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 .
Applicant’s amendments dated 11/12/25 are hereby entered.
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 1-7, 9-17, and 19-21 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.
Claims 1-7, 9-17, and 19-21 are directed to an abstract idea without significantly more. The claims recite a mental process that can be performed by a human being, and/or claim training/employing a machine learning algorithm in a particular environment.
In regard to Claims 1, 11, and 20-21, the following limitations can be performed as a mental process by a human being in terms of claiming collecting data, analyzing that data, and providing outputs based on that analysis which has been held by the CAFC to be an abstract idea in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential), in terms of the Applicant claiming:
[a] method of predicting hand strength of a participant, comprising:
(a) receiving input data […] captured from performance of a task by the participant, said task comprising generating a drawing of an item on a computer display using a stylus, the input data including: (i) drawing data comprising timestamped X and Y coordinates of points on drawing on the computer display collected at a given rate as the drawing is generated, and (ii) stylus data including tip pressure, altitude, and azimuth of the stylus associated with each of the points;
(b) processing […] the input data to generate derived metrics, wherein processing the input data includes processing and classifying the input data using […] algorithms to identify one or more strokes in the input data;
(c) providing the derived metrics to a pre-trained [mathematical/statistical] model, the pre- trained [mathematical/statistical] model comprising one or more random forest regression or gradient boosting ensemble models to thereby normalize the derived metrics; and
(d) estimating the hand strength of the participant based on the normalized derived metrics.
In regard to Claims 1, 11, and 20-21, Applicant claims training/employing a machine learning algorithm in a particular environment which has held by the CAFC to be abstract in, e.g., Recentive Analytics v. Fox Corp (2023-2437; 4/18/25), in terms of the Applicant claiming employing a pre-trained machine learning model comprising one or more random forest regression or gradient boosting ensemble models.
In regard to the dependent claims, they also claim an abstract idea to the extent that they merely claim further limitations that likewise could be performed as a mental process by a human being, mathematical concepts, and/or claim training/employing a machine learning algorithm in a particular environment.
Furthermore, this judicial exception is not integrated into a practical application because to the extent that additional elements are claimed either alone or in combination such as, e.g., embodying Applicant’s abstract idea as computer code stored on a non-transitory computer readable medium and executed on one or more computing devices in “real time”; a stylus; a computer display; employing computer vision, and/or employing a pre-trained machine learning model comprising one or more random forest regression or gradient boosting ensemble models; these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., data gathering), to embody the abstract idea on a general purpose computer, and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use. In this regard, see MPEP 2106.04(d)(I) in regard to “courts have also identified limitations that did not integrate a judicial exception into a practical application…”
Furthermore, the claims do not include additional elements that taken individually, and also taken as an ordered combination, are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g., embodying Applicant’s abstract idea as computer code stored on a non-transitory computer readable medium and executed on one or more computing devices in “real time”; a stylus; a computer display; employing computer vision, and/or employing a pre-trained machine learning model comprising one or more random forest regression or gradient boosting ensemble models; these are well-understood, routine, and conventional elements and are claimed for the well-understood, routine, and conventional functions of collecting and processing data and/or providing an analysis/outputs based on that processing. To the extent that an apparatus is claimed as an additional element said apparatus fails to qualify as a “particular machine” to the extent that it is claimed generally, merely implements the steps of Applicant’s claimed method, and is claimed merely for purposes of extra-solution activity or field of use. See MPEP 2106.05(b). As evidence that these additional elements are well-understood, routine, and conventional, Applicant’s specification discloses the support for these 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, e.g., F3 in Applicant’s PGPUB and text regarding same; e.g., p16 regarding a stylus; e.g., p35 regarding employing computer vision; and, e.g., employing computer vision, and/or see, e.g., p27 regarding employing a pre-trained machine learning model comprising one or more random forest regression or gradient boosting ensemble models.
Response to Arguments
All of Applicant’s claims have been rejected under 35 USC 101 under the Mayo test as claiming abstract ideas and without claiming “significantly more”. The Mayo test is a legal test and, as such, the question in regard to making such a rejection is what is the most analogous case law in terms of identifying whether an applicant has claimed patent eligible versus ineligible subject matter. To that end, the 101 rejections made supra cite legal authorities in regard to why the Applicant is alleged to have claimed patent ineligible subject matter under the Mayo test.
Applicant argues on page 12 of its Remarks in regard to the 101 rejections:
PNG
media_image1.png
234
664
media_image1.png
Greyscale
Applicant’s argument is not persuasive because numerous of the limitations cited therein (“processor”, “computer vision”, “pre-trained machine learning model”) are not identified in the 101 rejection as being part of the abstract idea alleged to be able to be performed as a mental process. What is more, Applicant’s claims are directed to collecting data (e.g., input data), analyzing that data (e.g., generating metrics from the input data and then providing those metrics to a model to estimate hand strength based on the metrics), and providing an output based on that analysis (e.g., outputting the estimated hand strength), and such subject matter has been identified as that which can practically be performed in the human mind:
In contrast, claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include:
a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016);
MPEP 2106.04(a)(2)(III)(A).
For these reasons, the rejections made under 35 USC 101 are maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee 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 Mike Grant whose telephone number is 571-270-1545. The Examiner can normally be reached on Monday through Friday between 8:00 a.m. and 5:00 p.m., except on the first Friday of each bi-week.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's Supervisory Primary Examiner, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL C GRANT/Primary Examiner, Art Unit 3715