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 f0ile provisions of the AIA .
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Representative claim(s) 1 recites
1. (Currently Amended) An apparatus for estimating a behavior of a user based on an image converted from sensing data, the apparatus comprising:
one or more processors respectively comprising processing circuitry:
a memory storing code, which when executed by the one or more processors configures the one or more processors to:
acquire sensing data measured by one or more behavior measurement devices worn by the user;
convert the sensing data of the user obtained for a predetermined time period into mages;
and estimate the behavior of the user from the images of the user based on a pre-trained model,
wherein the sensing data is transmitted at predetermined time periods based on a determination that an event related to the behavior of the user is less than a predetermined threshold,
wherein the sensing data is immediately transmitted based on a determination that the event related to the behavior of the user is equal to or greater than the predetermined threshold,
and wherein the one or more processors are further configured to:
convert the sensing data into the images by generating image tables in which pixel values calculated based on relationships between pieces of sensing data at different times are recorded.
(abstract portions shown in emphasis)
Step 2A Prong One
The recitation of acquiring data, converting the data into images, and estimating behavior from the images based on a ‘model’ encompasses performance of the limitation in the mind but for the recitation of mere extrasolutionary activity (i.e., mere data gathering and/or nominal output) and/or otherwise nominal and generic computer elements/functions (2019 Patent Eligibility Guidance – hereafter ‘2019 PEG’ - p. 55; see also MPEP § 2106.05(a), (d) and (g)) (e.g., processing ‘units’).
For example, but for the recitation of obtaining data and/or generic processing ‘units’ / functional steps to perform abstract limitations, the steps of ‘converting’ and ‘estimating’ encompasses a clinician (mentally) reviewing sensor data from a patient, (mentally) forming an image of/from the data, and (mentally) estimating the behavior of the patient from the mental image based on a previously learned mental process (i.e., a pretrained model).
If a claim, under BRI, covers performance of the limitations in the mind but for the mere recitation of extrasolutionary activity (and/or otherwise generic computing elements) then the claim falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea under step 2A prong one of the Mayo framework as set forth in the 2019 PEG.
Step 2A Prong Two
This judicial exception is not integrated into a practical application. Claim 1 only recites additional elements of extrasolutionary activity — in particular, ‘acquiring data’ from wearable devices — and/or generic computing structures / elements without further sufficient detail that would tie the abstract portions of the claim into a specific practical application (2019 PEG p. 55 - the instant claim, for example, does not tie into a particular machine, a sufficiently particular form of data or signal collection — via the claimed wearable devices, or a sufficiently particular form of display or computing/processing architecture / structure).
Independent claim(s) 9 and 16 encounter the same issues as claim(s) 1 mutatis mutandis.
Dependent claim(s) 2, 6-8, 10, 14-15, and 19-20 encounter substantially the same issues as the independent claim(s) from which they depend in that they encompass further generic extrasolutionary activity (generic data gathering and nominal display) and/or generic computing elements (storage, memory per se).
Dependent claim(s) 3-5, 11-13, and 17-18 merely add detail to the abstract portions of the claim but do not otherwise encompass any additional elements which tie the claim(s) into a particular application / integration (the dependent claim(s) reciting generic ‘units’ or ‘steps’ which encompass mere computer instructions to carry out an otherwise wholly abstract idea).
Accordingly, the claim(s) are not integrated into a practical application under step 2A prong two.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of extrasolutionary activity (data gathering and display outputting) and generic computing elements cannot amount to significantly more than an abstract idea.
For the independent claim portions and dependent claims which provide additional elements of extrasolutionary data gathering, MPEP § 2106.05(g) establishes that mere data gathering for determining a result does not amount to significantly more:
2106.05(g) Insignificant Extra-Solution Activity
Another consideration when determining whether a claim integrates the judicial exception into a practical application in Step 2A Prong Two or recites significantly more in Step 2B is whether the additional elements add more than insignificant extra-solution activity to the judicial exception. The term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity includes both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent. An example of post-solution activity is an element that is not integrated into the claim as a whole, e.g., a printer that is used to output a report of fraudulent transactions, which is recited in a claim to a computer programmed to analyze and manipulate information about credit card transactions in order to detect whether the transactions were fraudulent.
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). In Flook, the Court reasoned that "[t]he notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula". 437 U.S. at 590; 198 USPQ at 197; Id. (holding that step of adjusting an alarm limit variable to a figure computed according to a mathematical formula was "post-solution activity"). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 79, 101 USPQ2d 1961, 1968 (2012) (additional element of measuring metabolites of a drug administered to a patient was insignificant extra-solution activity).
Examiners should carefully consider each claim on its own merits, as well as evaluate all other relevant considerations, before making a determination of whether an element (or combination of elements) is insignificant extra-solution activity. In particular, evaluation of the particular machine and particular transformation considerations (see MPEP § 2106.05(b) and (c), respectively), the well-understood, routine, conventional consideration (see MPEP § 2106.05(d)), and the field of use and technological environment consideration (see MPEP § 2106.05(h)) may assist examiners in making a determination of whether an element (or combination of elements) is insignificant extra-solution activity. Note, however, that examiners should not evaluate the well-understood, routine, conventional consideration in the Step 2A Prong Two analysis, because that consideration is only evaluated in Step 2B.
This consideration is similar to factors used in past Office guidance (for example, the now superseded Bilski and Mayo analyses) that were described as mere data gathering in conjunction with a law of nature or abstract idea. When determining whether an additional element is insignificant extra-solution activity, examiners may consider the following:
(1) Whether the extra-solution limitation is well known. See Bilski v. Kappos, 561 U.S. 593, 611-12, 95 USPQ2d 1001, 1010 (2010) (well-known random analysis techniques to establish the inputs of an equation were token extra-solution activity); Flook, 437 U.S. at 593-95, 198 USPQ at 197 (a formula would not be patentable by only indicating that is could be usefully applied to existing surveying techniques); Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328-29, 121 USPQ2d 1928, 1937 (Fed. Cir. 2017) (the use of a well-known XML tag to form an index was deemed token extra-solution activity). Because this overlaps with the well-understood, routine, conventional consideration, it should not be considered in the Step 2A Prong Two extra-solution activity analysis.
(2) Whether the limitation is significant (i.e. it imposes meaningful limits on the claim such that it is not nominally or tangentially related to the invention). See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16, 112 USPQ2d 1750, 1755 (Fed. Cir. 2014) (restricting public access to media was found to be insignificant extra-solution activity); Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242, 120 USPQ2d 1844, 1855 (Fed. Cir. 2016) (in patents regarding electronic menus, features related to types of ordering were found to be insignificant extra-solution activity). This is considered in Step 2A Prong Two and Step 2B.
(3) Whether the limitation amounts to necessary data gathering and outputting, (i.e., all uses of the recited judicial exception require such data gathering or data output). See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (presenting offers and gathering statistics amounted to mere data gathering). This is considered in Step 2A Prong Two and Step 2B.
Below are examples of activities that the courts have found to be insignificant extra-solution activity:
Mere Data Gathering:
i. Performing clinical tests on individuals to obtain input for an equation, In re Grams, 888 F.2d 835, 839-40; 12 USPQ2d 1824, 1827-28 (Fed. Cir. 1989);
Some cases have identified insignificant computer implementation as an example of insignificant extra-solution activity. See e.g., Fort Props., Inc. v. Am. Master Lease LLC, 671 F.3d 1317, 1323-24, 101 USPQ2d 1785, 1789-90 (Fed. Cir. 2012); Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1280-81, 103 USPQ2d 1425, 1434-35 (Fed. Cir. 2012). Other cases have considered these types of limitations as mere instructions to apply a judicial exception. See MPEP § 2106.05(f) for more information about insignificant computer implementation.
For claim limitations that add insignificant extra-solution activity to the judicial exception (e.g., mere data gathering in conjunction with a law of nature or abstract idea), examiners should explain in an eligibility rejection why they do not meaningfully limit the claim. For example, an examiner could explain that adding a final step of storing data to a process that only recites computing the area of a space (a mathematical relationship) does not add a meaningful limitation to the process of computing the area. For more information on formulating a subject matter eligibility rejection, see MPEP § 2106.07(a).
The extrasolutionary activity/step(s) of acquiring sensing data as presently recited, cannot provide an inventive concept which amounts to significantly more than the recited abstract idea.
For the independent claims as well as the dependent claims merely reciting generic computer elements and activity (memory/storage, processing units), MPEP § 2106.05(d)(II) establishes computer-based elements which are considered to be well-understood, routine, and conventional when recited at a high level of generality
II. ELEMENTS THAT THE COURTS HAVE RECOGNIZED AS WELL-UNDERSTOOD, ROUTINE, CONVENTIONAL ACTIVITY IN PARTICULAR FIELDS
Because examiners should rely on what the courts have recognized, or those of ordinary skill in the art would recognize, as elements that describe well‐understood, routine activities, the following section provides examples of elements that have been recognized by the courts as well-understood, routine, conventional activity in particular fields. It should be noted, however, that many of these examples failed to satisfy other considerations (e.g., because they were recited at a high level of generality and thus were mere instructions to apply an exception, or were insignificant extra-solution activity). Thus, examiners should carefully analyze additional elements in a claim with respect to all relevant Step 2B considerations, including this consideration, before making a conclusion as to whether they amount to an inventive concept.
The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity.
i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added));
ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.");
iii. Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93;
v. Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition); and
vi. A Web browser’s back and forward button functionality, Internet Patent Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015).
Accordingly, the computer elements, as presently limited, cannot provide an inventive concept since they fall under a generic structure and/or function that does not add a meaningful additional feature to the judicial exception(s) of the claim(s). The claim(s) are not patent eligible under step 2B.
Response to Arguments
Applicant's 4/4/25 arguments with respect to § 101 have been fully considered but they are not persuasive.
Applicant argues in remarks p. 13 that because the claim recites processors, the claimed invention cannot be said to encompass a mental process. Examiner respectfully disagrees. The processors as recited are generic computer elements and thus the claims are still directed to a mental process under 2A prong one.
Applicant then argues in remarks p. 15 that the claimed abstract elements cannot be practically performed in the mind. Examiner respectfully disagrees. Neither of ‘converting’ nor ‘estimating’ is recited in such a manner that the steps are not possibly performable in the human mind. The acquiring step is regarded as extrasolutionary activity and, as such, is not considered as part of the mental process.
Applicant argues in remarks p. 19-21 that the claims encompass an eligible improvement under 2A prong two in that they recite a computerized fall assessment which improves on the diagnostic process. However, such an argument appears to claim an improvement to an ‘assessment’ (as stated in p. 19) where an assessment is an abstract mental process. MPEP § 2106.05(a)(II) establishes
“[I]t is important to keep in mind that an improvement in the abstract idea itself…is not an improvement in technology.”
Applicant argues in remarks p. 21-23 that the additional elements in combination with the abstract portions amount to significantly more under step 2B. Examiner respectfully disagrees. The additional elements, as in step 2A, are merely extrasolutionary and/or generic without adequate detail so as to amount to significantly more as evidenced by the guidance under MPEP §§ 2106.05(g) and 2106.05(d)(II).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/BENJAMIN S MELHUS/Primary Examiner, Art Unit 3791