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 .
Election/Restrictions
Newly submitted claim 30 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Claims 16+ and claim 30 are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed are configured to use materially different operations to generate evaluation results and use the evaluation results for different purposes. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 30 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Objections
Claim 22 is objected to because of the following informalities:
Claim 22 refers to “the mutually different training data”; there is no antecedent basis for this limitation in the claim. Claim 16 defines only “a plurality of training data”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16-19, 21, 22, 24-29 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 16 recites “training data comprising a pair of input data, wherein each of two instances of training data in the pair of input data is based on a preliminarily obtained training pulse wave previously obtained from the user, and is based on reference data including biometric information that is associated with the input data”. This is entirely unclear. Does “each of two instances of training data in the pair of input data” mean that each of the pair has two instances? Are the each two instances based on both the preliminarily obtained data and the reference data? Or is one instance based preliminarily obtained data and the other instance is based on the reference data? Does the training data comprise only these two data points/pair of data? Or is the intent to use two sources of data, the data having values over time? How is data obtained “preliminarily”? Is this preliminary in addition to being previous? Or is it preliminary because it is previous data? Further, it is unclear if the intent is to positively recite the act of generating the classification information or merely describing how it was generated and then somehow transferred or otherwise entered into the database from some other source. Clarification is required.
Claim 16 continues by calling for generating a result “comprising a velocity of a pulse wave signal including first biometric information for the first evaluation data”; is this pulse wave signal of which the velocity is found the same pulse wave that the first and second evaluation data are based on? Or is this some other pulse wave from which a signal is obtained? If the same pulse wave, it is unclear how this is evaluated as only data based on a pulse wave is obtained, not a pulse wave signal itself, such that it is unclear how a velocity of that signal might be determined when only data based on the signal is present. Further, it is unclear if the intent is to generate a velocity which includes biometric information, or if the “result” includes both the velocity and also biometric information. Clarification is required.
Claim 16 then calls for generating a second evaluation result which includes second biometric information, where that information “is generated using a different kind of the training data from the first biometric information”. As defined above, the training data is for the purpose of generating the database, where that database appears to be generated using all of its constituent data, such that use of the database to generate the first evaluation result would use all of its input data leaving no “different kind” for generating the second evaluation result. Still further, it is unclear what aspects of the training data are considered “kinds” of data such that one might differentiate among them to use one and not another. Clarification is required.
Claim 16 then recites “wherein the processor is configured to generate the first evaluation result by referring to the first classification information”; there is no antecedent basis for “the first classification information” in the claim, as it defines only “a database that stores classification information”, and it is unclear what part of this information, which is generated but not defined, might be considered “first” information. Similarly, there is no antecedent basis for “the second classification information” for the same reasons.
Further, the claim already defines that the processor is “configured to generate a first evaluation result comprising a velocity of a pulse wave signal including first biometric information for the first evaluation data by referring to the database” – it is unclear if this is an additional refinement of a single generation of the first evaluation result, where both the database and the first classification information are involved, or if this is an alternative generation of a “first” result.
Similarly, the claim then calls for the processor “to generate the second evaluation result by referring to the second classification information without differentiating the pulse wave signal”; the claim already defines the processor being configured to generate the second evaluation result, such that it is again unclear whether this is an additional aspect of that generation or if this refers to some other result. Further, it is unclear whether this refers to the pulse wave from which data is obtained, or the “pulse wave signal” which is involved in one of the instances of generating the first evaluation result. Clarification is required.
Claim 17 defines that the processor is configured to generate “a second evaluation result”; claim 16, from which it depends, already defines two versions of generating a second evaluation result. It is entirely unclear if this additional second evaluation result is one or both of these second evaluation results or if this is yet another second evaluation result (a fifth evaluation result?). Further, even if all of these second evaluation results are the same result, the only aspect of this claim which is not also present in claim 16 appears to be that “the second biometric information is different in kind from the first biometric information” – as the first biometric information is a velocity, per claim 16, and the second biometric information is an acceleration, per claim 16, it appears inherent that these are different “kinds” of information unless some other aspect differentiates different “kinds” of information – clarification is required.
Claim 19 recites that “the processor is configured to obtain the first evaluation data and the second evaluation data”; per claim 16, obtaining the evaluation data is a function of “at least one of a sensor and a connection to the sensor configured to obtain first evaluation data and second evaluation data”, such that it is not clear how or why the processor has replaced the sensor/connection for this purpose. Clarification is required.
Claim 27 defines that the processor is configured to update the classification information based on the determination result, and first and second evaluation results; it is entirely unclear how this could in any way be related to the classification information, as that information is based only on a training pulse wave and reference data including biometric information, and does not include any indication of any other data being involved in generating the classification information. Clarification is required.
Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. See MPEP 2173.06.
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 16-19, 21, 22, 24-29 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Please see the following Subject Matter Eligibility (“SME”) analysis:
For analysis under SME Step 1, the claims herein are directed to a system, which would be classified under one of the listed statutory classifications (SME Step 1=Yes).
For analysis under revised SME Step 2A, Prong 1, independent claim 16 recites a biometric information computing system evaluating biometric information of a user, comprising: a sensor or sensor connection that obtains first evaluation data and second evaluation data based on a pulse wave of the user; a database that stores classification information generated using a plurality of training data, the training data comprising a pair of input data with each data being based on a preliminarily obtained training pulse wave and reference data including biometric information associated with the input data but measured with a device other than the sensor; a processor that generates a first evaluation result including velocity and first biometric information for the first evaluation data by referring to the database, a second evaluation result including second biometric information comprising acceleration, and to generate the first result and the second result by referring to the classification information and not differentiating the pulse wave signal.
The Examiner notes that a database may reasonably encompass a hard-copy (e.g., printed, or manual) database and is therefore included in the abstract idea.
The dependent claims (claims 17-19, 21, 22, 24-29) appear to be encompassed by the abstract idea of the independent claims since they merely indicate generating additional information (claims 17), storing the data (claims 18, 26, 28-29), processing the data (claims 19, 22, 24, 25), obtaining additional data and generating additional information based on the additional data (claim 21)
The underlined portions of the claims are an indication of elements additional to the abstract idea (to be considered below).
The claim elements may be summarized as the idea of obtaining and storing model data to report biometric information; however, the Examiner notes that although this summary of the claims is provided, the analysis regarding subject matter eligibility considers the entirety of the claim elements, both individually and as a whole (or ordered combination). This idea is within the following grouping(s) of subject matter:
Mathematical concepts (e.g., relationships, formulas, equations, and/or calculations) – as based on use of classification information to generate evaluation results, which is a form of performing calculations;
Mental processes (e.g., concepts performed in the human mind such as observation, evaluation, judgment, and/or opinion) as based on the observation and evaluation of pulse waves to generate an evaluation result.
Therefore, the claims are found to be directed to an abstract idea.
For analysis under revised SME Step 2A, Prong 2, the above judicial exception is not integrated into a practical application because the additional elements do not impose a meaningful limit on the judicial exception when evaluated individually and as a combination. The additional elements are that claim 16 recites a computing system and processor as apparently performing the activities. These additional elements do not reflect an improvement in the functioning of a computer or an improvement to other technology or technical field, effect a particular treatment or prophylaxis for a disease or medical condition (there is no medical disease or condition, much less a treatment or prophylaxis for one), implement the judicial exception with, or by using in conjunction with, a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing (there is no transformation/reduction of a physical article), and/or apply or use the judicial exception in some other meaningful way beyond generically linking use of the judicial exception to a particular technological environment.
The claims appear to merely apply the judicial exception, include instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform the abstract idea. The additional elements appear to merely add insignificant extra-solution activity to the judicial exception and/or generally link the use of the judicial exception to a particular technological environment or field of use.
For analysis under SME Step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, as indicated above, are merely “[a]dding the words ‘apply it’ (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp.” that MPEP § 2106.05(I)(A) indicates to be insignificant activity.
There is no indication the Examiner can find in the record regarding any specialized computer hardware or other “inventive” components, but rather, the claims merely indicate computer components which appear to be generic components and therefore do not satisfy an inventive concept that would constitute “significantly more” with respect to eligibility. Paragraph [0056] as filed indicates “The biometric information computing device 1 indicates, for example, an electronic device such as a personal computer (PC), a mobile phone, a smartphone, a tablet terminal, and a wearable device” – i.e., a generic or general-purpose computer.
The recited “sensor or connection to a sensor” which is configured to “obtain” data based on a pulse wave is, at best, a recitation of insignificant extrasolution data gathering, performed using a nonspecific device recited at a high level of generality, also does not add anything significantly more - 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.
The individual elements therefore do not appear to offer any significance beyond the application of the abstract idea itself, and there does not appear to be any additional benefit or significance indicated by the ordered combination, i.e., there does not appear to be any synergy or special import to the claim as a whole other than the application of the idea itself.
The dependent claims, as indicated above, appear encompassed by the abstract idea since they merely limit the idea itself or the computer components performing the abstract idea; therefore the dependent claims do not add significantly more than the idea.
Therefore, SME Step 2B=No, any additional elements, whether taken individually or as an ordered whole in combination, do not amount to significantly more than the abstract idea, including analysis of the dependent claims.
Please see the Subject Matter Eligibility (SME) guidance and instruction materials at https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility, which includes the latest guidance, memoranda, and update(s) for further information.
Response to Arguments
Applicant's arguments filed 16 January 2026 have been fully considered but they are not persuasive.
Regarding the rejections under 112b, the Examiner notes that the amendments, particularly to claim 16 have only made the scope of the claims more indefinite; Applicant’s descriptions of specific features found only in the disclosure and not the claims do not render the claims themselves more clear. As the amendments have not resolved all previous issues and have also presented new issues, the assertion that the amendments have resolved all issues is unpersuasive.
Regarding the rejections under 101, Applicant initially asserts that no mathematical concept is recited in the claims; this is unpersuasive, as evidenced by the numerous recitations of generating evaluation results by using classification information in a database; as defined in the disclosure of the instant invention “The classification information is a function indicating, for example, a correlation between preliminarily obtained past evaluation data (input data) and reference data including biometric information. The classification information indicates a calibration model…”, see paragraph [0046] as filed. This meets the definition of a mathematical concept.
Applicant next argues that the claims do not recite a mental process because the invention could not be performed entirely in a human mind because it would be “impractical” to do so, without identifying what particular step would be impractical, and that “a claim might requiring software or hardware elements that could not be duplicated in the human mind”, again not identifying which particular limitation might meet this criteria. The general allegations that “a claim” might be more than a mental process without actually identifying any limitations in the actual claimed invention that might be more than a mental process is entirely unpersuasive.
Applicant continues by referring to the claims as being “based on obtaining and then evaluating a pulse wave which measures biometric information” – obtaining a pulse wave, as recited herein, is merely insignificant extrasolution data gathering. The “evaluating” of this pulse wave is merely manipulation of data, a mental process. No part of the invention as claimed is analogous to the Office’s example 37, particularly as “obtaining and then evaluating a pulse wave” has no relationship whatsoever to that example directed to “Relocation of Icons on a Graphic User Interface”.
Applicant then asserts that “the pulse wave is a specific detected signal that is external to the human mind that is analyzed in a specific way that cannot be performed in the human mind”; again, the claims are directed to acquiring data and then using a database of correlation information to correlate the acquired data with a “result”, with no specificity whatsoever as the correlation that might render it more complex than looking at a database or table that correlates pieces of data. This argument is entirely unpersuasive.
Applicant next asserts that the invention provides a practical application by discussing various examples of practical applications as found in other examples, but addresses the invention as claimed only to assert that “extracting the second evaluation data without differentiating the pulse wave signal beneficially suppresses false detections of the second evaluation data”. Initially, it should be noted that the claim recites that the second evaluation result is found without differentiation of the signal, not the second evaluation data, such that this argument does not reflect the invention as claimed and is on its merits thus moot. Further, a practical application must be provided by an additional element, not the abstract idea itself, such that even if the argument reflected the claimed invention this would still be unpersuasive.
Applicant continues by, again, discussing Office Guidance examples without making any reference to the invention as claimed regarding step 2B except to assert that “The present systems also make use of sensors to perform unconventional actions in order to yield unconventional results.” even though the only recited use of a sensor, which is only optional and could be replaced by a connector, is to obtain data based on a pulse wave, with no recitation of any unconventional action or disclosure of how this is in any way “unconventional”, such that this general assertion is entirely unpersuasive.
Regarding the art rejections, the Examiner notes that the amendments to the claims have rendered their scope so indefinite that they cannot be treated on the merits at this time; as no art is currently applied Applicant’s remarks will not be further addressed but will be revisited if applicable when the scope of the claims has been improved.
Conclusion
No art has been applied against the claims at this time; however, as all claims are rejected under 112 and 101 they are not presently allowable and the question of prior art will be revisited upon resolution of these other issues.
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.
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/KAREN E TOTH/ Examiner, Art Unit 3791