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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 21, 2026 has been entered.
Information Disclosure Statement
The Information Disclosure Statement filed on March 4, 2026 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
Status of Claims
This office action is in response to arguments and amendments entered on August 21, 2026 for the patent application 17/856,961 filed on July 2, 2022. Claim 13 is amended. Claims 1-12, 14-15, 17 and 24 are cancelled. Claims 13, 16 and 18-23 are pending. The first office action of December 28, 2023; the second office action of June 13, 2024; the third office action of August 30, 2024; and the fourth office action of January 7, 2025; the fifth office action of April 11, 2025; and the patent board decision of June 23, 2026 are fully incorporated by reference into this Non-Final Office Action.
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 13, 16 and 18-23 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.
Step 1 – “Statutory Category Identification”
Claim 13 is directed to “an apparatus” (i.e. a machine), hence the claims are directed to one of the four statutory categories (i.e. process, machine, manufacture, or composition of matter). In other words, Step 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 1 “Abstract Idea Identification”
However, the claims are drawn to an abstract idea of “estimating effectiveness of periodic motion,” in the form of “mental processes,” in terms of processes that can be performed in the human mind (including an observation, evaluation, judgement or opinion) which require the following limitations:
Per claim 13:
“receiving, …motion measurement data representing periodic motion of the user during a time interval of a physical exercise of the user;
transforming the motion measurement data into frequency domain samples;
extracting, amongst the frequency domain samples by using peak detection, a first subset of frequency domain samples representing the periodic motion, wherein the first subset comprises a plurality of frequency domain samples at harmonic signal components of a base frequency associated with a highest peak in the frequency domain samples;
computing an energy of the first subset of frequency domain samples representing an energy of the periodic motion;
computing an energy of other frequency domain samples representing an energy of non-periodic motion;
computing a metric indicating a ratio between the energy of the first subset of frequency domain samples and the energy of other frequency domain samples representing a ratio of the energy of the periodic motion and the energy of the non-periodic motion;
computing, on a basis of the motion measurement data, a motion vector for each spatial dimension X, Y, and Z; and
mapping the ratio between energy on the first subset of frequency domain samples and energy on other frequency domain samples to an effectiveness parameter by using a determined mapping rule, wherein the determined mapping rule maps the ratio between the energy of the first subset of frequency domain samples and the energy of other frequency domain samples indicating more energy in the first subset of frequency domain samples to a greater effectiveness parameter, and wherein the metric is total harmonic distortion, and wherein the determined mapping rule maps a greater total harmonic distortion to the greater effectiveness parameter further on a basis of the motion vectors such that the effectiveness parameter is directly proportional to a magnitude of the motion vector in the X dimension and inversely proportional to a magnitude of the motion vectors in the Y and Z dimensions, and
outputting the effectiveness parameter …,
wherein the periodic motion is running, and the effectiveness parameter is a running effectiveness parameter,
wherein the running effectiveness parameter is used as a correction factor for a measured running power parameter by automatically scaling a mechanical energy metric…to isolate forward work from wasted work, resulting in a corrected running power parameter that is accurate,
computing mechanical load of the physical exercise on a basis of the corrected running power parameter,
wherein the operations are performed …carried by the user during the time interval of the physical exercise of the user, and
wherein … continuously compares the running effectiveness parameter to a threshold in real-time, and upon determining the running effectiveness parameter is above the threshold, automatically triggers the correction factor for the measured running power parameter to compute and output an updated recovery estimate...”
These limitations simply a process of data gathering and manipulation, which is partially analogous to “collecting information, analyzing it, and displaying certain results of the collection analysis” (i.e. Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir. 2016)). Hence, these limitations are akin to an abstract idea which has been identified among non-limiting examples to be an abstract idea. In other words, Step 2A, Prong 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 2 – “Practical Application”
Furthermore, the applicants claimed elements of “at least one motion sensor comprises at least one accelerometer,” “an interface,” “at least one processor,” “at least one memory,” “a wearable training computer,” and “a display unit,” are merely claimed to generally link the use of a judicial exception (e.g., pre-solution activity of data gathering and post-solution activity of presenting data) to (1) a particular technological environment or (2) field of use, per MPEP §2106.05(h); and are applying the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, per MPEP §2106.05(f). In other words the claimed “estimating effectiveness of periodic motion,” is not providing a practical application, thus Step 2A, Prong 2 of the subject-matter eligibility analysis is “No.”
Step 2B – “Significantly More”
Likewise, the claims do not include additional elements that either alone or in combination are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g. “at least one motion sensor comprises at least one accelerometer,” “an interface,” “at least one processor,” “at least one memory,” “a wearable training computer,” and “a display unit,” are claimed, these are generic, well-known, and conventional elements. As evidence that these are generic, well-known, and a conventional elements (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known, the Applicant’s specification discloses these in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a), per MPEP § 2106.07(a) III (a). As such, this satisfies the Examiner’s evidentiary burden requirement per the Berkheimer memo.
Specifically, the Applicant’s claimed “at least one motion sensor comprises at least one accelerometer,” and “a wearable training computer” are reasonably understood as generic hardware. This is evidenced in para. [0033] as follows:
“[0033] FIG. 1 illustrates a measurement system comprising sensor devices that may be used in the context of some embodiments of the present invention. The sensors may employ one or more measurement technologies for measuring motion of a user 20 during a physical exercise where the user performs periodic motion, such as running, walking, or swimming. At least one motion sensor device 12, 14, 15, 16 may be attached to the user while the user is performing the exercise. The motion sensor may be attached to any body part of the user 20, e.g. to a hand, torso, head, or foot, as illustrated in FIG. 1. The motion sensors may comprise one or more accelerometers configured to measure acceleration of the user's body part(s) in one, two or three spatial dimensions. The motion sensors may comprise a gyroscope configured to measure rotation of the user's body part(s). Magnetometer is yet another embodiment of the motion sensor. A magnetometer is configured to measure the motion by measuring changes in magnetic fields. Some embodiments employ a sensor fusion comprising a plurality of motion sensors of different types, even a fusion of a three-dimensional accelerometer, a gyroscope, and a magnetometer. At least some of the motion sensors may be comprised in a wearable training computer such as a wrist computer.”
The written description of the specification, as originally filed, is not describing a technologically new and improved “at least one motion sensor comprises at least one accelerometer,” “an interface,” “at least one processor,” “at least one memory,” “a wearable training computer,” and “a display unit.” But merely an application to be applied to an existing “at least one motion sensor comprises at least one accelerometer,” “an interface,” “at least one processor,” “at least one memory,” “a wearable training computer,” and “a display unit.” Regardless, the elements are reasonably interpreted as generic hardware and/or generic computer components which provides no details of anything beyond ubiquitous standard equipment. As such, the claimed limitations of “at least one motion sensor comprises at least one accelerometer,” “an interface,” “at least one processor,” “at least one memory,” “a wearable training computer,” and “a display unit,” are reasonably understood as not providing anything significantly more. Therefore, Step 2B, of the subject-matter eligibility analysis is “No.”
In addition, dependent claims 16 and 18-23 do not provide a practical application and are insufficient to amount to significantly more than the judicial exception. As such, dependent claims 16 and 18-23 are also rejected under 35 U.S.C. § 101, based on their respective dependencies to claim 13. Therefore, claims 13, 16 and 18-23 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject-matter.
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.
Claims 13, 16 and 18-23 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 13 recites “An apparatus… comprising” and “the computer-implemented method comprises…”
Claim 19 recites “The computer-implemented method of claim 13, further comprising…”
Claim 21 recites “The apparatus of claim 13, wherein said computer-implemented method is…”
Claim 23 recites “The apparatus of claim 13, wherein the computer-implemented method further comprises…”
Per M.P.E.P. § 2173.05(p): A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). In Katz, a claim directed to “A system with an interface means for providing automated voice messages...to certain of said individual callers, wherein said certain of said individual callers digitally enter data” was determined to be indefinite because the italicized claim limitation is not directed to the system, but rather to actions of the individual callers, which creates confusion as to when direct infringement occurs. In re Katz, 639 F.3d at 1318 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005), in which a system claim that recited “an input means” and required a user to use the input means was found to be indefinite because it was unclear “whether infringement... occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means.”); < Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph).
In Applicant’s case, claims 13, 21 and 23 are reciting “an apparatus” and “the computer-implemented method”. Claim 19 recites “The computer-implemented method of claim 13,” when claim 13 is originally claimed as an “an apparatus.” Because Applicant is claiming two separate statutory classes together in a single claim, claims 13, 19, 21 and 23 are deemed indefinite. Therefore, claims 13, 19, 21 and 23 are rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 16 and 18-23 are further rejected under 35 U.S.C. § 112(b), based on their respective dependencies to claim 13.
Applicant submitted Declaration under 37 C.F.R. § 1.132
A declaration under 37 C.F.R. § 1.132 filed on August 27, 2026 related to claims 13, 16 and 18-23 has been fully considered, but is not entirely persuasive.
II. CLAIMED PROCESS CANNOT BE PERFORMED AS A "MENTAL PROCESS"
In response to the declaration under 37 C.F.R. § 1.132, the Declarant respectfully states that
“4. I understand that the Examiner and the Patent Trial and Appeal Board (PTAB) have characterized the claimed steps of receiving motion data, transforming the data into frequency domain samples, extracting frequency peaks, and computing a Total Harmonic Distortion (THD) metric as a "mental process" that could theoretically be performed in the human mind or with a pen and paper. However, from a technical and practical standpoint, this is impossible.
5. The claimed subject matter receives raw data from at least one motion sensor (an accelerometer) operating in real-time. Accelerometers in wearable training computers sample data continuously at high frequencies (e.g., 50 Hz or higher) that generate hundreds to thousands of discrete data points every minute.
6. To transform this time-domain measurement data into frequency-domain samples, the wearable training computer performs a Fast Fourier Transform (FFT) or similar complex mathematical algorithm (as disclosed in paragraph [0036] and FIG. 2 of the '961 Application).
7. Performing an FFT on this magnitude of data points requires massive quantities of complex floating-point multiplications and additions. Accordingly, it is impossible for a human being to perform such calculations mentally or with pen and paper during the time interval of the physical exercise of the user, as required by the claimed subject matter. Even if a human being were to attempt an FFT on just a few seconds of raw accelerometer data using pen and paper, it would take hours or days to complete.
8. Furthermore, the amended claims require measuring motion in three spatial dimensions (X, Y, and Z) and continuously computing a motion vector for each dimension. Aligning high-frequency accelerometer data into a three-dimensional coordinate system and continuously calculating the magnitude of X, Y, and Z vectors in real-time to correlate these vectors with the total harmonic distortion requires continuous algorithmic processing by a computer. A human being cannot mentally track, separate, and mathematically process high-frequency three-dimensional spatial data during the performance of a physical exercise. The claims further require extracting harmonic signal components and calculating the energy ratio between these specific components and the non-periodic noise (e.g., total harmonic distortion). Extracting the spectral energy of these specific frequencies from the transformed data and executing the calculations required to map the spectral energy to an effectiveness parameter cannot be performed by mere human "observation" or "judgment".
9. Furthermore, the claimed subject matter executes these operations continuously during the time interval of the physical exercise of the user. It is a physical and practical impossibility for a human to continuously perform high-level FFTs and THD matrix calculations on raw sensor data in real-time while running.”
The Examiner respectfully disagrees with these statements. First, the statement of “a Fast Fourier Transform (FFT) or similar complex mathematical algorithm,” is not commensurate with the scope of the claims. If “a Fast Fourier Transform (FFT) or similar complex mathematical algorithm,” was claimed, then the abstract idea would be further identified as “mathematical concepts,” in terms of processes that can be performed as mathematical relationships, mathematical formulas or equations, and/or mathematical calculations.
Second, courts have long held that mathematical algorithms for performing calculations, without more, are patent ineligible under § 101. See, e.g., Parker v. Flook, 437 U.S. 584, 595 (1978) (“[I]f a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.” (internal citation omitted)); Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972) (finding claims patent ineligible because they “would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself”) (See, e.g., the CAFC’s opinion in In Re: Board Of Trustees Of The Leland Stanford Junior University, slip. op., page 9). Further, the different use of a mathematical calculation, even one that yields different or better results, does not render patent eligible subject matter. (See, e.g., the CAFC’s opinion in In Re: Board Of Trustees Of The Leland Stanford Junior University, slip. op., page 11).
Finally, with respect to mental processes, actual mental performance of the abstract idea is not required. Further, the MPEP § 2106.04(a)(2)(III)(C) states that “claims can recite a mental process even if they are claimed as being performed on a computer” and that “examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and Appellant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite “a mental process.” In the present case, the claim limitations perform steps that are performed on a generic computer and/or computer environment and merely using a computer as a tool to perform the concept. As such, the statements are not persuasive.
III. CLAIMED SUBJECT MATTER PROVIDES A TECHNOLOGICAL IMPROVEMENT TO WEARABLE DEVICES
In response to the declaration under 37 C.F.R. § 1.132, the Declarant respectfully states that
“10. I understand the Patent Trial and Appeal Board characterized the claimed subject matter as merely providing an "advisory value" to a user without improving the technology itself. This is factually incorrect. The claimed subject matter fundamentally improves the internal measuring accuracy and computational logic of the wearable training computer.
11. Prior to the claimed subject matter, wearable devices estimated "running power" (e.g., a metric of mechanical energy produced by the user) by relying heavily on the user's speed and changes in altitude/elevation. However, this conventional approach is technologically flawed as it assumes all user movement is directed efficiently forward. Specifically, the conventional approach fails to account for energy wasted on vertical bouncing or lateral side-stepping (e.g., on uneven terrain).
12. The claimed subject matter solves this specific technological deficiency in wearable sensors. By calculating the THD of the frequency-domain samples and computing the motion vectors in the X, Y, and Z dimensions, the wearable computer can mathematically isolate periodic forward motion (efficient work) from lateral or vertical non-periodic motion (wasted energy).
13. As explicitly recited in the claimed subject matter, the device does not merely output an advisory instruction to the user. Rather, the wearable training computer automatically scales an internal mechanical energy metric to isolate forward work from wasted work. The wearable training computer continuously compares the effectiveness parameter to a threshold in real-time. When the threshold is crossed, the wearable training computer automatically triggers a correction factor to generate an accurate running power parameter and outputs an updated recovery estimate.
14. Therefore, the claimed subject matter substantially alter the internal data state and processing logic of the wearable training computer. By automatically scaling the energy metrics and triggering threshold-based corrections, the device is able to output highly accurate recovery and power metrics that conventional devices are mathematically incapable of computing accurately. Thus, these features represent a substantial improvement in the data-processing capabilities and measurement fidelity of wearable biometric tracking hardware.”
The Examiner respectfully disagrees. First, the Declarant’s statement with regard to being “factually incorrect” are improper, since the 35 U.S.C. §101 analysis of subject-matter eligibility is a question of law, and not a question of fact.
Second, and as previously stated above, the different use of a mathematical calculation, even one that yields different or better results, does not render patent eligible subject matter. (See, e.g., the CAFC’s opinion in In Re: Board Of Trustees Of The Leland Stanford Junior University, slip. op., page 11). The Declarant’s statement “By calculating the THD of the frequency-domain samples and computing the motion vectors in the X, Y, and Z dimensions, the wearable computer can mathematically isolate periodic forward motion (efficient work) from lateral or vertical non-periodic motion (wasted energy),” parallels the overarching discussion in Parker v. Flook, 437 U.S. 584, 595 (1978) “[I]f a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.”
Finally, the Declarant’s statements are taken out of context with the entire claim scope. The claimed subject matter is for achieving an abstract idea of “estimating effectiveness of periodic motion” for a mankind benefit and are not directed to “a substantial improvement in the data-processing capabilities.” As such, the statement is not persuasive.
Response to Arguments
The Applicant’s remarks filed on August 21, 2026 related to claims 13, 16 and 18-23 are fully considered, but are not persuasive.
Claim Rejections under 35 U.S.C. § 101
The Applicant respectfully argues “The Applicant respectfully submits that the prior rejections under 35 U.S.C. § 101 are moot as applied to the currently pending claims. Those rejections and the Decision on Appeal addressed a materially different version of claim 13. The currently amended Claim 13 replaces the former claim language and requires a specific three-dimensional sensor-processing and running-power correction technique not previously considered as a whole. The prior appeal decision, therefore, does not resolve the eligibility of current Claim 13. Thus, the currently amended Claim 13 must be evaluated on its own terms and as an ordered combination of all recited limitations.”
The Examiner respectfully agrees that “prior rejections under 35 U.S.C. § 101 are moot as applied to the currently pending claims” based on a legal doctrine known as Res judicata, since the issues raised with regard to prior rejections were decided by the Patent Trial and Appeals Board on June 23, 2026 resulting in the Examiner being affirmed. The Examiner respectfully agrees further that “The prior appeal decision, therefore, does not resolve the eligibility of current Claim 13. Thus, the currently amended Claim 13 must be evaluated on its own terms and as an ordered combination of all recited limitations.” As such, any arguments with regard to newly amended and unexamined claim 13 are premature. Therefore, the arguments regarding claims 13, 16 and 18-23 are not presently ripe for a response.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT P. BULLINGTON whose telephone number is (313) 446-4841. The examiner can normally be reached on Monday through Friday from 8 A.M. to 4 P.M. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Peter Vasat, can be reached on (571) 270-7625. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/Robert P Bullington, Esq./ Primary Examiner, Art Unit 3715
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