicant has amended the claims to recite sensors configured to automatically monitor the physiological parameters of a user to overcome the 101 rejection. The Examiner respectfully disagrees. The sensors collecting data is considered an insignificant extrasolution activity of necessary data gathering and prompting a user to engage in a particular intervention sequence is necessary data outputting such as displaying results to a user (see MPEP 2106.05(g)). Regarding the machine learning, Genetic Technologies Limited v. Merial LLC (Fed Cir., 2016) tells us that the inventive concept of step 2 of the Alice/Mayo analysis cannot be supplied by the abstract idea. The inventive concept necessary at step two of the Mayo/Alice analysis cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself. That is, under the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility; instead, the application must provide something inventive, beyond mere “well-understood, routine, conventional activity.” Mayo, 132 S. Ct. at 1294; see also Myriad, 133 S. Ct. at 2117; Ariosa, 788 F.3d at 1379. The elements amount to mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.04(d) and 2106.05(f)). Accordingly, each of the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limitations on practicing the abstract idea. The 101 rejection is maintained below.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 13-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract without significantly more. The analysis is shown below:
Step 1: Do the claims recite one of the statutory categories of matter (i.e. method, apparatus, etc.)? YES, claims 13-28 recite a method.
Step 2A Prong 1: Is there an abstract idea involved? YES, the claim language pertains to collecting physiological data and characteristics of a user, determining initial and desired states of the user, identifying a plurality of intervention sequencies, predicting weights of transitions, determining a combined predicted weight of the intervention sequence, determining an intervention sequence with a highest expectation of success, determining a likelihood that a person is to engage in the intervention, determining a likelihood that the intervention is to induce the target state, and prompting a user to perform those interventions.
Step 2a Prong 2: Do the claims recite additional elements that integrate the exception into a practical application? NO, the claim language recites mere data collection via sensors The sensors collecting data is considered an insignificant extrasolution activity of necessary data gathering and prompting a user to engage in a particular intervention sequence is necessary data outputting such as displaying results to a user (see MPEP 2106.05(g)). The elements amount to mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.04(d) and 2106.05(f)). Accordingly, each of the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limitations on practicing the abstract idea.
Step 2B: Do the additional elements amount to “Significantly More” than the judicial exception? NO, the claimed elements do not amount to significantly more than the judicial exception because these limitations are simply appending well-understood, routine and conventional activities previously known in the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known in the industry (see Electric Power Group, 830 F.3d 1350 (Fed. Cir. 2016); Alice Corp. v. CLS Bank Int’I, 110 USPQ2d 1976 (2014)). In this case, the amended claims introduced a data collection module, a user device, and a display on the user device, which are parts of a generic computer and merely are used to perform the mental process, data collection, and displaying an output (the data collection and displaying being mere insignificant extra-solution activities).
In view of the above, the additional elements individually do not amount to significantly more than the above-judicial exception (the abstract idea). Looking at the limitations as an ordered combination (that is, 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, for example, or improves any other technology. There is no indication that the combination of elements permits automation of specific tasks that previously could not be automated. There is no indication that the combination of elements includes a particular solution to a computer-based problem or a particular way to achieve a desired computer-based outcome. Rather, the collective functions of the claimed invention merely provide conventional computer implementation, i.e., the computer is simply a tool to perform the process. Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)).
The respective dependent claims do not add any extra limitations that would bring the judicial exception into a practical application. For example, the claims recite other processing steps that can still be done via pen and paper and/or mental process such as probability functions and arousal-valence coordinate systems.
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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/MICHAEL J LAU/Examiner, Art Unit 3796