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 Arguments
The interpretation of “measurement element(s)” under 35 U.S.C. 112(f) with respect to claims 8 and 18 has been withdrawn in light of the amendments to the claims, filed 04/15/26.
The objections to claims 1 and 18 have been withdrawn in light of the amendments to the claims, filed 04/15/26.
The rejections under 35 U.S.C. 112(b) have been withdrawn in light of the amendments to the claims, filed 04/15/26.
Applicant’s arguments with respect to the rejection of the claims under 35 U.S.C. 101 have been fully considered but are not persuasive.
Examiner first notes that a request for continued examination reopens prosecution, which provides for re-evaluation of the claims, including re-evaluation of eligibility under 35 U.S.C. 101.
Applicant argues that the independent claims are not directed to a judicial exception, but rather are directed to a real-world situation in which an electronic device worn/accessible by a user provides the user with the capability of engaging in a new workout type not previously provided (Remarks, filed 04/15/26, pp. 14-15). Examiner respectfully disagrees. The claim limitations, under a broadest reasonable interpretation, encompass mental processes and/or certain methods of organizing human activity. For example, a human could mentally create a workout type as claimed (i.e., identify a name, identify at least one recommended data type, select a data type, and set the workout type). While the claims recite hardware components, such as a wearable electronic device, display, memory, and processing circuitry, the additional components are recited at a high level of generality and are conventional computing components. Accordingly, the additional components amount to mere instructions to implement the abstract idea(s) on a computer.
Applicant further argues that the subject matter of the independent claims provides significant advancements over the prior art by providing a user with “significantly extended capability” for the user to create the user’s own new workout type in the manner claimed (Remarks, filed 04/15/26, p. 15). Examiner respectfully disagrees. As noted in the Specification, the claimed invention aims to provide a workout type in consideration of the user’s preference (Specification, filed 08/02/22, pp. 1-2). As noted above, a human could mentally perform the claimed limitations directed to creating/choosing a workout (including a workout type name and data type with corresponding measurement elements). The additional hardware components comprise generic computing components to be used as tools to implement the abstract idea(s) and/or to generally link the abstract idea(s) to a particular computing environment. Moreover, the additional limitations of inputting data, storing information, and displaying data (i.e., recommendation list, an object, acquired workout measurement information) are directed to insignificant extra-solution activity (i.e., data gathering and data transmission/display). There is no claimed improvement to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), recitation to apply or use the judicial exception with a particular machine (see MPEP 2106.05(b)), transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or application or use of the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (see MPEP 2106.05(e)).
Accordingly, the rejection of the claims under 35 U.S.C. 101 has been maintained, as presented in detail 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, 3-11, and 13-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea(s) without significantly more.
Regarding claim 1, analyzed as representative claim:
[Step 1] Claim 1 recites in part “A wearable electronic device”, which falls within the “machine” statutory category of invention.
[Step 2A – Prong 1] The claim recites limitations which can practically be performed by one or more humans through mental process (i.e., observation, evaluation, judgment, and/or opinion) (See MPEP 2106.04(a)(2)(III)), and/or certain methods of organizing human activity (i.e., managing personal behavior or relationships or interactions between people – including social activities, teaching, and following rules or instructions) (See MPEP 2106.04(a)(2)(II)).
Claim 1 recites the following limitations which, under their broadest reasonable interpretation, encompass mental processes, or limitations that can practically be performed in the human mind or with pen and paper:
“identify a name of a workout type”;
“identify at least one recommended data type related to the name of the workout type”; and
“set the new workout type corresponding to the name of the workout type”.
These limitations encompass determinations, recommendations, selections, and/or categorizations of information, which cover mental processes (see Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016), wherein limitations encompassing collecting, analyzing, and displaying information were recited at a high level of generality such that they could practically be performed in the human mind).
Additionally, and/or alternatively, the claim limitations encompass certain methods of organizing human activity (managing personal behavior/relationships). That is, setting a new workout type corresponding to the workout type name based on a selected data type from among at least one identified recommended data type organizes the user’s workout activities and preferences/structures user actions, which falls within “managing personal behavior or relationships” of organizing human activity.
The additional limitations of controlling the display to display a first screen, second screen, and third screen, add an object indicating the new workout type, store information related to the new workout type in the memory, and display acquired workout measurement information encompass generic computer user interface operations, which are often abstract when claimed at a high level of generality.
Accordingly, the claim recites an abstract idea(s).
[Step 2A – Prong 2] The claim fails to recite additional limitations to integrate the abstract idea(s) into a practical application. That is, while the claim recites the additional elements of a “wearable electronic device”, “memory”, “display”, and “at least one processor comprising processing circuitry”, these limitations are recited at a high level of generality and are merely directed to instructions to apply the abstract idea(s) using generic computing components, and/or generally linking the abstract idea(s) to a particular technological environment (computing environment) (See MPEP 2106.05(f) & (h)). Moreover, the additional limitation of “acquire the workout measurement information corresponding to the selected data type in response to execution of the new workout type” fails to recite a particular sensor architecture or transformation of an article, and is directed to the insignificant extra-solution activity of data gathering (See MPEP 2106.05(g)).
Additionally, and/or alternatively, the user-interface presentation (lists, icons, screens), user input/selections, and display of acquired data are directed to mere instructions to apply the abstract idea(s) on generic computing components and insignificant extra-solution activity (e.g., data gathering and data transmission/display), which do not integrate the abstract idea(s) into a practical application.
Therefore, the claim is directed to the abstract idea(s).
[Step 2B] As discussed above with respect to integration of the abstract idea(s) into a practical application, the claim does not further include additional elements that are sufficient to amount to significantly more than the abstract idea(s). The additional elements of a “wearable electronic device”, “memory”, “display”, “at least one processor comprising processing circuitry”, and user interface lists/icons are well-understood, routine, and conventional computer and mobile/wearable components performing their typical functions (see, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, 110 USPQ2d 1976, 1981 (2014) (generic computer implementation); Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016) (collecting/analyzing/displaying); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 614-15, 118 USPQ2d 1744, 1749-50 (Fed. Cir. 2016) (classifying and storing/transmitting image data using generic hardware); In re Morsa, 713 F.3d 104, 110, 106 USPQ2d 1327, 1332 (Fed. Cir. 2013) (providing recommendations and lists)). No claim element, taken individually or in combination, is shown to be unconventional under Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed. Cir. 2018) (e.g., no factual allegations of non-routine hardware configuration, protocol, sensor fusion pipeline, or improved computer operation). Rather, the claim uses off-the-shelf features (e.g., typical displays) to implement a recommendation/selection/workout type creation workflow and measurement display. There is no indication that the combination of elements improves the functionality of a computer or other technology (See MPEP 2106.05(a)), recites a “particular machine” to apply or use the abstract idea(s) (See MPEP 2106.05(b)), recites a transformation of an article to a different thing or state (See MPEP 2016.05(c)), or recites any other meaningful limitation (See MPEP 2106.05(e)). Thus, the claim fails to recite significantly more (i.e., an inventive concept).
Accordingly, claim 1 is patent ineligible.
Independent claim 11 is a method of claim 1, while independent claim 20 is a non-transitory computer-readable storage medium storing instructions for performing the limitations of claim 1. Therefore, claims 11 and 20 are rejected for the same reasons as claim 1, presented above.
Dependent claims 3-10 and 13-19 are dependent on claims 1 and 11, respectively, and therefore recite the same abstract idea(s) noted above. While the dependent claims may have a narrower scope than the independent claims, the claims fail to recite additional limitations that would integrate the abstract idea(s) into a practical application or provide significantly more (i.e., an inventive concept).
The limitations of claims 3-4 and 14-15 recite transmitting information related to the new workout type to a synchronized external device via short-range wireless communication, and transmit recommend lists. The limitation of “transmit the recommend list” recited in claims 4 and 15 encompasses managing personal fitness behavior and preferences, which falls within the managing personal behavior or relationships category of the abstract idea of organizing human activity. Moreover, the additional elements of “communication circuitry”, “short-range wireless communication”, and “synchronized external electronic device” are generic computing components and are directed to a conventional field of use, respectively, and the short-range wireless communication is not a particular machine implementation that changes how the communication circuitry operates. The Specification describes conventional mobile/wearable components (i.e., AP/CPU, Bluetooth/Wi-Fi). Therefore, the additional limitations of the recited claims merely generally link the abstract idea(s) to a particular environment (generic computing environment), which does not integrate the abstract idea(s) into a practical application. Further, the additional elements (communication circuitry, short-range wireless communication, synchronized external electronic device) are well-understood, routine, and conventional computing components performing their typical functions, and no claim element, taken individually or in combination, is shown to be unconventional under Berkheimer. The claims use off-the-shelf features (e.g., Bluetooth/Wi-Fi), and thus fail to provide an “inventive concept”. For these reasons, claims 3-4 and 14-15 are patent ineligible.
The limitations of claims 5-7 and 16-17 recite acquiring workout measurement information through at least one sensor and/or via synchronization with an external device. The additional elements of “at least one sensor” and “external electronic device” are recited at a high level of generality. The Specification describes conventional mobile/wearable components (i.e., AP/CPU, sensor module, Bluetooth/Wi-Fi). The claim does not recite any particularized sensor-control technique that improves the functioning of the computer/wearable or another technology. Thus, while the recited dependent claims add sensors and synchronization, the claims still recite generic data acquisition/transmission (insignificant extra-solution activity). Moreover, the additional elements (sensors, synchronization) are well-understood, routine, and conventional computer and mobile/wearable components performing their typical functions, and no claim element, taken individual or in combination, is shown to be unconventional under Berkheimer. Accordingly, the claims fail to recite an “inventive concept”. For these reasons, claims 5-7 and 16-17 are patent ineligible.
The limitations of claims 8-10, 13, and 18-19 recite providing prioritized additional option information, displaying a map reflecting measured distance and location information based on a location-tracking measurement element, and displaying workout log lists by type or duration. The limitation of “display a workout log list […] separately displayed for each workout type or each workout duration” recited in claims 10 and 19 encompass managing personal fitness behavior and preferences, which falls within the managing personal behavior or relationships category of the abstract idea of organizing human activity. The additional elements of providing and selecting prioritized additional option information (claims 8 and 18) and display a map reflecting a distance value in accordance with execution of the new workout type and location information (claims 9 and 13) are directed to mere instructions to apply the abstract idea(s) using generic computing components and insignificant extra-solution activity (data gathering and data output) which does not integrate the abstract idea into a practical application or provide significantly more (See MPEP 2106.05(g)). Additionally, and/or alternatively, the limitation of displaying the workout log list is directed to insignificant extra-solution activity (data output), which further does not integrate the abstract idea into a practical application or provide significantly more (See MPEP 2106.05(g)). Moreover, the additional elements (display, GPS, displaying maps, logging, user interface lists) are well-understood, routine, and conventional computer and mobile/wearable components performing their typical functions, and no claim element, taken individually or in combination, is shown to be unconventional under Berkheimer. Thus, absent a recited technical improvement, the claims do not supply an “inventive concept”. For these reasons, claims 8-10, 13, and 18-19 are patent ineligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Pub. 2023/0058760 A1 – This reference teaches an input screen of a wearable device comprising an “exercise type” input field which is provided with a pull-down menu enabling an exercise type to be selected, and further, wherein additional data such as exercise amount or exercise time can be input.
“How to add a New Workout on Apple Watch Workout App: (Dance, Cooldown, Core Training)”, uploaded on September 9, 2020 by user “Free Tech Guide” – This reference teaches creating a workout, wherein a workout type name is identified from a list of recommended workout types and which includes plural types of workout measurement information to be acquired (e.g., calories, BPM).
“Create Custom Workouts in Garmin Connect App”, uploaded on June 19, 2020 by user “Dynamic Health 40+” – This reference teaches creating a custom workout, wherein a name of a workout and measurement elements may be selected.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ALYSSA N BIANCAMANO whose telephone number is (571)272-4280. The examiner can normally be reached M-F: 8:30am-5:00pm.
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/ALYSSA N BIANCAMANO/Examiner, Art Unit 3715
/DMITRY SUHOL/Supervisory Patent Examiner, Art Unit 3715
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