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 December 30, 2025 has been entered. Claims 1-17 remain pending in the application. Applicant’s amendments to the claims have overcome each and every objection to the claims and 112 rejection previously set forth in the Non-Final Office Action mailed February 26, 2025. Applicant’s amendments to the claims necessitate new grounds of rejection, as described in the Response to Arguments, 101, and 112 Rejections 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.
Claims 1-17 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.
Claims 1-10 are directed to a method of determining metabolic parameters, which is an abstract idea. Claims 1-10 do not include additional elements that integrate the exception into a practical application or that are sufficient to amount to significantly more than the judicial exception for the reasons provided below which are in line with the 2014 Interim Guidance on Patent Subject Matter Eligibility (Federal Register, Vol. 79, No. 241, p 74618, December 16, 2014), the July 2015 Update on Subject Matter Eligibility (Federal Register, Vol. 80, No. 146, p. 45429, July 30, 2015), the May 2016 Subject Matter Eligibility Update (Federal Register, Vol. 81, No. 88, p. 27381, May 6, 2016), and the 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No. 4, page 50, January 7, 2019).
The analysis of claim 1 is as follows:
Step 1: Claim 1 is drawn to a process.
Step 2A – Prong One: Claim 1 recites an abstract idea. In particular, claim 1 recites the following limitations:
[A1] “A method of determining metabolic parameters of one or several muscle motor units of a subject by coupling muscle response to ventilatory response of said subject”
[B1] “a step of plotting a Cost of Transport (COT) curve of the oxygen flow rate against the movement speed of the one or several muscle motor units v(t)”, the curve formula, and the variables of the formula; and
[C1] “a step of determining the following metabolic parameters from the COT curve: Basal power B which is the vertical asymptote at the origin; Flow resistance RM which is the oblique asymptote; a0 which is the y-intercept of the oblique asymptote.
These elements [A1]-[C1] of claim 1 are drawn to an abstract idea since (1) they involve mathematical concepts in the form of mathematical relationships, mathematical formulas or equations, and/or mathematical calculations; and (2) they involve a mental process that can be practically performed in the human mind including observation, evaluation, judgment, and opinion and using pen and paper.
Step 2A – Prong Two: Claim 1 recites the following limitations that are beyond the judicial exception:
[A2] – “a step of performing exercise using a test device”;
[B2] - “a step of instantaneously measuring movement speed of the one or several muscle motor units of the subject as a function of time v(t), and an oxygen flow rate φO2(t) of the subject”; and
[C2] - “a step of generating and outputting a synthetic mapping of a response of a subject to an exercise”.
The elements [A2-C2] of claim 1 does not integrate the exception into a practical application of the exception. In particular, the elements [A2-C2] are merely adding insignificant extra-solution activity to the judicial exception, i.e., mere data gathering at a higher level of generality and mere display of data- see MPEP 2106.04(d) and MPEP 2106.05(g).
Step 2B: Claim 1 does not recite additional elements that amount to significantly more than the judicial exception itself. In particular, the recitation “a step of instantaneously measuring movement speed of the one or several muscle motor units of the subject as a function of time v(t), and an oxygen flow rate φO2(t) of the subject” does not qualify as significantly more because this limitation merely describes gathering data as part of the claimed invention in a non-descript and unspecified way.
Also, the recitation “a test device” is merely insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with the abstract idea that uses conventional, routine, and well-known elements or simply displaying the results of the algorithm that uses conventional, routine, and well-known elements. In particular, the test device is nothing more than a device configured for a user to exercise. Such test device is conventional as evidenced by:
U.S. Patent Application No. US 20200221975 A1 (Basta et al.) discloses that treadmills or stationary bikes are conventional training systems with a motor that can be used to sense biometric data of an individual that communicates with a processor ([0046], [0110], [0144] [0176]).
In view of the above, the additional elements individually do not integrate the exception into a practical application and 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 taking 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.
Claims 2-10 depend from claim 1, and recite the same abstract idea as claim 1. Furthermore, these claims only contain recitations that further limit the abstract idea (that is, the claims only recite limitations that further limit the algorithm), with the following exceptions:
Claim 5: “wherein the movement speed of one or several muscle motor units was measured from a test device corresponding to a treadmill or a bicycle”;
Claim 8: “wherein the movement speed of one or more several muscle motor units was measured from a test device corresponding to a treadmill or a bicycle, said the test device having a real-time controlled braking to produce time-modulated braking over a frequency range of about 10-2 Hz to 10 Hz, to achieve the load RL”; and
Claim 9: “wherein the braking is performed by a motor, mechanically coupled to a driven wheel of the test device, and which acts under active load”.
Each of these claim limitations does not integrate the exception into a practical application. In particular, the elements of claims 5, 8, and 9 are merely adding insignificant extra-solution activity to the judicial exception, i.e., mere data gathering at a higher level of generality - see MPEP 2106.04(d) and MPEP 2106.05(g).
Also, the recitation “wherein the movement speed of one or several muscle motor units was measured from a test device corresponding to a treadmill or a bicycle” is merely insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with the abstract idea that uses conventional, routine, and well-known elements. In particular, the data acquirer is nothing more than a testing device being a treadmill or bike with a motor. Such testing devices are conventional as evidenced by Basta, as described above in the rejection of claim 1.
In view of the above, the additional elements individually do not integrate the exception into a practical application and do not amount to significantly more than the above-judicial exception (the abstract idea). Looking at the limitations of each claim as an ordered combination in conjunction with the claims from which they depend (that is, as a whole) adds nothing that is not already present when looking at the elements taken individually.
Claims 11-17 are directed to a device for determining metabolic parameters using a computational algorithm, which is an abstract idea. Claims 11-17 do not include additional elements that integrate the exception into a practical application or that are sufficient to amount to significantly more than the judicial exception for the reasons provided below which are in line with the 2014 Interim Guidance on Patent Subject Matter Eligibility (Federal Register, Vol. 79, No. 241, p 74618, December 16, 2014), the July 2015 Update on Subject Matter Eligibility (Federal Register, Vol. 80, No. 146, p. 45429, July 30, 2015), the May 2016 Subject Matter Eligibility Update (Federal Register, Vol. 81, No. 88, p. 27381, May 6, 2016), and the 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No. 4, page 50, January 7, 2019).
The analysis of claim 11 is as follows:
Step 1: Claim 11 is drawn to a machine.
Step 2A – Prong One: Claim 11 recites an abstract idea. In particular, claim 11 recites the following limitations:
[A1] “determining metabolic parameters of one or several muscle motor units of a subject by coupling muscle response to ventilatory response of said subject”
[B1] “plotting a Cost of Transport (COT) curve of the oxygen flow rate of the subject against the movement speed of one or several muscle motor units v(t)”, the curve formula, and the variables of the formula
[C2] “determine the following metabolic parameters from the COT curve: Basal power B which is the vertical asymptote at the origin; Flow resistance RM which is the oblique asymptote; a0 which is the y-intercept of the oblique asymptote”
These elements [A1]-[C1] of claim 11 is drawn to an abstract idea since it involves a mental process that can be practically performed in the human mind including observation, evaluation, judgment, and opinion and using pen and paper and/or they involve mathematical concepts in the form of mathematical relationships, mathematical formulas or equations, and/or mathematical calculations.
Step 2A – Prong Two: Claim 11 recites the following limitations that are beyond the judicial exception:
[A2] “means for acquiring efforts coupled to a test device, to measure as a function of time: at least movement speed of one or several muscle motor units of the subject v(t), and an oxygen flow rate φO2(t)”;
[B2] “a processor”; and
[C2] – “the processor being further configured to generate a synthetic mapping of the response of a subject to exercise for display or storage”.
These elements [A2]-[C2] of claim 11 do not integrate the exception into a practical application of the exception. In particular, the element [A2] the element is merely adding insignificant extra-solution activity to the judicial exception, i.e., mere data gathering or dispaly at a higher level of generality - see MPEP 2106.04(d) and MPEP 2106.05(g). Furthermore, the element [B2-C2] is merely 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 MPEP 2106.05(f).
Step 2B: Claim 11 does not recite additional elements that amount to significantly more than the judicial exception itself. In particular, the recitation “means for acquiring efforts coupled to a test device,” does not qualify as significantly more because this limitation merely describes gathering data as part of the claimed invention. This limitation is merely insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with the abstract idea that uses conventional, routine, and well-known elements. In particular, the means for acquiring efforts is merely any type of test device or measuring means coupled to a test device. Such means are conventional as evidenced by Basta (as provided above with respect to the rejection of claim 1).
Further, the elements [B2-C2] do not qualify as significantly more because these limitation 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’l, 110 USPQ2d 1976 (2014)) and/or a claim to an abstract idea requiring no more than being stored on a computer readable medium which is a well-understood, routine and conventional activity previously known in the industry (see Electric Power Group, 830 F.3d 1350 (Fed. Cir. 2016); Alice Corp. v. CLS Bank Int’l, 110 USPQ2d 1976 (2014); SAP Am. v. InvestPic, 890 F.3d 1016 (Fed. Circ. 2018)).
Claims 12-17 depend from claim 11, and recite the same abstract idea as claim 11. Furthermore, these claims only contain recitations that further limit the abstract idea (that is, the claims only recite limitations that further limit the algorithm), with the following exceptions:
Claim 14: “wherein the test device is of the treadmill of bicycle type”;
Claim 16: “wherein the test device has real-time controlled braking to produce time-modulated braking over a frequency range of about 10-2 Hz to 10 Hz, to achieve the load RL”; and
Claim 17: “wherein the braking is performed by a motor, mechanically coupled to a driven wheel of the test device, and which acts under active load”.
Each of these claim limitations does not integrate the exception into a practical application. In particular, the elements of claims 14, 16, and 17 are merely adding insignificant extra-solution activity to the judicial exception, i.e., mere data gathering at a higher level of generality - see MPEP 2106.04(d) and MPEP 2106.05(g).
Also, the recitation “wherein the test device is of the treadmill of bicycle type” is merely insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with the abstract idea that uses conventional, routine, and well-known elements. In particular, the data acquirer is nothing more than a treadmill or bike testing device with a motor providing information to a processor. Such testing devices are conventional as evidenced by Basta (as provided above with respect to the rejection of claim 1).
In view of the above, the additional elements individually do not integrate the exception into a practical application and do not amount to significantly more than the above-judicial exception (the abstract idea). Looking at the limitations of each claim as an ordered combination in conjunction with the claims from which they depend (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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-17 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1, line 21 recites “a response of a subject”. It is unclear if this is meant to be the same as “ventilatory response of said subject” as recited in lines 2-3, or if this is a different response of a different subject. Additionally claim 1, line 22 recites “an exercise”. It is unclear if this is meant to be the same as “performing exercise using a test device”, or if this is a different exercise. Further clarification is required.
Claim 5 recites “a test device”. It is unclear if this is meant to be the same “test device” as recited in claim 1, or these are two different test devices.
Claim 11, lines 19-20 recite “a subject”. It is unclear if this is meant to be the same as “said subject” as recited in lines 2-3, or if this is a different response of a different subject. Further clarification is required.
Response to Arguments
Applicant's arguments filed December 30, 2025 have been fully considered but they are not persuasive. With respect to the 101 Rejections in the Non-Final Office Action (See Pages 10-12 of Applicant’s Response “Claim Rejections – 35 U.S.C. §101”), Applicant argues that the claims set forth a specific method that improves producing a synthetic mapping of a response to exercise of a specific individual or subject, and that conventionally, there is no single protocol for obtaining that characterization directly.
MPEP § 2111 discusses proper claim interpretation, including giving claims their broadest reasonable interpretation in light of the specification during examination. Under broadest reasonable interpretation (BRI), the words of a claim must be given their plain meaning unless such meaning is inconsistent with the specification, and it is improper to import claim limitations from the specification into the claim. The requirements for anticipation are discussed in MPEP § 2131. MPEP § 2131 notes that “To reject a claim as anticipated by a reference, the disclosure must teach every element required by the claim under its broadest reasonable interpretation.”
Under BRI, there are no specific characteristics of the synthetic mapping output that would prevent the output from being an extra-solution activity of mere data gathering and display. This means the synthetic mapping is merely a generic display of data acquired by a well-understood and routine test device, as described in the 101 rejection above, without reciting specific sensors that may constitute a particular machine. The mathematical formulas recited in the claims could be calculated in the human mind given the data from the generic test device, which teaches an abstract mental process under BRI.
There are new grounds of claim rejections that were necessitated by the claim amendments, as described in the updated 101 rejection and 112 rejection.
Claims 2-10 and 12-17 are rejected because the rejections of claims 1 and 11 are proper as described in the 101 and 112 Rejections above.
Conclusion
THIS ACTION IS MADE FINAL. 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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/EVELYN GRACE PARK/Examiner, Art Unit 3791 /TSE W CHEN/Supervisory Patent Examiner, Art Unit 3791