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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 7, 2026 has been entered.
Response to Arguments
Applicant’s arguments filed on 12/09/2025 have been fully considered, but they are not persuasive.
Taking direct measurements vs indirect measurements are well known within the medical arts. This does not provide an improvement. Guiding a user to perform a measurement is an abstract idea of certain methods organizing human activity. Examiner notes from MPEP 2106.04(a)(2) II C.: “Another example of a claim reciting social activities is Interval Licensing LLC, v. AOL, Inc., 896 F.3d 1335, 127 USPQ2d 1553 (Fed. Cir. 2018). The social activity at issue was the social activity of “’providing information to a person without interfering with the person’s primary activity.’” 896 F.3d at 1344, 127 USPQ2d 1553 (citing Interval Licensing LLC v. AOL, Inc., 193 F. Supp.3d 1184, 1188 (W.D. 2014)). The patentee claimed an attention manager for acquiring content from an information source, controlling the timing of the display of acquired content, displaying the content, and acquiring an updated version of the previously-acquired content when the information source updates its content. 896 F.3d at 1339-40, 127 USPQ2d at 1555. The Federal Circuit concluded that “[s]tanding alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea,” observing that the district court “pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention.” 896 F.3d at 1344-45, 127 USPQ2d at 1559. An example of a claim reciting following rules or instructions is In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018). The patentee claimed a method of playing a dice game including placing wagers on whether certain die faces will appear face up. 911 F.3d at 1160; 129 USPQ2d at 1011. The Federal Circuit determined that the claims were directed to the abstract idea of “rules for playing games”, which the court characterized as a certain method of organizing human activity. 911 F.3d at 1160-61; 129 USPQ2d at 1011.” These are analogous to the claimed invention.
The newly added limitation of superimposing an indicator merely invokes the displaying of a mouse cursor on a computer display which is merely conventional computer equipment used for post-solutionary data output. This does not provide an improvement.
Accordingly, the rejection of claims 1-6, 8, 10, 12-15, and 20 under 35 U.S.C. 101 are maintained.
Response to Amendment
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6, 8, 10, 12-15, and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Here, claims 1 and 13 recite the function of using an “estimation model”, but the specification never discloses the necessary steps and/or flowcharts of how this occurs. The term “estimation model” is treated as a black box and the specification does not describe the specifics of how to achieve the above-recited function(s) with this model. It is not enough that a skilled artisan could devise a way to accomplish the model because this is not relevant to the issue of whether the inventor has shown possession of the claimed invention. See MPEP 2161.01(I). Therefore, adequate disclosure is needed.
Here, claims 1 and 20 recite the function of using an “convert the partial bio-impedance to the abdomen impedance” and claim 13 recites “converting the partial bio-impedance to the abdomen impedance”, but the specification never discloses the necessary steps and/or flowcharts of how this occurs. The term “convert the partial bio-impedance to the abdomen impedance” and “converting the partial bio-impedance to the abdomen impedance” is treated as a black box and the specification does not describe the specifics of how to achieve the above-recited function(s) with this model. It is not enough that a skilled artisan could devise a way to accomplish the model because this is not relevant to the issue of whether the inventor has shown possession of the claimed invention. See MPEP 2161.01(I). Therefore, adequate disclosure is needed.
Claims 1, 13, and 20 recite “measure the abdomen impedance at the first body part”. The term “first body part” is broad such that it includes every part of the body. The specification does not have support for the abdomen impedance being able to be measured at each part of the body. As currently claimed the first body part could also be “an arm, or a leg” and there appears to be no support in the disclosure for how an abdomen impedance is specifically measured from those body parts. The claims further discloses “measure a partial bio-impedance from the second body part….convert the partial bio-impedance to the abdomen impedance” which in light of the specification it appears this second body part is meant to be “a torso, an arm, or a leg” (See Paragraph 0011 of the specification). Further the second body part could be an abdomen as the abdomen is part of the torso so there appears to be no support for how only “a partial bio-impedance” is measured from the abdomen. And if the second body part is the abdomen there appears to be no support for the limitation of “convert the partial bio-impedance to the abdomen impedance” with the initial partial bio-impedance being an abdomen impedance as it would be converting abdomen impedance to itself?
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 1-6, 8, 10, 12-15, and 20 are 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.
Claims 1, 13, and 20 recite “measure the abdomen impedance at the first body part”. The term “first body part” is broad such that it includes every part of the body. It is unclear how the abdomen impedance is able to be measured at each part of the body. The claims further discloses “measure a partial bio-impedance from the second body part….convert the partial bio-impedance to the abdomen impedance” which in light of the specification it appears this second body part is meant to be “a torso, an arm, or a leg” (See Paragraph 0011 of the specification). Thus it is unclear what the scope of the term ‘first body part’ is meant to be. As currently claimed the first body part could also be “an arm, or a leg” and thus it is unclear how an abdomen impedance is specifically measured from those body parts. Further the second body part could be an abdomen, as the abdomen is part of the torso so it is unclear why only “a partial bio-impedance” is measured. And if the second body part is the abdomen it is unclear what it means to “convert the partial bio-impedance to the abdomen impedance” as it would be converting abdomen impedance to itself?
Claims 1 and 20 recite the function of using an “convert the partial bio-impedance to the abdomen impedance” and claim 13 recites “converting the partial bio-impedance to the abdomen impedance” and it is unclear exactly how this conversion is being done.
Claim 20 recites the limitation "the estimated user’s blood fat level" in Line 27. There is insufficient antecedent basis for this limitation in the claim.
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 1-6, 8, 10, 12-15, and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
The claimed invention in claims 1-6, 8, 10, 12-15, and 20 are directed to statutory subject matter as the claims recite a system (claims 1-6, 8, 10, 12, and 20) and a method (claims 13-15).
Step 2A, Prong One
Regarding claims 1, 13, and 20, the recited steps are directed mental process of performing concepts in a human mind or by a human using a pen and paper (see MPEP 2106.04(a)(2) subsection (III)) and/or certain methods of organizing human activity (see MPEP 2106.04(a)(2) subsection (II)).
Specifically from claims 1 and 13:
Determine(ing) whether the impedance sensor is capable of measuring abdomen impedance from a first body part;
based on the impedance sensor being capable of measuring the abdomen impedance from the first body part, control the display to provide a first measurement guidance that displays a body image and a mark located at the first body part in the body image to indicate the first body part as a measurement position, and measure the abdomen impedance at the first body part using the impedance sensor;
based on the impedance sensor being incapable of measuring the abdomen impedance from the first body part, control the display to provide a second measurement guidance that displays the mark at a second body part in the body image to indicate the second body part as the measurement position, measure a partial bio-impedance from the second body part using the impedance sensor, and convert the partial bio-impedance to the abdomen impedance;
estimate(ing) a user's blood fat level as bio-information by applying, to the abdomen impedance, an estimation model that is generated using a correlation among bio-impedance levels, tissue fat levels, and blood fat levels; and
control(ing) the display to output a graph of the estimated user's blood fat level that changes over time, and to superimpose an indicator on the graph at a time point corresponding to a user control of a position of the indicator.
From claim 20:
determine whether the impedance sensor is capable of measuring abdomen impedance from a first body part;
based on the impedance sensor being capable of measuring the abdomen impedance from the first body part, control the display to provide a first measurement guidance that displays a body image and a mark located at the first body part in the body image to indicate the first body part as a measurement position, and measure the abdomen impedance at the first body part using the impedance sensor;
based on the impedance sensor being incapable of measuring the abdomen impedance from the first body part, control the display to provide a second measurement guidance that displays the mark at a second body part in the body image to indicate the second body part as the measurement position, measure a partial bio-impedance from the second body part using the impedance sensor, and convert the partial bio-impedance to the abdomen impedance; and
control the display to output a graph of the estimated user's blood fat level that changes over time and to superimpose an indicator on the graph at a time point corresponding to a user control of a position of the indicator.
These underlined limitations describe a mental process (including an observation, evaluation, judgment, opinion) under the broadest reasonable standard, as a skilled practitioner is capable of performing the recited limitations and making a mental assessment thereafter. Examiner notes that nothing from the claims suggests that the limitations cannot be practically performed by a medical, biomedical or engineering professional with the aid of a pen and paper; their knowledge gained from education, background, or experience; or by using a generic computer as a tool to perform mental process steps in real time. Examiner additionally notes that nothing from the claims suggests an undue level of complexity that the mental process steps cannot be practically performed by a human with the aid of a pen and paper, or using a generic computer as a tool to perform the mental process steps. Further the limitations recite certain methods organizing human activity (managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions).) through the providing of guidance instructions.
Examples of ineligible claims that recite mental processes include:
• a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group, LLC v. Alstom, S.A.;
• claims to “comparing BRCA sequences and determining the existence of alterations,” where the claims cover any way of comparing BRCA sequences such that the comparison steps can practically be performed in the human mind, University of Utah Research Foundation v. Ambry Genetics Corp.
• a claim to collecting and comparing known information (claim 1), which are steps that can be practically performed in the human mind, Classen Immunotherapies, Inc. v. Biogen IDEC.
See p. 7-8 of October 2019 Update: Subject Matter Eligibility.
Examples of ineligible claims that recite certain methods of organizing human activity include:
Other examples of managing personal behavior recited in a claim include:
i. filtering content, BASCOM Global Internet v. AT&T Mobility, LLC, 827 F.3d 1341, 1345-46, 119 USPQ2d 1236, 1239 (Fed. Cir. 2016) (finding that filtering content was an abstract idea under step 2A, but reversing an invalidity judgment of ineligibility due to an inadequate step 2B analysis);
ii. considering historical usage information while inputting data, BSG Tech. LLC v. Buyseasons, Inc., 899 F.3d 1281, 1286, 127 USPQ2d 1688, 1691 (Fed. Cir. 2018); and
iii. a mental process that a neurologist should follow when testing a patient for nervous system malfunctions, In re Meyer, 688 F.2d 789, 791-93, 215 USPQ 193, 194-96 (CCPA 1982).
Another example of a claim reciting social activities is Interval Licensing LLC, v. AOL, Inc., 896 F.3d 1335, 127 USPQ2d 1553 (Fed. Cir. 2018). The social activity at issue was the social activity of “’providing information to a person without interfering with the person’s primary activity.’” 896 F.3d at 1344, 127 USPQ2d 1553 (citing Interval Licensing LLC v. AOL, Inc., 193 F. Supp.3d 1184, 1188 (W.D. 2014)). The patentee claimed an attention manager for acquiring content from an information source, controlling the timing of the display of acquired content, displaying the content, and acquiring an updated version of the previously-acquired content when the information source updates its content. 896 F.3d at 1339-40, 127 USPQ2d at 1555. The Federal Circuit concluded that “[s]tanding alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea,” observing that the district court “pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention.” 896 F.3d at 1344-45, 127 USPQ2d at 1559.
An example of a claim reciting following rules or instructions is In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018). The patentee claimed a method of playing a dice game including placing wagers on whether certain die faces will appear face up. 911 F.3d at 1160; 129 USPQ2d at 1011. The Federal Circuit determined that the claims were directed to the abstract idea of “rules for playing games”, which the court characterized as a certain method of organizing human activity. 911 F.3d at 1160-61; 129 USPQ2d at 1011.
See MPEP 2106.04(a)(2) II C.
Step 2A, Prong Two
This judicial exceptions (abstract ideas) in claims 1-6, 8, 10, 12-15, and 20 are not integrated into a practical application because:
•The abstract idea amounts to simply implementing the abstract idea on a computer. For example, the recitations regarding the generic computing components for performing the abstract ideas merely invoke a computer as a tool.
•The data-gathering steps do not add a meaningful limitation to the method as they are insignificant extra-solution activity.
•There is no improvement to a computer or other technology. “The McRO court indicated that it was the incorporation of the particular claimed rules in computer animation that "improved [the] existing technological process", unlike cases such as Alice where a computer was merely used as a tool to perform an existing process.” MPEP 2106.05(a) II. The claims recite a computer that is used as a tool for performing the abstract ideas
•The claims do not apply the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition. Rather, the abstract idea is utilized to determine a relationship among data to provide a medical measurement.
•The claims do not apply the abstract idea to a particular machine. “Integral use of a machine to achieve performance of a method may provide significantly more, in contrast to where the machine is merely an object on which the method operates, which does not provide significantly more.” MPEP 2106.05(b). II. “Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not provide significantly more.” MPEP 2106.05(b) III. The pending claims utilize a computer to perform the abstract ideas. The claims do not apply the obtained measurements to a particular machine. Rather, the data is merely output in a post-solution step.
When considered in combination, the additional elements (i.e. the generic computer functions and conventional equipment/steps) do not amount to significantly more than the abstract idea. Looking at the claim limitations as a whole adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Step 2B
The additional elements are identified as follows:
-“an impedance sensor comprising a pair of input electrodes and a pair of receiving electrodes, and configured to measure bio-impedance of a user by applying a current to the pair of input electrodes and by measuring a voltage between the pair of receiving electrodes; a display; and a processor configured to” in claim 1
-“ control the display to output a graph of the estimated user's blood fat level that changes over time, and to superimpose an indicator on the graph at a time point corresponding to a user control of a position of the indicator.” in claim 1
-“an output interface…the display, an audio output device, and a haptic device” in claim 10
-“an optical sensor” in claim 12
-“measuring bio-impedance of a user by using an impedance sensor; based on a request to measure” in claim 13
-“a display” in claim 13
-“ controlling the display to output a graph of the estimated user's blood fat level that changes over time and to superimpose an indicator on the graph at a time point corresponding to a user control of a position of the indicator.” in claim 13
-“a main body; an impedance sensor comprising a first electrode pair disposed on a first surface of the main body, a second electrode pair disposed on second surface of the main body, and a measurer configured to measure bio-impedance using the first electrode pair and the second electrode pair; and a processor configured to,” in claim 20
-“the display” in claim 20
-“control the display to output a graph of the estimated user's blood fat level that changes over time and to superimpose an indicator on the graph at a time point corresponding to a user control of a position of the indicator.” in claim 20
Those in the relevant field of art would recognize the above-identified additional elements as being well-understood, routine, and conventional means for data-gathering and computing, as demonstrated by
Applicant's specification (Paragraphs 0075-0076 and 0098) which discloses that the processor and memory comprise generic computer components that are configured to perform the generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry; and
The prior art provided by the Applicant in the IDS and by the Examiner in PTO-892 which disclose each of the elements as being known and conventional in the art elements;
Thus, the claimed additional elements “are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a).” Berkheimer Memorandum, III. A. 3. Furthermore, the court decisions discussed in MPEP § 2106.05(d)(ll) note the well-understood, routine and conventional nature of such additional elements as those claimed. See option III. A. 2. in the Berkheimer memorandum. Superimposing an indicator on a display merely invokes the use of a mouse and corresponding mouse indicator on a display which is merely conventional computer equipment.
Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception into a practical application or provide significantly more. See Bilski, 561 U.S. at 610, 95 USPQ2d at 1009 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 197 (1978)), and CyberSource v. Retail Decisions, 654 F.3d 1366, 1370, 99 USPQ2d 1690 (Fed. Cir. 2011). See MPEP 2106.05(b).
Regarding the dependent claims, the dependent claims are directed to either 1) steps that are also abstract or 2) additional data output that is well-understood, routine and previously known to the industry or 3) further recite additional elements at a high level of generality which are conventional in the art.
Claims 2, 10, 14 is additional data output
Claims 2, 8, 10, 12, 14 recites additional elements at a high level of generality which are conventional in the art
Claims 2-6, 8, 12, 14-15 are steps that are also abstract as a mental process through additional data gathering or analysis or abstract as certain methods of organizing human activity through providing more guidance/instructions
Although the dependent claims are further limiting, they do not recite significantly more than the abstract idea. A narrow abstract idea is still an abstract idea and an abstract idea with additional well-known equipment/functions is not significantly more than the abstract idea.
Conclusion
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/PATRICK FERNANDES/Primary Examiner, Art Unit 3791
