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 .
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 1-9 and 14-24 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 calls for “detecting, by a first sensor, whether a user falls asleep”; it is unclear how the sensor itself can detect whether a user falls asleep, or if not the sensor, how this detection is performed. There is no indication of what is being sensed or detected by the sensor that might provide a binary indication of sleep/awake, nor is it clear what parameter in general provides an indication of whether a user is asleep without some other aspect of evaluating the data of that parameter in order to reach such a determination. At best it appears the intent may be to obtain data via the first sensor and then somehow evaluate that data to determine whether the data indicates whether the user is asleep/awake, but clarification is required. The same issue is found in claims 14 and 21.
Claim 5 calls for finding a duration from a time of detected sleep to a time of detected awakening and, if this duration exceeds “the duration threshold”, determining “that sleep is the long-time sleep”. As defined in claim 1, the comparison to the duration threshold of a duration for identifying long-time sleep takes place prior to detecting an awakening. It is unclear if this is intended to replace the detection of long-time sleep as defined in claim 1 or if this is an additional option for detecting long-time sleep; further, the most updated quantity of times is used in claim 1 to allow enabling of the second sensor for sensing, which is only enabled when the user is asleep, such that it is not clear how determination of long-time sleep that only takes place after the user is awake could operate to also result in enabling and sensing while the user is asleep. Similar issues are found in claim 18. Clarification is required.
Similarly, claim 6 calls for the same duration detection between sleeping and waking that would result in the method proceeding beyond the step of enabling the second sensor, but then also calls for enabling the second sensor regardless of whether the user wakes up.
Similar issues are found in claim 18. Clarification is required.
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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 101 because the claimed invention, considering all claim elements both individually and in combination as a whole, do not amount to significantly more than a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea).
Claim 1 is a claim to a process, machine, manufacture, or composition of matter and therefore meets one of the categorical limitations of 35 U.S.C. 101. However, claim 1 meets the first prong of the step 2A analysis because it is directed to a/an abstract idea, as evidenced by the claim language of “detecting…whether a user falls asleep”, “identifying…whether a quantity of times…is less than a quantity-of-time threshold”, and “detecting…whether the user wakes up”. This judicial exception is not integrated into a practical application because the determination of whether the sleeping meets various criteria
does not present any improvement to the functioning of a computer or to any other technology, as it is simply an analysis of unspecified data or some other source of information or observation
does not apply or use a judicial exception to effect a particular treatment or as a prophylaxis for a disease or medical condition, as the only “effect” of the judicial exception is non-specific collection of additional data with an unidentified sensor that is not used for any purpose (See MPEP 2106.05(d), where determining the level of a biomarker by any means, Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; Cleveland Clinic Foundation v. True Health Diagnostics, LLC, 859 F.3d 1352, 1362, 123 USPQ2d 1081, 1088 (Fed. Cir. 2017) is held to be well-understood, routine, and conventional)
does not apply the judicial exception with, or by use of, a particular machine, as the method is entirely disembodied
does not effect a transformation or reduction of a particular article to a different state or thing, as the determination has no tangible output
does not apply or use the judicial exception in some other meaningful way, as the only theoretical “use” involves “enabling” of insignificant extrasolution data gathering
As a result, step 2A is satisfied and the second step, step 2B, must be considered.
With regard to the second step, the claim does not appear to recite additional elements that amount to significantly more. The additional elements are “a first sensor,” and “a second sensor”, where this second sensor is “enabled” and “disabled”, however, these elements recited at a high level of generality and are not “significantly more” because nonspecific sensors used for sensing unidentified types of data are well-known, routine, and/or conventional and recited only for the insignificant extrasolution activity of data gathering, as evidenced by See MPEP 2106.05(d), where determining the level of a biomarker by any means, Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; Cleveland Clinic Foundation v. True Health Diagnostics, LLC, 859 F.3d 1352, 1362, 123 USPQ2d 1081, 1088 (Fed. Cir. 2017) is held to be well-understood, routine, and conventional. Particularly in the case of the second sensor the “enabling” and performance of data gathering and subsequent “disabling” after use are merely a well-understood, routine, and conventional procedure of gathering data, particularly as there is no indication of “enabling” or “disabling” involving any unconventional procedures or intervention, or even being recited with any specificity as to what enabling or disabling would comprise such that there is no indication that this involves changing of power states or power saving, where performance of this data gathering is not recited as having any particular purpose or impact on the invention as a whole. Therefore, these elements do not add anything significantly more and thus the claim as a whole does not amount to significantly more than a judicial exception.
Additionally, the ordered combination of elements do not add anything significantly more to the claimed subject matter. Specifically, the ordered combination of elements do not have any function that is not already supplied by each element individually. That is, the whole is not greater than the sum of its parts.
In view of the above, independent claim 1 fails to recite patent-eligible subject matter under 35 U.S.C. 101. Dependent claim(s) 2-9 fail to cure the deficiencies of independent claim 1 by merely reciting additional abstract ideas or further limitations on abstract ideas already recited. Thus, claim(s) 1-9 is/are rejected under 35 U.S.C. 101.
Claims 14-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 14 is a claim to a process, machine, manufacture, or composition of matter and therefore meets one of the categorical limitations of 35 U.S.C. 101. However, claim 14 meets the first prong of the step 2A analysis because it is directed to a/an abstract idea, as evidenced by the claim language of “detect…whether a user falls asleep”, “identify… whether a quantity of times…is less than a quantity-of-time threshold”, “detect…whether the user wakes up”. This judicial exception is not integrated into a practical application because the determination of whether the sleeping meets various criteria
does not present any improvement to the functioning of a computer or to any other technology, as it is simply an analysis of unspecified data or some other source of information or observation
does not apply or use a judicial exception to effect a particular treatment or as a prophylaxis for a disease or medical condition, as the only “effect” of the judicial exception is non-specific collection of additional data with an unidentified sensor that is not used for any purpose (See MPEP 2106.05(d), where determining the level of a biomarker by any means, Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; Cleveland Clinic Foundation v. True Health Diagnostics, LLC, 859 F.3d 1352, 1362, 123 USPQ2d 1081, 1088 (Fed. Cir. 2017) is held to be well-understood, routine, and conventional)
does not apply the judicial exception with, or by use of, a particular machine, as the judicial exception is presented as generic computing steps to be performed by a well-understood, routine, and conventional “processor” that is part of an “electronic device” (see MPEP 2106.05(d), Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims."), showing that these computer functions are well-understood, routine, and conventional functions)
does not effect a transformation or reduction of a particular article to a different state or thing, as the determination has no tangible output
does not apply or use the judicial exception in some other meaningful way, as the only theoretical “use” involves “enabling” of insignificant extrasolution data gathering
As a result, step 2A is satisfied and the second step, step 2B, must be considered.
With regard to the second step, the claim does not appear to recite additional elements that amount to significantly more. The additional elements include “a first sensor,” “a second sensor”, and “a processor”, where this second sensor is “enabled” and “disabled”; however, the sensor elements recited at a high level of generality and are not “significantly more” because nonspecific sensors used for sensing unidentified types of data are well-known, routine, and/or conventional and recited only for the insignificant extrasolution activity of data gathering, as evidenced by See MPEP 2106.05(d), where determining the level of a biomarker by any means, Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; Cleveland Clinic Foundation v. True Health Diagnostics, LLC, 859 F.3d 1352, 1362, 123 USPQ2d 1081, 1088 (Fed. Cir. 2017) is held to be well-understood, routine, and conventional. Particularly in the case of the second sensor the “enabling” and performance of data gathering and subsequent “disabling” after use are merely a well-understood, routine, and conventional procedure of gathering data, particularly as there is no indication of “enabling” or “disabling” involving any unconventional procedures or intervention, or even being recited with any specificity as to what enabling or disabling would comprise such that there is no indication that this involves changing of power states or power saving, where performance of this data gathering is not recited as having any particular purpose or impact on the invention as a whole. The “processor” is also not “significantly more” because these are well-known, routine, and/or conventional as evidenced by Alice v. CLS Bank and Bilksi v. Kappos, which held that generic computer structure does not otherwise transform a patent-ineligible claim into a patent-eligible one. Therefore, these elements do not add significantly more and thus the claim as a whole does not amount to significantly more than a judicial exception.
Additionally, the ordered combination of elements do not add anything significantly more to the claimed subject matter. Specifically, the ordered combination of elements do not have any function that is not already supplied by each element individually. That is, the whole is not greater than the sum of its parts.
In view of the above, independent claim 14 fails to recite patent-eligible subject matter under 35 U.S.C. 101. The dependent claims also fail to provide anything significantly more, as claims 15-19 are also directed to the analysis of data of the judicial exception itself, and claim 20 is directed to the well-understood, routine, and conventional sensor used for the insignificant extrasolution activity of data gathering.
Claims 21-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 21 is a claim to a process, machine, manufacture, or composition of matter and therefore meets one of the categorical limitations of 35 U.S.C. 101. However, claim 21 meets the first prong of the step 2A analysis because it is directed to a/an abstract idea, as evidenced by the claim language of “detect…whether a user falls asleep”, “identify… whether a quantity of times…is less than a quantity-of-time threshold”, “detect…whether the user wakes up”. This judicial exception is not integrated into a practical application because the determination of whether the sleeping meets various criteria
does not present any improvement to the functioning of a computer or to any other technology, as it is simply an analysis of unspecified data or some other source of information or observation
does not apply or use a judicial exception to effect a particular treatment or as a prophylaxis for a disease or medical condition, as the only “effect” of the judicial exception is non-specific collection of additional data with an unidentified sensor that is not used for any purpose (See MPEP 2106.05(d), where determining the level of a biomarker by any means, Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; Cleveland Clinic Foundation v. True Health Diagnostics, LLC, 859 F.3d 1352, 1362, 123 USPQ2d 1081, 1088 (Fed. Cir. 2017) is held to be well-understood, routine, and conventional)
does not apply the judicial exception with, or by use of, a particular machine, as the judicial exception is presented as generic computing steps to be performed by a well-understood, routine, and conventional ”processor” and “electronic device” (see MPEP 2106.05(d), Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims."), showing that these computer functions are well-understood, routine, and conventional functions)
does not effect a transformation or reduction of a particular article to a different state or thing, as the determination has no tangible output
does not apply or use the judicial exception in some other meaningful way, as the only theoretical “use” involves “enabling” of insignificant extrasolution data gathering
As a result, step 2A is satisfied and the second step, step 2B, must be considered.
With regard to the second step, the claim does not appear to recite additional elements that amount to significantly more. The potential additional elements include “a first sensor,” “a second sensor”, and a “storage medium”, “a processor”, and “electronic device”, where the second sensor is “enabled” and “disabled”. However, the recited “first sensor” and “second sensor” are not positively recited as being part of the device and cannot be part of the claimed invention itself, which is directed only to a computer program product and inherently cannot comprise a sensor. Particularly in the case of the second sensor the “enabling” and performance of data gathering and subsequent “disabling” after use are merely a well-understood, routine, and conventional procedure of gathering data, particularly as there is no indication of “enabling” or “disabling” involving any unconventional procedures or intervention, or even being recited with any specificity as to what enabling or disabling would comprise such that there is no indication that this involves changing of power states or power saving, where performance of this data gathering is not recited as having any particular purpose or impact on the invention as a whole. The “storage medium”, “processor”, and “electronic device” are also not “significantly more” because these are well-known, routine, and/or conventional as evidenced by Alice v. CLS Bank and Bilksi v. Kappos, which held that generic computer structure does not otherwise transform a patent-ineligible claim into a patent-eligible one. Therefore, these elements do not add significantly more and thus the claim as a whole does not amount to significantly more than a judicial exception.
Additionally, the ordered combination of elements do not add anything significantly more to the claimed subject matter. Specifically, the ordered combination of elements do not have any function that is not already supplied by each element individually. That is, the whole is not greater than the sum of its parts.
In view of the above, independent claim 21 fails to recite patent-eligible subject matter under 35 U.S.C. 101. The dependent claims also fail to provide anything significantly more, as claims 21-23 are also directed to the analysis of data of the judicial exception itself, and claim 24 is directed to the well-understood, routine, and conventional sensor used for the insignificant extrasolution activity of data gathering.
Response to Arguments
Applicant's arguments filed 24 November 2025 have been fully considered but they are not persuasive.
Regarding the rejections under 112, Applicant asserts that the amendments have resolved all pending issues in the claims; as this is not the case, set forth above, this assertion is moot.
Regarding the rejections under 101, Applicant initially argues that the recited and identified abstract idea cannot be considered to fall into the category of mental processes because the claimed invention also includes “physical detection of sleep and physiological data using sensors and the automatic control of hardware”. This is entirely unpersuasive. As noted above, the sensing of data is insignificant extrasolution activity using entirely nonspecific sensors; further, no “automatic control” of hardware has been recited or defined anywhere in the claims. Still further, claim 1 does not even have any “hardware”, let alone including control of such hardware, and is directed to entirely disembodied analysis of captured data, analogous to a mental process. No part of the actual abstract idea, that is identifying a quantity of occurrences of “long-time” sleep and comparing that quantity to a threshold, is beyond being practically performed in a human mind, as the “electronic sensing and processing of physiological signals” upon which Applicant bases their arguments are not even included in the inventions as claimed beyond the use of the nonspecific second sensor to collect nonspecific “physiological data” that is not used and has no relation to any other part of the claimed invention. It is further not clear what aspect of the invention is considered “processing” beyond the comparison of a quantity to a threshold, such that this argument is entirely unpersuasive.
Applicant further attempts to show that the nonspecific sensors that are used to gather nonspecific data somehow provide “positive, active recitations of tangible hardware elements”; again, at best, a first sensor that has not been identified with any specificity is used for data gathering of an unidentified type of data that is somehow related to sleep, and a second sensor that has also not been identified with any specificity is used for data gathering of an additional unidentified type of data that has no recited purpose. No part of these nonspecific sensors recited at a high (extreme) level of generality is used for anything more than the insignificant extrasolution activity of data gathering.
Applicant further argues that the human mind cannot perform the task of detecting, by a sensor, whether a user falls asleep, and enabling a seconding sensor and collecting data from it; as the act of detecting merely involves analysis of gathered data, and enabling of a sensor merely requires, for example, initiating operating that sensor, no part of this is “beyond” the capabilities of a human mind. The tasks of “enabling” and “disabling” are recited at a high level of generality with no specificity as to what takes place to “enable” or “disable” such that this could equally merely involve taking an additional source of data into consideration. Still further, the independent claims directed to systems clearly set forth that these tasks are merely generic processing steps performed on a nonspecific computing device used to provide a technological environment for these steps, where the mere embodiment of data gathering using a nonspecific processor does not provide anything significantly more to the abstract idea itself, such that this is also not persuasive.
Applicant next attempts to argue that the invention, as a whole, is analogous to an example of an earring with a sensor in MPEP 2106.04(a)(1); it should be noted that that example is directed to a claim as a whole, where the entirety of that claimed invention is the earring with the sensor and no recited use of that sensor or interpretation of data gathered by the sensor is recited beyond an intended use. That example would only be analogous to the invention as claimed if the invention were directed only to a system comprising first and second sensors and a processor, without any positive recitation of the tasks performed by these components. The issue is not that a sensor is included in the invention as claimed, but that an abstract idea is also recited in addition to the presence of a sensor, where the sensor is not sufficiently integrated into the abstract idea itself to provide a practical application or anything significantly more.
Applicant continues in section B of the arguments by arguing that the abstract idea is integrated into a practical application because the use of a sensor to sense and the act of enabling a sensor to sense results in the abstract idea being “integrated into a concrete technological process”, which “cause a transformation of a device’s operating state” – this is not a transformation of a particular article to a different state or thing as the device itself is not changed, nor is a device even recited in all claims. Applicant further refers to theoretical “improvements” of reduced power consumption and optimized data accuracy; it should be noted that it is not clear which specific elements in the invention as claimed provide one or both of these alleged improvements, nor has Applicant met the criteria of showing that this improvement as realized by a particular element in the invention as claimed includes a particular way to achieve a desired outcome, beyond merely claiming the idea of a solution or outcome, and “the burden shifts to applicant to provide persuasive arguments supported by any necessary evidence to demonstrate that one of ordinary skill in the art would understand that the disclosed invention improves technology” (MPEP 2106.05(a)). Further, “a technical explanation as to how to implement the invention should be present in the specification. 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. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art.” Are both of these alleged improvements provided by the same elements? Or are different elements responsible for each of these alleged improvements? Where are these alleged improvements specifically set forth in the disclosure? If “enabling” and “disabling” involve conservation of power it should be clearly presented as such as there is no inherent meaning of either that requires a change in power consumption when they can equally involve making a physical connection to an already operating sensor, or even just opening a window on a display to show data obtained from that sensor, though the concept of conservation of power is generally a desired outcome in all sensing procedures and would not necessarily be considered an improvement without some particular advantage to a particular conservation process. The general assertion of multiple improvements without identifying any particular specificity or showing of how these improvements are realized is entirely unpersuasive.
The claims remain rejected.
Conclusion
No art has been applied against the claims at this time; however, as all the claims are rejected under 112 and 101 they are not presently allowable; the question of prior art will be revisited if applicable upon resolution of the other noted issues.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US 2017/0172521 to Sudo, US 2016/0151603 to Shouldice
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 KAREN E TOTH whose telephone number is (571)272-6824. The examiner can normally be reached Mon - Fri 9a-6p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Robertson can be reached at 571-272-5001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KAREN E TOTH/Examiner, Art Unit 3791