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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04 March 2026 has been entered.
Status of Claims
In the response filed on 04 March 2026 the following changes have been made: amendments to claims 1, 8, and 15.
Claims 1-3, 5, 8-10, 12, 15-17, and 19 are currently pending and have been examined.
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, 5, 8-10, 12, 15-17, and 19 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
The claim(s) recite(s) subject matter within a statutory category as a machine (claims 1-3 and 5), process (claims 8-10 and 12), and article of manufacture (claims 15-17 and 19).
INDEPENDENT CLAIMS
Step 2A Prong 1
Claim 1 recites steps of
at least one processor; and
one or more memories storing instructions which, when executed by the at least one processor, cause the system to:
receive, at a storage located remote from a person, temporal physiological data recorded over time by a plurality of physiological devices associated with the person and communicated over a communication network to the storage;
aggregate the physiological data recorded by the plurality of physiological devices into a coordinated data set for the person, the coordinated data set stored remote from the person, and including data from the plurality of physiological devices;
receive a request from a requesting device for a physiology-based suspicion indicator for an identity associated with the person which indicates a degree to which the coordinated data set reflects a suspicion regarding the identity associated with the person;
determine, the physiology-based suspicion indicator based on applying a trained machine learning model the coordinated data set, wherein the trained machine learning model is trained based on data specific to the person and is customized to the person, and wherein determining the physiology-based suspicion indicator is performed without acquiring any additional physiological data after receiving the request;
execute the trained machine learning model within the storage isolated from the requesting device, such that an interface for receiving the request is isolated from the coordinated data set and from the trained machine learning model; and
communicate the physiology-based suspicion indicator to the requesting device without communicating any temporal physiological data or patient health information used to determine the physiology-based suspicion indicator, wherein the physiology-based suspicion indicator is usable by the requesting device to determine a course of action for an electronic service relating to the identity.
Claims 8 and 15 recite similar limitations as claim 1 but for the recitation of generic computer components.
These steps for determine a course of action for an electronic service relating to the identity, as drafted, under the broadest reasonable interpretation, includes performance of the limitations in the mind but for the recitation of generic computer components. That is, nothing in the claim precludes the italicized portions from practically being performed in the mind through evaluation, judgement, and forming an opinion on determine a course of action for an electronic service relating to the identity. This could be analogized to collecting information, analyzing it, and displaying certain results of the collection and analysis. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitations in the mind but for the recitation of generic computer components, then it falls within the “Mental Process” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong 2
This judicial exception is not integrated into a practical application. In particular, the additional elements non-italicized portions identified above for claims 1, 8, and 15, do not integrate the abstract idea into a practical application, other than the abstract idea per se, because the additional elements amount to no more than limitations which:
amount to mere instructions to apply an exception (such as recitation of at least one processor; and one or more memories storing instructions which, when executed by the at least one processor, cause the system; at a storage located remote from a person; by a plurality of physiological devices; applying a trained machine learning model; and, execute the trained machine learning model within the storage isolated from the requesting device, such that an interface for receiving the request is isolated from the coordinated data set and from the trained machine learning model amounts to invoking computers as a tool to perform the abstract idea, see MPEP 2106.05(f))
add insignificant extra-solution activity to the abstract idea (such as recitation of receive […] temporal physiological data recorded over time; communicated over a communication network to the storage; the coordinated data set stored remote from the person; receive a request from a requesting device for a physiology-based suspicion indicator for an identity associated with the person; and, after receiving the request amounts to mere data gathering, storage, and output since it does not add meaningful limitations to the receiving, storing, and communicating actions performed, see MPEP 2106.05(g))
Each of the above additional element(s) therefore only amounts to mere instructions to implement functions within the abstract idea using generic computer components or other machines within their ordinary capacity, and also add insignificant extra-solution activity to the abstract idea. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide generic computer implementation. These elements are therefore not sufficient to integrate the abstract idea into a practical application. Therefore, the above claims, as a whole, are directed to an abstract idea.
Step 2B
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to discussion of integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply an exception and add insignificant extra-solution activity. Additionally, the additional limitations, other than the abstract idea per se, amount to no more than limitations which:
amount to mere instructions to apply an exception in particular fields such as recitation of at least one processor; and one or more memories storing instructions which, when executed by the at least one processor, cause the system; at a storage located remote from a person; and, by a plurality of physiological devices; e.g., a commonplace business method or mathematical algorithm being applied on a general-purpose computer, Alice Corp. v. CLS Bank, MPEP 2106.05(f); applying a trained machine learning model; and, execute the trained machine learning model within the storage isolated from the requesting device, such that an interface for receiving the request is isolated from the coordinated data set and from the trained machine learning model, e.g., requiring the use of software to tailor information and provide it to the user on a generic computer, Intellectual Ventures I LLC v. Capital One Bank (USA), MPEP 2106.05(f);
amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields such as recitation of receive […] temporal physiological data recorded over time; receive a request from a requesting device for a physiology-based suspicion indicator for an identity associated with the person; and, after receiving the request, e.g., receiving or transmitting data over a network, Symantec, MPEP 2106.05(d)(II)(i); and, communicated over a communication network to the storage; and, the coordinated data set stored remote from the person, e.g., storing and retrieving information in memory, Versata Dev. Group, MPEP 2106.05(d)(II)(iv).
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide generic computer implementation.
DEPENDENT CLAIMS
Step 2A Prong 1
Dependent claims recite additional subject matter which further narrows or defines the abstract idea embodied in the claims (such as claims 2-3, 5, 9-10, 12, 16-17, and 19 particular aspects for determine a course of action for an electronic service relating to the identity such as
[Claim 2, 9, & 16] wherein coordinated data set is generated prior receiving the
request from the requesting device;
[Claim 3, 10, & 17] wherein the physiology-based suspicion indicator is determined based solely on the coordinated data set stored remote from the person;
[Claim 5, 12, & 19] wherein the temporal physiological data for the person is accessed from among a plurality of stored data for the person, wherein the instructions, when executed by the at least one processor, further cause the system to:
analyze degrees of correlation between the plurality of stored data and a plurality of physiology-based suspicion indicators, and
select the temporal physiological data from among the plurality of stored data based on the degrees of correlation;
these italicized portions covers performance of the limitations in the mind but for recitation of generic computer components since they merely describe types of data and determinations that can be performed by humans).
Step 2A Prong 2
Dependent claims 2-3, 5, 9-10, 12, 16-17 and 19 recite additional subject matter which amount to limitations consistent with the additional elements in the independent claims (the additional limitations in claims 2, 9, & 16 (from the requesting device); and, claim 5, 12, &19 (when executed by the at least one processor); amounts to invoking computers as a tool to perform the abstract idea, see MPEP 2106.05(f)) and, add insignificant extra-solution activity to the abstract idea claims 2, 9, & 16 (receiving the request); and, claims 3, 10, & 17 (stored remote from the person) amounts to mere data gathering and storage since it does not add meaningful limitations to the receiving and storing actions performed, see MPEP 2106.05(g))). Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Step 2B
Dependent claims 2, 5, 9, 12, 16, and 19 recite additional subject matter which, as discussed above with respect to integration of the abstract idea into a practical application, amount to invoking computers as a tool to perform the abstract idea, e.g., a commonplace business method or mathematical algorithm being applied on a general-purpose computer, Alice Corp. v. CLS Bank, MPEP 2106.05(f). Also, see [0050] which provides variations of computing devices, [0061] which discloses examples of user devices, [0062] which provides examples of services to the user devices, and [0106] which provides examples of processors. There is no indication that these additional elements improve the functioning of a computer or improves any other technology. Their collective functions merely provide generic computer implementation. Dependent claims 2, 9, & 16 recites additional subject matter which amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields such as recitation of receiving the reference image set amounts; e.g., receiving or transmitting data over a network, Symantec, MPEP 2106.05(d)(II)(i). Dependent claims 3, 10, & 19 recites additional subject matter which amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields such as recitation of receiving the reference image set amounts, e.g., storing and retrieving information in memory, Versata Dev. Group, MPEP 2106.05(d)(II)(iv).
Therefore, in consideration of all the facts, the present invention is not a patent-eligible invention under USC 101. Additionally, it is evident that the present claims monopolize the judicial exception, restricting further innovation in this area without offering a specific, technical improvement to how the computer actually operates. Using AI tools is generally not enough to transform an abstract idea into patent-eligible subject matter if the core of the invention is still a method of determination; “monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.” Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980 (quoting Myriad, 569 U.S. at 589, 106 USPQ2d at 1978 and Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012)).
Response to Arguments
The arguments filed on 04 March 2026 have been considered, but are not fully persuasive.
Regarding the claim objections, applicant has amended claims 1, 8, & 15. Therefore, the claim objections have been withdrawn.
Regarding the USC 101 rejection, applicant argues on pages 9 to 12 that the amended claim 1 does not recite an abstract. Applicant points to the added limitations to expedite prosecution to withdraw the USC 101 rejection. Pointing to the argued limitations, applicant asserts that amended claim 1 does not recite a mental process under the standards of MPEP 2106.04 because the elements of amended independent claim 1 cannot practically be performed in the human mind. With respect to Step 2A Prong 2, that amended claim 1 includes limitations that integrates the judicial exception into a practical application. With respect to Step 2B, the applicant argues that the addition of the argued limitations make the claim provide significantly more than the judicial exception. That is, that amended independent claim 1 includes additional limitations beyond mere receipt or transmission of data. Applicant requests withdrawal of the USC 101 rejection for claims 1-5, 8-12, and 15-19.
Examiner disagrees with the applicant’s argument. Examiner asserts the current claim amendments do not advance prosecution under USC 101 (as also confirmed by multiple subject matter experts at the USPTO); arguably, the amendments have made the claims worse-off for 101. Examiner points out the claims are still generic and still absent specific details on exactly how the computer is programmed to achieve the results in a non-abstract way. For instance, the present machine learning model claimed is a black box model with no clarity on the actual computer processing or how the computer is programmed to achieve the results in a non-abstract way different from how humans analyze/process data. The MPEP 2106 is clear in that claims can recite a mental process even if they are claimed as being performed on a computer, and here the applicant is still carrying out the abstract idea albeit with the aid of computers/machine learning as tool(s) as further explained below. As MPEP 2106 explains, the courts have found claims requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind. Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1984 (2014). See also OIP Techs. v. Amazon.com, 788 F.3d 1359, 1364, 115 USPQ2d 1090, 1093-94 (Fed. Cir. 2015) ("Just as Diehr could not save the claims in Alice, which were directed to ‘implement[ing] the abstract idea of intermediated settlement on a generic computer’, it cannot save OIP's claims directed to implementing the abstract idea of price optimization on a generic computer.") (citations omitted).
Further analyzing the additional elements under Step 2A Prong 2, examiner asserts that the specification provides a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art. The MPEP provides that improvements to the functioning of a computer or to any other technology or technical field can signal eligibility, see MPEP 2106.05(a), and provides examples of improvements to computer functionality, MPEP 2106.05(a)(I), and improvements to any other technology of technical field, MPEP 2106.05(a)(I). “In computer-related technologies, the examiner should determine whether the claim purports to improve computer capabilities or, instead, invokes computers merely as a tool”. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016). In Enfish, the court evaluated the patent eligibility of claims related to a self-referential database. Id. The court concluded the claims were not directed to an abstract idea, but rather an improvement to computer functionality. Id. It was the specification' s discussion of the prior art and how the invention improved the way the computer stores and retrieves data in memory in combination with the specific data structure recited in the claims that demonstrated eligibility. 822 F.3d at 1339, 118 USPQ2d at 1691. The claim was not simply the addition of general-purpose computers added post-hoc to an abstract idea, but a specific implementation of a solution to a problem in the software arts. 822 F.3d at 1339, 118 USPQ2d at 1691. Unlike Enfish, the instant claimed invention appears to improve upon a judicial exception rather than a problem in the software arts. Rather than improving a computer's algorithm (i.e., solving a technically based problem), the claimed invention purports to solve the non-technological problem of identity checks ([0003] of the specification) through providing a physiology-based suspicion indicator for the identity. The applicant’s main/glaring issue is that specification does not show or describe a deficiency in the technological environment which the computer implemented claims are confined to. Applicant is simply using computers to improve upon the judicial exception.
The examiner asserts the following facts which the applicant has not been able to dispute:
1) the invention does NOT involve a novel algorithm or data structure that significantly improves the computer's functionality,
2) the invention does NOT involve a new hardware component or configuration that works with the computer to achieve a specific technical benefit, and
3) the computer is NOT used in a completely new way demonstrating a significant technical advancement.
Improvement to the abstract idea is not an improvement to computer technology. Thus, examiner does not see how the present claims improve the functioning of a computer or provide improvements to any other technology or technical field. The claimed invention appears similar to the example of improvements that are insufficient to show an improvement in computer-functionality such as arranging transactional information on a graphical user interface in a manner that assists traders in processing information more quickly, Trading Technologies v. IBG LLC, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019). See MPEP 2106.05(a)(I)(viii). The asserted benefits from the applicant’s invention seem to come as a result of the use of general-purpose computers. The broad claims are still lacking concrete limitations to integrate the abstract idea into a practical application. Examiner points out that the claimed limitations have no indication in the specification that the operations recited invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (fed Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). Most importantly, in DDR Holdings & unlike the present claims, the claims at issue specified how interactions with the Internet were manipulated to yield a desired result—a result that overrode the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink. 773 F.3d at 1258; 113 USPQ2d at 1106. The examiner also points out that there is no indication in the specification that the claimed invention affects a transformation or reduction of a particular article to a different state or thing. Examiner points to the recitation of machine learning in the claim(s) as generic. "[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice Corp. v. CLS Banklnt'l, 573 U.S. 208 223 (2014). Applicant does not and cannot contend they invented the concept of machine learning, nor does the specification disclose any new machine learning technique. In fact, the applicant’s specification [0080] recognizes known machine learning models in the art. The alleged improvement of using the machine learning model lies in the abstract idea itself, not to any technological improvement nor to any improvement to the functioning of a computer. See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287-88 (Fed. Cir. 2018). The present claims do not delineate steps through which the machine learning technology achieves an improvement. To show an involvement of a computer assists in improving technology, the claims must recite details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology (MPEP 2106.05(a)(II)). In Finjan, Inc. v. Blue Coat Systems the courts found that the claims were “directed to a non-abstract improvement in computer functionality…” (MPEP 2106.04(d)). The present invention does not meet the condition set forth by the courts and thus does not integrate the judicial exception into a practical application.
With respect to Step 2B, the same “apply it” analysis as well as the well-understood, routine, conventional analysis was performed with NPL & court case citations, which didn’t result in the claim being eligible under USC 101. In comparison to Bascom, examiner points out that Bascom is not similar to the present application because Bascom claimed a technical improvement in the art i.e., a technology-based solution to filter content on the internet while the present application is not presenting an improvement to computer technology (as indicated above). Furthermore, the use of a computer or other machinery in its ordinary capacity for economic or other tasks or simply adding a general-purpose computer or computer components after the fact to an abstract idea does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). The "significantly more" standard has not been satisfied. The applicant has not demonstrated that their invention is in fact inventive; thus, the present invention is not patent-eligible under USC 101. Therefore, the USC 101 rejection is maintained.
Regarding the USC 103 rejection, the applicant’s arguments are persuasive. Therefore, the USC 103 rejection has been withdrawn.
Prior Art Cited but Not Relied Upon
Mohsen, N. R., Ying, B., & Nayak, A. (2019, July). Authentication protocol for real-time wearable medical sensor networks using biometrics and continuous monitoring. In 2019 International Conference on Internet of Things (iThings) and IEEE Green Computing and Communications (GreenCom) and IEEE Cyber, Physical and Social Computing (CPSCom) and IEEE Smart Data (SmartData) (pp. 1199-1206). IEEE.
This reference is relevant because is discloses allowing a user login to the system using his/her fingerprint and verifies patient identity by means of continuous monitoring of physiological data (e.g., ECG signals) in which verification of the patient identity is carried out automatically and at set intervals to detect physical theft of the sensor which may be hooked on to a different patient.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WINSTON FURTADO whose telephone number is (571)272-5349. The examiner can normally be reached Monday-Friday 8:00 AM to 4:00 PM EST.
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/WINSTON R FURTADO/Examiner, Art Unit 3687
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