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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/31/25 has been entered.
Response to Arguments
The objections to the claims have been withdrawn in light of the amendments, filed 12/31/25. However, new objections to the claims have been presented in light of the amendments to the claims, as discussed in detail below.
The interpretation of the limitation “measurement element(s)” under 35 U.S.C. 112(f) has been maintained with respect to claims 8 and 18.
Applicant argues that “element” is a generic structural term, not a “nonce word”, and further, that “measurement” provides a quantitative connotation that, when combined with “element”, refers to a generic category of known parameters of units of measure (Remarks, filed 12/31/25, pp. 10-11). Examiner respectfully disagrees. The term “element” is a non-structural generic placeholder (see MPEP 2181(I)(A)). Moreover, “measurement” does not provide a sufficient structure, material, or acts for performing the claimed function. Therefore, the interpretation under 35 U.S.C. 112(f) of the limitation “measurement element” for acquiring the workout measurement information, as recited in claims 8 and 18, is maintained.
The rejections of the claims under 35 U.S.C. 112(b) have been withdrawn in part in light of the amendments to the claims. However, the rejection under 35 U.S.C. 112(b) of claims 8 and 18 has been maintained, as presented in detail below. Moreover, a new rejection under 35 U.S.C. 112(b) has been presented in light of the amendments to the claims, as discussed in detail below.
Applicant’s arguments with respect to the rejections of the claims under 35 U.S.C. 103 have been fully considered and are persuasive. Particularly, Examiner agrees that neither Running Directions or Jergensen teaches wherein each data type related to the first recommended workout type includes plural measurement elements which specify plural types of workout measurement information to be acquired, and wherein the setting of the new workout type is performed by a wearable device. Accordingly, the rejections under 35 U.S.C. 103 have been withdrawn.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation is: “measurement element” in claims 8 and 18.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the Specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims 1 and 18 are objected to because of the following informalities:
“and/or collectively” recited in claim 1, ln. 6 should likely read “
“wherein the generating of the new workout type” recited in claim 18, ln. 1-2 should likely read “wherein the setting of the new workout type” for consistency purposes and to avoid claim ambiguity.
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.
Claims 1, 3-11, and 13-20 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.
Claim 1 recites in part “based on receiving an input of an additional object included in the first screen, identify a name of a workout type inputted by a user through a second screen; select a first recommended workout type from among recommended workout types included in a recommend list included in a third screen displayed on the display”. However, it is indefinite as to how a workout type name is inputted by a user through a second screen, and also a first recommended workout type is selected from among recommended workout types included in a recommend list, or alternatively put, how the inputted workout type differs from the selected first recommended workout type, and the Specification does not offer further guidance (see Specification, Fig. 6A; p. 29, “According to an embodiment, when voice information is input by a user’s utterance, the second electronic device 201 may display a workout type name 611 (for example, spinning) on an execution screen. […] According to an embodiment, when a selection input of the object 425 for selecting the workout to be added is identified, the second electronic device 201 may display an execution screen 630 for recommending at least one workout type to be added on the display module 250. The second electronic device 210 may display objects (for example, a recommended list 631 (for example, the recommended list 413 of Fig. 4A) including an icon image and a workout type name) on the execution screen 630. When the workout type to be added to the recommended list 413 is selected, the second electronic device 201 may display a workout name 611 of the selected workout type on the execution screen 610.”).
Independent claims 11 and 20 are rejected for the same reasoning.
Claims 3-10 and 13-19 are rejected by virtue of their dependencies on claims 1 and 11, respectively.
Claim 8 recites in part “wherein the selected data type includes at least one recommended measurement element for acquiring the workout measurement information”. It is indefinite as to how at least one recommended measurement element is used for acquiring the workout measurement information, and the Specification does not offer further guidance (see Specification, p. 12, “Each data type may include at least one measurement element among a distance, a speed, pace, calories, cadence, or a workout set. […] When the data type or the measurement element is designated, the electronic device may acquire measurement data corresponding to the designated data type or measurement element through at least one sensor, the sensor module, or the external device, so as to acquire workout measurement information.” (Emphases added)).
Claim 18 is rejected for the same reasoning.
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 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 […] through a second screen”;
“select a first recommended workout type from among recommended workout types”;
“recommend at least one data type related to the first recommended workout type, wherein each data type includes plural measurement elements which specify plural types of workout measurement information to be acquired during execution of a workout corresponding to the data type”; and
“set a new workout type corresponding to the first recommended workout type based on a data type selected form among the at least one recommended data type”.
These limitations encompass determinations, recommendations, selections, and 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, the steps of “recommend”, “select”, and “set a new workout type” organize the user’s workout activities and preferences, 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 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 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.
Acknowledgments
No prior art is provided for claims 1, 3-11, and 13-20. As presented, the combination of all the elements of the independent claims do not appear in a single reference of prior art. Additionally, based on the art of record, it does not appear that it would have been obvious to a person of ordinary skill in the art at the time the application was filed to combine various pieces of the cited prior art to obtain each and every limitation as currently required by the independent claims. However, claims 1, 3-11, and 13-20 remain rejected under 35 U.S.C. 112(b) and 35 U.S.C. 101, as presented in detail above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALYSSA N BRANDLEY 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 BRANDLEY/Examiner, Art Unit 3715