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 11/13/2025, has been entered. The examiner notes claims 1-15 are pending with claims 6-15 being withdrawn from further consideration.
Response to Arguments
There are new claim objections in view of the amendment.
Applicant's arguments, see Remarks page 10, filed 11/13/2025, regarding the 35 USC 112 rejection of claim 4 have been fully considered but they are not persuasive. The applicant alleges by using the terms "Bluetooth communication", "BLE communication", "WiFi communication", "UWB communication", and "IrDA communication" that one of ordinary skill would understand these to be referring to communication technologies and not to the specific organizations. While the examiner agrees that the abovementioned all are understood as a standard in wireless communication technology, the specific names (i.e., Bluetooth®) are protected intellectual property and not generic names for wireless technology. Therefore, the 35 USC 112 rejection of claim 4 is maintained.
Applicant's arguments, see Remarks pages 9-10, filed 11/13/2025, regarding the 35 USC 101 rejection of claims 1-5 have been fully considered but they are not persuasive. In response to the applicant’s argument that the claims are drawn to a practical application under step 2A prong 2 of the Alice/Mayo test, the examiner respectfully disagrees. The examiner contends that the claims are “…merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f).
In response to the applicant’s argument that claim 1 improves the functioning of the computer, the examiner respectfully disagrees. The examiner notes 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)). However, as noted in the previous office action, the additional elements general in nature and are merely well-understood, routine, and conventional components for general computing purposes.
Therefore, for the reasons provided above, the 35 USC 101 rejection of claims 1-5 is maintained.
Applicant’s arguments, see Remarks pages 8-9, filed 11/13/2025, with respect to the rejection(s) of claim(s) 1-5 under 35 USC 102/103 have been fully considered and are persuasive. The examiner agrees with the applicant that the references used in the previous office action fail to teach the amended limitation of “when 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, based on the measured body temperature, and updated the feature value with the measured body temperature. Further, the examiner notes that while there are systems within the art that teach determining and outputting information when temperature/feature value is higher/lower/equal to a threshold, the applicant’s present invention requires a “difference” (“difference” being interpreted as the gap between the two quantities) between the measured body temperature and a feature value that is being compared to a threshold, which the examiner has not found after searching within the art. Therefore, the 35 USC 102 and 35 USC 103 rejections have been withdrawn.
Specification
The use of the terms “Bluetooth”, “WiFi”, and “IrDA”, which are trade names or marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the terms.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 line 4 recites “memory storing instructions”. The examiner believes the applicant means to convey “a memory for storing instructions;”. However, if the examiner is wrong, the examiner recommends inserting a hyphen “-“ between “memory” and “storing”.
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 4 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 4 line 5 contains the trademarks/trade names “Bluetooth”, “WiFi”, and “IrDA”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademarks/trade names are used to identify/describe wireless communications and, accordingly, the identification/description is indefinite.
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 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 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,
when 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, based on the measured body temperature, and update the feature value with the measured body temperature, and
when the difference between the measured body temperature and the feature value is larger than the predetermined threshold value, transmit body temperature information of the user including the core body temperature to an external device,
wherein the measured body temperature comprises a shell temperature of a body part making contact with the electronic device, and
wherein 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 measuring, estimating, and providing recite mental processes and mathematical concepts (i.e., mathematical relationships, mathematical formulas or equations, and mathematical calculations).
The step of “measuring” a body temperature in independent Claim 1 is an insignificant extra-solution activity which constitutes a mere data gathering step that utilizes a computational device. The steps of “estimating” a core body temperature in independent Claim 1 is a mathematical calculation to make a quick, approximate calculation to find a "rough" answer rather than an exact one. The step of “providing” body temperature information to a user in claim 1 is an insignificant extra-solution activity in which data is merely output.
The claimed steps of measuring, estimating, and providing 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, 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 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 (providing) 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 measuring, estimating, and providing.
• 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 measuring, estimating, and providing. 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: 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. measuring, estimating, and providing) that are well-understood, routine, and conventional activities previously known to the pertinent industry.
• 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ellis (US 20180271181 A1), which discloses a ring, earphones, and watch as a conventional means of carrying a sensor (i.e., a temperature sensor).
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.
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
/ALEX M VALVIS/Supervisory Patent Examiner, Art Unit 3791