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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/27/2026 has been entered.
Response to Arguments
Applicant’s arguments, see Remarks page 10, filed 03/27/2026, with respect to the objection to the specification have been fully considered and are persuasive. The applicant has amended the specification to resolve the objection. The objection to the specification has been withdrawn.
Applicant’s arguments, see Remarks page 10, filed 03/27/2026, with respect to the claim objection to claim 1 has been fully considered and is persuasive. The applicant has amended the claim to resolve the claim objection. The claim objection to claim 1 has been withdrawn.
Applicant’s arguments, see Remarks pages 10-11, filed 03/27/2026, with respect to the 35 USC 112 rejection of claim 4 has been fully considered and is persuasive. The applicant has amended the claim to resolve the 35 USC 112 rejection. The 35 USC 112 rejection of claim 4 has been withdrawn.
Applicant's arguments, see Remarks pages 11-13, filed 03/27/2026, with respect to the 35 USC 101 rejection of claims 1-5 have been fully considered but they are not persuasive.
Regarding the applicant’s argument that the abstract idea cannot be reasonably performed in the human mind, the examiner respectfully disagrees. To provide additional clarity, the examiner is interpreting the abstract idea as the steps of “estimating” a core body temperature and “updating” the feature value. The steps of “measuring” and “transmitting” are being interpreted as merely adding insignificant extra-solution activities to the abstract idea as being limitations that amount to mere data gathering and outputting (see MPEP 2106.05(g)). As mentioned in the previous office action (and below), the examiner maintains the contention that the steps of “estimating” and “updating” may be performed in the human mind.
In response to the applicant’s argument that the claim addresses a technical problem, the examiner respectfully disagrees. “It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception. See MPEP § 2106.04(d) (discussing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-04, 125 USPQ2d 1282, 1285-87 (Fed. Cir. 2018)). Thus, it is important for examiners to analyze the claim as a whole when determining whether the claim provides an improvement to the functioning of computers or an improvement to other technology or technical field”. As mentioned above, the examiner notes that the additional elements are merely providing insignificant extra-solution activities to the judicial exception, and thus are not providing an improvement to a technical field. Further, the additional elements as currently described are general in nature and considered well-understood, routine, and conventional to the field of endeavor.
Therefore, for the reasons provided above, the 35 USC 101 rejection of claims 1-5 is maintained.
Claim Objections
Claim 4 is objected to because of the following informalities:
Claim 4 lines 3-4 recite “...cause the electronic device to: wherein a first communication module comprises…”, which is grammatically incorrect.
Appropriate correction is required.
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.
Claim 16 is 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 16 recites the limitations "the first communication" in line 3 and “the second communication” in line 4. There is insufficient antecedent basis for these limitations in the claim. The examiner notes antecedent basis for these terms exists in claim 4.
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 1-5 and 16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Independent Claim 1 recites:
An electronic device comprising:
a sensor module;
a communication module;
memory for storing instructions; and
at least one processor comprising processing circuitry;
wherein the instructions are executable by the at least one processor individually or collectively to cause the electronic device to:
measure a body temperature of a user through the sensor module,
based a difference between the measured body temperature and a feature value is equal to or smaller than a predetermined threshold value, estimate a core body temperature of the user, from the measured body temperature, and update the feature value with the measured body temperature, and
based on the difference between the measured body temperature and the feature value is larger than the predetermined threshold value, transmit to an external device, information related to abnormality of body temperature of the user and body temperature information of the user including the core body temperature, wherein
the transmitting body temperature information to the external device is performed by a first communication module, or performed by a second communication module activated based on receiving, from the external device, a response transmitted by the external device in response to receiving the information related to abnormality of body temperature transmitted by the electronic device,
the measured body temperature comprises a shell temperature of a body part making contact with the electronic device, and
the core body temperature comprises a core temperature of an internal organ of a body of the user.
Step 1: The examiner determines independent claim 1 is drawn to a machine.
Step 2A Prong 1:
The above claim limitations constitute an abstract idea that is part of the Mathematical Concepts and/or Mental Processes group identified in the 2019 Revised Patent Subject Matter Eligibility Guidance published in the Federal Register (84 FR 50) on January 7, 2019.
“A mathematical relationship is a relationship between variables or numbers. A mathematical relationship may be expressed in words ….” October 2019 Update: Subject Matter Eligibility, II. A. i. “[T]here are instances where a formula or equation is written in text format that should also be considered as falling within this grouping.” Id. at II. A. ii. “[A] claim does not have to recite the word “calculating” in order to be considered a mathematical calculation.” Id. at II. A. iii. See for example, SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163-65 (Fed. Cir. 2018).
The claimed steps of estimating and updating recite mental processes and mathematical concepts (i.e., mathematical relationships, mathematical formulas or equations, and mathematical calculations).
The steps of “estimating” a core body temperature in independent Claim 1 can reasonably be considered a mental process and/or a mathematical calculation. As a mathematical calculation, estimating can be used to make a quick, approximate calculation to find a "rough" answer rather than an exact one. As a mental process, the human mind is capable of guessing how far a distance is between one object and another. The step of “updating” the feature value in claim 1 is a mental process capable of being performed in the human mind. For example, the human mind is capable of using experiences to update previous perceptions (e.g., updating your perception of how large a helicopter is after seeing one in person).
The claimed steps of estimating and updating 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.
“[T]he ‘mental processes’ abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions.” MPEP 2106.04(a)(2) III. The pending claims merely recite steps for estimation that include observations, evaluations, and judgments.
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, 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.
Regarding the dependent claims 2-5 and 16, 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. 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.
Step 2A Prong 2:
This judicial exception (abstract idea) in Claims 1-5 and 16 is not integrated into a practical application because:
• The abstract idea amounts to simply implementing the abstract idea on a computing device. For example, the recitations regarding the generic computing components for measuring, estimating, and providing merely invoke a computer as a tool.
• The data-gathering step (measuring) and the data-output step (transmitting) 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 computing device that is used as a tool for estimating and updating.
• 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 estimate bio-information.
• 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 computing device for estimating and updating. The claims do not apply the obtained prediction to a particular machine. Rather, the data is merely output in a post-solution step.
Step 2B:
The additional elements are identified as follows: external device, sensor, communication module, memory, processor, watch, ring, and ear phone.
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 (e.g. paragraph [0044]) which discloses that the processor(s) comprise generic computer components that are configured to perform the generic computer functions (e.g., estimating and updating) that are well-understood, routine, and conventional activities previously known to the pertinent industry;
• Applicant’s specification (e.g. paragraph [0047]) which discloses that the memory comprises generic storage components that are configured to perform the generic storage functions that are well-understood, routine, and conventional activities previously known to the pertinent industry;
• Chun (US 20140095420 A1) which discloses rings and watches as known platforms for detecting temperature [see para. 0014 “Such sensors may be embodied in various different form factors, such as in the form of a wrist watch, a finger ring, a patch directly attached to a part of user's body, a garment worn by the user, and/or other known form factors for such sensors”;
• Chang (US 20080180235 A1) which discloses a communication module is a conventional component of a patient monitor [see para. 0045 “…the communication module 530 is a conventional type of transceiver…”];
• Applicant’s Background in the specification; and
• The non-patent literature of record in the application.
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)(lI) note the well-understood, routine and conventional nature of such additional generic computer components as those claimed. See option III. A. 2. in the Berkheimer memorandum.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the units associated with the steps do not add meaningful limitation to the abstract idea. A computer, processor, memory, or equivalent hardware is merely used as a tool for executing the abstract idea(s). The process claimed does not reflect an improvement in the functioning of the computer.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN M HANEY whose telephone number is (571)272-0985. The examiner can normally be reached Monday through Friday, 0730-1630 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Valvis can be reached at (571)272-4233. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN M HANEY/Examiner, Art Unit 3791
/JUSTIN XU/Primary Examiner, Art Unit 3791
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