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 .
Amendment Entered
In response to the amendment filed on November 12th, 2025, amended claims 1-2, 4, 6-8, 10, and 13 are entered. Claims 3, 5, 9, and 11-12 are cancelled. Claims 1-2, 4, 6-8, 10, and 13-14 are currently under examination.
Response to Arguments
Applicant's remarks and amendments with respect to the claim interpretations under 35 U.S.C. 112(f) have been fully considered. The claim interpretations are withdrawn in view of the amendment.
Applicant's remarks and amendments with respect to the rejections under 35 U.S.C. 112(a) and 112(b) have been fully considered. The rejections are withdrawn in view of the amendment.
Applicant's arguments, filed on November 12th, 2025, with respect to the rejection under 35 U.S.C. 101 have been fully considered but they are not persuasive. The rejections have been maintained, and further clarified, in view of the amendment.
At Pg. 9 of the Reply, Applicant argues that the claimed invention is not directed to an abstract idea because the “claim positively recites an imaging device that outputs location information of body parts of a subject and a display that presents the corrected fatigue level. These are concrete external hardware components, not generic computers executing abstract calculations”. Examiner respectfully disagrees. Although the applicant has amended Claim 1 to include an “imaging device” and “display”, these limitations can be categorized under data-gathering and data-outputting. Mere data-gathering and data-outputting have been recognized by the court as insignificant, extra-solution activity. “As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978)” MPEP 2106.05(g).
The claims recite mental processes performed on a computer control system. The “Federal Circuit has explained, ‘[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.’ Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015).” MPEP 2106.04(a)(2) III. Thus, the use of one or more “processor[s]” do not prevent identification of the abstract idea as a mental process. There is no time limit recited for performing the steps. The claimed steps can be performed via pen and paper or in a person’s mind with no time limit. The computer is merely utilized as a tool to perform the mental steps.
Further at Pg. 9 of the Reply, Applicant argues that the claim integrates any alleged abstract concept into a practical application because the claimed invention “applies the concept in conjunction with a particular machine and effects a physical transformation of measured motion data into a corrected fatigue value perceptible to a user”. Examiner respectfully disagrees.
These judicial exceptions are not integrated into a practical application because the additional elements of an “imaging device” and a “display”, which respectively detects the physical signal exploited in the abstract idea and outputs the calculated estimation, do not constitute a particular machine (i.e., both are recited at a high level of generality), nor are they integral to the process claimed. The judicial exception is not applied or used in a meaningful way beyond generally linking its use to a particular technological environment. Additionally, there are no additional elements which apply or use the judicial exception to effect a particular treatment or transform a particular article to a different state or thing. Recitation of the “processor” indicates that a computer 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.
“The full scope of the claim under the BRI should be considered to determine if the claim reflects an improvement in technology (e.g., the improvement described in the specification).” MPEP 2106.05(a). “That is, the claim must include the components or steps of the invention that provide the improvement described in the specification.” Id.
“[I]n McRO, the court relied on the specification’s explanation of how the particular rules recited in the claim enabled the automation of specific animation tasks that previously could only be performed subjectively by humans, when determining that the claims were directed to improvements in computer animation instead of an abstract idea.” MPEP 2106.05 (a). There is no improvement to a computer or other technology. Unlike McRO, the claimed system invokes a computer as a tool to perform a mathematical concept and/or mental process.
The processor, units, and memory perform the same with or without the claimed abstract idea. Therefore, it is unclear how the abstract idea can improve the standard functions of the additional elements.
Examiner would further like to clarify that the Applicant seems to be misinterpreting the usage of “transformation” by the MPEP. The transformation of an article means that the “article”, which is a physical object or substance, has changed to a different state or thing. Therefore, the claim limitations fail to recite any sort of transformation.
At Pgs. 9-10 of the Reply, Applicant argues that the claim recites significantly more than any alleged abstract idea because “[e]ven assuming that the claim implicates an abstract concept, under MРЕР 2106.05(d) through (h) the additional elements provide significantly more. The cooperation among the imaging device, processor, and display defines a specific technological arrangement that is neither well understood nor routine nor conventional in the field”. Examiner respectfully disagrees. Given their broadest, reasonable interpretations, the additional elements are generic computer components for performing generic computer functions. All generic computers have a processor, with an input and output. The “imaging device” is a camera, which serves as a sensor used for data-gathering. The “display” serves to display information, used for data-outputting. There is nothing special about the sensor (which is equivalent to an input), processor, or display (which is equivalent to an output), as there are no limitations regarding specialized hardware for these structures.
The Court found that the recitation of the computer in the claim amounted to mere instructions to apply the abstract idea on a generic computer. 573 U.S. at 225-26, 110 USPQ2d at 1984. The Supreme Court also discussed this concept in an earlier case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676 (1972), where the claim recited a process for converting binary-coded-decimal (BCD) numerals into pure binary numbers. The Court found that the claimed process had no meaningful practical application except in connection with a computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The claim simply stated a judicial exception (e.g., law of nature or abstract idea) while effectively adding words that "apply it" in a computer. Id. See MPEP 2106.05(f).
Further at Pg. 10 of the Reply, Applicant argues that the Federal Circuit's decision in CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358 (Fed. Cir. 2020) is directly relevant. Examiner respectfully disagrees. Regardless of the analysis of the Federal Circuit decision in CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358 (Fed. Cir. 2020), each case is judged on its own merit. Even applying the same analysis, the currently claimed limitations lack the specificity of those in CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358 (Fed. Cir. 2020). In this case, the computer is simply used as a tool; thus, the claims still recite mental processes/mathematical concepts performed on a computer control system. Furthermore, the Examiner is not asserting that the whole claim is an abstract idea. Rather, the Examiner is arguing that the abstract idea is only coupled with limitations that are insufficient in showing integration into practical application or amounting to significantly more than the abstract idea itself.
Applicant's remarks and amendments with respect to the rejections under 35 U.S.C. 102 and 103 have been fully considered. The rejections are withdrawn in view of the amendment.
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(s) 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(s) is/are:
“imaging device” in Claims 1, 10, and 13: It appears that the corresponding structure is a “camera” as recited in [0015] and [0021] of the Applicant’s Specification
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are 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/these limitation(s) 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(s) to avoid it/them 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(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-2, 4, 6-8, 10, and 13-14 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 “until the specific movement of the subject is counted” in line 20. It is unclear as to whether this limitation means until the specific movement is counted for the first time, or if this limitation is referring to the final count of the specific movement, since the processor is counting the number of times the specific movement appears during the predetermined time period.
Claim 1 recites “the second fatigue level being the first fatigue level accumulated per unit time due to the fatigue posture” in lines 22-23. It is unclear as to what this limitation exactly entails, as it is uncertain as to how the calculation of the “second fatigue level” is completed, and how the “first fatigue level” is involved in the calculation. Further clarification is requested.
Claim 13 recites “until the specific movement of the subject is counted” in line 13. It is unclear as to whether this limitation means until the specific movement is counted for the first time, or if this limitation is referring to the final count of the specific movement, since the processor is counting the number of times the specific movement appears during the predetermined time period.
Claim 13 recites “the second fatigue level being the first fatigue level accumulated per unit time due to the fatigue posture” in lines 15-16. It is unclear as to what this limitation exactly entails, as it is uncertain as to how the calculation of the “second fatigue level” is completed, and how the “first fatigue level” is involved in the calculation. Further clarification is requested.
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 1-2, 4, 6-8, 10, and 13-14 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. Each of Claims 1-2, 4, 6-8, 10, and 13-14 has been analyzed to determine whether it is directed to any judicial exceptions.
Step 1
Claims 1-2, 4, 6-8, and 10 recite a system for estimating fatigue. Thus, the claims are directed to a machine, which is one of the statutory categories of invention.
Claims 13-14 recite a series of steps or acts for estimating fatigue. Thus, the claims are directed to a process, which is one of the statutory categories of invention.
Step 2A, Prong 1
Each of Claims 1-2, 4, 6-8, 10, and 13-14 recites at least one step or instruction for estimating fatigue, which is grouped as a mental process under the 2019 PEG or a certain method of organizing human activity under the 2019 PEG.
Accordingly, each of Claims 1-2, 4, 6-8, 10, and 13-14 recites an abstract idea.
Independent Claim 1 recites:
a storage;
a display;
an imaging device that outputs location information regarding locations of body parts of a subject; and
a processor configured to perform operations comprising:
estimating, based on the location information output from the imaging device in a predetermined time period, a fatigue level of the subject accumulated in the predetermined time period by counting a specific movement that appears in response to fatigue accumulation, and outputting the estimated fatigue level…
…the operations comprise (i) dividing the first fatigue level by duration in which the fatigue posture was kept in the first part period, to calculate a second fatigue level, the second fatigue level being the first fatigue level accumulated per unit time due to the fatigue posture (ii) correcting the fatigue level of the subject using the second fatigue level calculated, and outputting the corrected fatigue level, and (iii) causing the display to display the corrected fatigue level.
Independent Claim 13 recites:
obtaining location information regarding locations of body parts of a subject from an imaging device; and
based on the information obtained, estimating a fatigue level of the subject accumulated in a predetermined time period by counting a specific movement that appears in response to fatigue accumulation in the predetermined time period…
…(i) dividing the first fatigue level by duration in which the fatigue posture was kept in the first part period, to calculate a second fatigue level, the second fatigue level being the first fatigue level accumulated per unit time due to the fatigue posture, and (ii) correcting the fatigue level of the subject using the second fatigue level calculated, and outputting the corrected fatigue level, and (iii) causing a display to display the corrected fatigue level.
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, accumulating, dividing, and correcting recite a mathematical concept (i.e., mathematical relationships, mathematical formulas or equations, and mathematical calculations) and/or 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.
Further, dependent Claims 2, 4, 6-8, 10, and 14 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Accordingly, as indicated above, each of the above-identified claims recites an abstract idea.
Step 2A, Prong 2
The above-identified abstract idea (underlined above) in each of independent Claims 1 and 13 (and their respective dependent Claims) is not integrated into a practical application under 2019 PEG because the additional elements (identified in bold above in independent Claims 1 and 13), either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use. More specifically, the additional elements of: “storage”, “display”, “imaging device”, and “processor” in Claim 1; “server” in Claim 8; “processor”, “imaging device”, and “display” in Claim 13; “non-transitory computer-readable medium” and “computer” in Claim 14 are generically recited computer elements which do not improve the functioning of a computer, or any other technology or technical field. Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Furthermore, the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. For at least these reasons, the abstract idea identified above in independent Claims 1 and 13 (and their respective dependent claims) is not integrated into a practical application under 2019 PEG.
Moreover, the above-identified abstract idea is not integrated into a practical application under 2019 PEG because the claimed method and system merely implements the above-identified abstract idea (e.g., mental process and certain method of organizing human activity) using rules (e.g., computer instructions) executed by a computer. In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claims 1 and 13 (and their respective dependent claims) is not integrated into a practical application under the 2019 PEG.
Accordingly, independent Claims 1 and 13 (and their respective dependent claims) are each directed to an abstract idea under 2019 PEG.
Step 2B
None of Claims 1-2, 4, 6-8, 10, and 13-14 include additional elements that are sufficient to amount to significantly more than the abstract idea for at least the following reasons.
These claims require the additional elements of: “storage”, “display”, “imaging device”, and “processor” in Claim 1; “server” in Claim 8; “processor”, “imaging device”, and “display” in Claim 13; “non-transitory computer-readable medium” and “computer” in Claim 14. The above-identified additional elements are generically claimed computer components which enable the above-identified abstract idea(s) to be conducted by performing the basic functions of automating mental tasks. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
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, data-outputting, and computing, as demonstrated by: the Applicant’s specification (e.g. paragraphs [0019-0038], [0102-0115]) which discloses that the processor(s), data-gathering devices, and data-outputting devices comprise generic computer components that are configured to perform the generic computer functions (e.g. obtaining, storing, outputting, displaying) that are well-understood, routine, and conventional activities previously known to the pertinent industry; the Applicant’s Background in the specification; and non-patent literature cited by the Applicant.
Accordingly, in light of Applicant’s specification, the claimed terms “storage”, “display”, “imaging device”, and “processor” in Claim 1; “server” in Claim 8; “processor”, “imaging device”, and “display” in Claim 13; “non-transitory computer-readable medium” and “computer” in Claim 14 are reasonably construed as generic computing devices. Like SAP America vs Investpic, LLC (Federal Circuit 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available computers, with their already available basic functions, to use as tools in executing the claimed process.
Furthermore, Applicant’s specification does not describe any special programming or algorithms required for the claimed processing devices. This lack of disclosure is acceptable under 35 U.S.C. §112(a) since this hardware performs non-specialized functions known by those of ordinary skill in the computer arts. By omitting any specialized programming or algorithms, Applicant's specification essentially admits that this hardware is conventional and performs well understood, routine and conventional activities in the computer industry or arts. In other words, Applicant’s specification demonstrates the well-understood, routine, conventional nature of the above-identified additional elements because it describes these additional elements 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) (see Berkheimer memo from April 19, 2018, (III)(A)(1) on page 3). Adding hardware that performs “‘well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible (TLI Communications).
The recitation of the above-identified additional limitations in Claims 1-2, 4, 6-8, 10, and 13-14 amounts to mere instructions to implement the abstract idea on a computer. Simply using a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
A claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
For at least the above reasons, the system and method of Claims 1-2, 4, 6-8, 10, and 13-14 are directed to applying an abstract idea as identified above on a general purpose computer without (i) improving the performance of the computer itself, or (ii) providing a technical solution to a problem in a technical field. None of Claims 1-2, 4, 6-8, 10, and 13-14 provides meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself.
Taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claims 1 and 13 (and their dependent claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment. That is, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity. When viewed as a combination, these above-identified additional elements simply instruct the practitioner to implement the claimed functions with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. When viewed as whole, the above-identified additional elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Thus, Claims 1-2, 4, 6-8, 10, and 13-14 merely apply an abstract idea to a computer and do not (i) improve the performance of the computer itself (as in Bascom and Enfish), or (ii) provide a technical solution to a problem in a technical field (as in DDR).
Therefore, none of the Claims 1-2, 4, 6-8, 10, and 13-14 amounts to significantly more than the abstract idea itself. Accordingly, Claims 1-2, 4, 6-8, 10, and 13-14 are not patent eligible and rejected under 35 U.S.C. 101.
Conclusion
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 CHANEL J JHIN whose telephone number is (571) 272-2695. The examiner can normally be reached on Monday-Friday 9:00AM-5:00PM.
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/CHANEL J JHIN/Examiner, Art Unit 3791
/ALEX M VALVIS/Supervisory Patent Examiner, Art Unit 3791
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