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 § 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) 1-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Representative claim(s) 1 recites
A computer-implemented method performed via one or more processors, the method comprising:
obtaining, via one or more sensing devices, for each of a plurality of running sessions of a human runner, sensor data indicative of the respective running session;
for each respective running session, determining, based upon the sensor data, values of a variable of interest (VOI) and a predictor variable for a respective plurality of data points over the respective running session;
for each respective running session, modeling a statistical relationship between at least the VOI and the predictor variable;
wherein modeling the statistical relationship includes determining:
a gradient coefficient accounting for elevation changes in the relationship between the VOI and the predictor variable,
a time coefficient accounting for within-session temporal variations in the relationship between the VOI and the predictor variable,
and at least one of a footwear coefficient, a running surface coefficient, or a runner weight coefficient relating the predictor variable to the VOI;
based upon the modeled relationship for each respective running session, identifying a change in the statistical relationship between the VOI and predictor variable over the plurality of running sessions
an generating a biomechanical passport of the runner by:
determining values specific to the runner for the gradient coefficient, the time coefficient, and the at least one of a footwear coefficient, a running surface coefficient, or a runner weight coefficient based upon the modeled statistical relationship for each respective running session,
and identifying the change for the runner from new sensor data.
(abstract portions shown in emphasis)
Step 2A Prong One
The recitation of determining a VOI, modeling a relationship, generating parameter passport, and identifying a change encompasses performance of the limitation in the mind but for the recitation of mere extrasolutionary activity (i.e., mere data gathering and/or nominal output) and/or otherwise nominal and generic computer elements (2019 Patent Eligibility Guidance – hereafter ‘2019 PEG’ - p. 55; see also MPEP § 2106.05(a), (d) and (g)) (e.g., processing ‘units’).
For example, but for the recitation of obtaining/acquiring data and/or generic processing ‘units’ / functional steps to perform abstract limitations, the steps of ‘determining’, ‘modeling’, and ‘identifying’ encompasses a clinician (mentally) reviewing sensor data to (mentally) determine a VOI and a statistical relationship therewith to then (mentally) identify a relevant change in parameters of a subject.
If a claim, under BRI, covers performance of the limitations in the mind but for the mere recitation of extrasolutionary activity (and/or otherwise generic computing elements) then the claim falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea under step 2A prong one of the Mayo framework as set forth in the 2019 PEG.
Step 2A Prong Two
This judicial exception is not integrated into a practical application. Claim 1 only recites additional elements of extrasolutionary activity — in particular, obtaining data via sensing devices — and/or generic computing structures / elements without further sufficient detail that would tie the abstract portions of the claim into a specific practical application (2019 PEG p. 55 - the instant claim, for example, does not tie into a particular machine, a sufficiently particular form of data or signal collection — via the claimed data obtaining, or a sufficiently particular form of display or computing/processing architecture / structure).
Independent claim(s) 11 and 20 encounter the same issues as claim(s) 1 mutatis mutandis.
Dependent claim(s) 4-10 and 14-19 merely add detail to the abstract portions of the claim but do not otherwise encompass any additional elements which tie the claim(s) into a particular application / integration (the dependent claim(s) reciting generic ‘units’ or ‘steps’ which encompass mere computer instructions to carry out an otherwise wholly abstract idea).
Dependent claim(s) 2-3 and 12-13 encounter substantially the same issues as the independent claim(s) from which they depend in that they encompass further generic extrasolutionary activity (generic data gathering and nominal display) and/or generic computing elements (storage, memory per se).
Accordingly, the claim(s) are not integrated into a practical application under step 2A prong two.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of extrasolutionary activity (data gathering and display outputting) and generic computing elements cannot amount to significantly more than an abstract idea.
For the independent claim portions and dependent claims which provide additional elements of extrasolutionary data gathering, MPEP § 2106.05(g) establishes that mere data gathering for determining a result does not amount to significantly more:
2106.05(g) Insignificant Extra-Solution Activity
Another consideration when determining whether a claim integrates the judicial exception into a practical application in Step 2A Prong Two or recites significantly more in Step 2B is whether the additional elements add more than insignificant extra-solution activity to the judicial exception. The term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity includes both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent. An example of post-solution activity is an element that is not integrated into the claim as a whole, e.g., a printer that is used to output a report of fraudulent transactions, which is recited in a claim to a computer programmed to analyze and manipulate information about credit card transactions in order to detect whether the transactions were fraudulent.
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). In Flook, the Court reasoned that "[t]he notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula". 437 U.S. at 590; 198 USPQ at 197; Id. (holding that step of adjusting an alarm limit variable to a figure computed according to a mathematical formula was "post-solution activity"). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 79, 101 USPQ2d 1961, 1968 (2012) (additional element of measuring metabolites of a drug administered to a patient was insignificant extra-solution activity).
Examiners should carefully consider each claim on its own merits, as well as evaluate all other relevant considerations, before making a determination of whether an element (or combination of elements) is insignificant extra-solution activity. In particular, evaluation of the particular machine and particular transformation considerations (see MPEP § 2106.05(b) and (c), respectively), the well-understood, routine, conventional consideration (see MPEP § 2106.05(d)), and the field of use and technological environment consideration (see MPEP § 2106.05(h)) may assist examiners in making a determination of whether an element (or combination of elements) is insignificant extra-solution activity. Note, however, that examiners should not evaluate the well-understood, routine, conventional consideration in the Step 2A Prong Two analysis, because that consideration is only evaluated in Step 2B.
This consideration is similar to factors used in past Office guidance (for example, the now superseded Bilski and Mayo analyses) that were described as mere data gathering in conjunction with a law of nature or abstract idea. When determining whether an additional element is insignificant extra-solution activity, examiners may consider the following:
(1) Whether the extra-solution limitation is well known. See Bilski v. Kappos, 561 U.S. 593, 611-12, 95 USPQ2d 1001, 1010 (2010) (well-known random analysis techniques to establish the inputs of an equation were token extra-solution activity); Flook, 437 U.S. at 593-95, 198 USPQ at 197 (a formula would not be patentable by only indicating that is could be usefully applied to existing surveying techniques); Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328-29, 121 USPQ2d 1928, 1937 (Fed. Cir. 2017) (the use of a well-known XML tag to form an index was deemed token extra-solution activity). Because this overlaps with the well-understood, routine, conventional consideration, it should not be considered in the Step 2A Prong Two extra-solution activity analysis.
(2) Whether the limitation is significant (i.e. it imposes meaningful limits on the claim such that it is not nominally or tangentially related to the invention). See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16, 112 USPQ2d 1750, 1755 (Fed. Cir. 2014) (restricting public access to media was found to be insignificant extra-solution activity); Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242, 120 USPQ2d 1844, 1855 (Fed. Cir. 2016) (in patents regarding electronic menus, features related to types of ordering were found to be insignificant extra-solution activity). This is considered in Step 2A Prong Two and Step 2B.
(3) Whether the limitation amounts to necessary data gathering and outputting, (i.e., all uses of the recited judicial exception require such data gathering or data output). See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (presenting offers and gathering statistics amounted to mere data gathering). This is considered in Step 2A Prong Two and Step 2B.
Below are examples of activities that the courts have found to be insignificant extra-solution activity:
Mere Data Gathering:
i. Performing clinical tests on individuals to obtain input for an equation, In re Grams, 888 F.2d 835, 839-40; 12 USPQ2d 1824, 1827-28 (Fed. Cir. 1989);
Some cases have identified insignificant computer implementation as an example of insignificant extra-solution activity. See e.g., Fort Props., Inc. v. Am. Master Lease LLC, 671 F.3d 1317, 1323-24, 101 USPQ2d 1785, 1789-90 (Fed. Cir. 2012); Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1280-81, 103 USPQ2d 1425, 1434-35 (Fed. Cir. 2012). Other cases have considered these types of limitations as mere instructions to apply a judicial exception. See MPEP § 2106.05(f) for more information about insignificant computer implementation.
For claim limitations that add insignificant extra-solution activity to the judicial exception (e.g., mere data gathering in conjunction with a law of nature or abstract idea), examiners should explain in an eligibility rejection why they do not meaningfully limit the claim. For example, an examiner could explain that adding a final step of storing data to a process that only recites computing the area of a space (a mathematical relationship) does not add a meaningful limitation to the process of computing the area. For more information on formulating a subject matter eligibility rejection, see MPEP § 2106.07(a).
The extrasolutionary activity/step(s) of obtaining sensor data via generic wearables as presently recited, cannot provide an inventive concept which amounts to significantly more than the recited abstract idea.
For the independent claims as well as the dependent claims merely reciting generic computer elements and activity (memory/storage, processing units), MPEP § 2106.05(d)(II) establishes computer-based elements which are considered to be well-understood, routine, and conventional when recited at a high level of generality
II. ELEMENTS THAT THE COURTS HAVE RECOGNIZED AS WELL-UNDERSTOOD, ROUTINE, CONVENTIONAL ACTIVITY IN PARTICULAR FIELDS
Because examiners should rely on what the courts have recognized, or those of ordinary skill in the art would recognize, as elements that describe well‐understood, routine activities, the following section provides examples of elements that have been recognized by the courts as well-understood, routine, conventional activity in particular fields. It should be noted, however, that many of these examples failed to satisfy other considerations (e.g., because they were recited at a high level of generality and thus were mere instructions to apply an exception, or were insignificant extra-solution activity). Thus, examiners should carefully analyze additional elements in a claim with respect to all relevant Step 2B considerations, including this consideration, before making a conclusion as to whether they amount to an inventive concept.
The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity.
i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added));
ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); 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.");
iii. Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93;
v. Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition); and
vi. A Web browser’s back and forward button functionality, Internet Patent Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015).
Accordingly, the computer elements, as presently limited, cannot provide an inventive concept since they fall under a generic structure and/or function that does not add a meaningful additional feature to the judicial exception(s) of the claim(s). The claim(s) are not patent eligible under step 2B.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Examiner notes: for brevity, economy, and clarity of reading, select of the claims are addressed jointly herein when instances of limitations with verbatim or near-verbatim similarity are recited in the body of differently numbered claims and/or when multiple different limitations are clearly addressed by a same/similar citation to/within a reference.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hirakawa (US 20240408446 A1).
For claim(s) 1, 11, and 20, Hirakawa teaches
a computer method, system, and medium [entire disclosure – see at least abstract]
obtaining, via one or more sensing devices, [14] for each of a plurality of running sessions of a human runner, sensor data indicative of the respective running session; [abstract]
for each respective running session, determining, based upon the sensor data, values of a variable of interest (VOI) and a predictor variable for a respective plurality of data points over the respective running session; [motion parameter (i.e., motion VOI and motion predictor) determination and optimization is/are central inventive feature(s) detailed throughout the majority (if not the entirety) of the disclosure of Hirakawa — see at least ¶¶47-61 et seq.]
for each respective running session, modeling a statistical relationship between at least the VOI and the predictor variable; [regression throughout ¶¶47-60 et seq.]
wherein modeling the statistical relationship includes determining:
a time coefficient accounting for within-session temporal variations in the relationship between the VOI and the predictor variable, [¶¶79-81]
and at least one of a footwear coefficient, a running surface coefficient, or a runner weight coefficient relating the predictor variable to the VOI; [¶66]
based upon the modeled relationship for each respective running session, identifying a change in the statistical relationship between the VOI and predictor variable over the plurality of running sessions [¶¶60-66 et seq.]
an generating a biomechanical passport of the runner by:
determining values specific to the runner for the time coefficient and the at least one of a footwear coefficient, a running surface coefficient, or a runner weight coefficient based upon the modeled statistical relationship for each respective running session, and identifying the change for the runner from new sensor data. [Fig(s). 2 and Fig(s). 5-9 ¶¶67-68 ¶¶71-75 ¶82]
Hirakawa fails to teach the modeling including determining a gradient coefficient accounting for elevation changes between the VOI and the predictor variable.
Majava teaches a running evaluation system [abstract] comprising modeling of a running session including modeling a statistical relationship between variables including determining a gradient variable to then identify a running performance therefrom. [¶49]
It would have been obvious to one of ordinary skill at the time the invention was filed to modify the running modeling and subsequent passport generation of Hirakawa to incorporate the gradient determination of Majava in order to more accurately determine the running efficiency and performance of the user. As motivated by Majava ¶¶3-6 and ¶49.
For claim(s) 2 and 12, Hirakawa teaches
wherein the one or more sensing devices include a smart watch. [Fig. 1]
For claim(s) 3 and 13, Hirakawa teaches
wherein the one or more sensing devices include an accelerometer or gyroscope. [9 axis sensor ¶31 (i.e., an IMU)]
For claim(s) 4 and 14, Hirakawa teaches
wherein the VOI is one of a stride length of the runner, a heart rate of the runner, a spring-mass parameter of the runner, or a running speed of the runner. [¶32]
For claim(s) 5 and 15, Hirakawa teaches
wherein the predictor variable is one of a running speed of the runner, a stride length of the runner, a heart rate of the runner, or a spring-mass parameter of the runner. [¶¶61-65]
For claim(s) 6 and 16, Hirakawa teaches
wherein modeling the statistical relationship includes generating a general linear model of the relationship between the VOI and the predictor. [Fig. 5]
For claim(s) 10 and 19, Hirakawa teaches
generating, based upon the modeled relationship for each respective running session, a profile of the relationship between the VOI and predictor, the profile being specific to the runner; [¶32]
obtaining values of the VOI and predictor for an additional running session; [¶66]
modeling the relationship between the VOI and the predictor for the additional running session; [¶66]
and comparing the model for the additional running session to the model for the plurality of running sessions to determine at least one of (1) a change in health status or a risk of injury to the runner in the additional running session, (2) an improvement or deterioration in performance by the runner during the additional running session compared to the plurality of running sessions, or (3) that the model for the additional running session falls within a range defined by the model of the plurality of running sessions. [accumulated data for regression and analysis in ¶¶47-67]
Response to Arguments
Applicant's 1/21/26 arguments with respect to § 101 have been fully considered but they are not persuasive.
Applicant argues in remarks p. 10-11 that a clinician could not perform the abstract portions of the claim(s) mentally. Examiner respectfully disagrees. The claim(s) do not limit a speed or size of calculation that is beyond what is performable mentally — only that a series of modeling steps be performed. Applicant then argues a similar position regarding the generation of a biomechanical ‘passport’ of modeled statistical relationships. However, as with the other abstract language, Examiner respectfully submits that the claim(s) neither limit a size or speed of the ‘biomechanical passport’ that puts it beyond the realm of a mental process.
Applicant argues in remarks p. 11-13 that the claim(s) are eligible under steps 2A prong two and 2B in that the recited modeling improves an analysis and understanding of a user’s performance. However, MPEP § 2106.05(a)(II) establishes
“[I]t is important to keep in mind that an improvement in the abstract idea itself…is not an improvement in technology.”
Applicant’s arguments with respect to the prior art have been considered but are moot because the arguments do not apply to the new combination of references being used in the current rejection.
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).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN S MELHUS whose telephone number is (571)272-5342. The examiner can normally be reached Monday - Friday | 9:00 AM - 5:00 PM.
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/BENJAMIN S MELHUS/ Primary Examiner, Art Unit 3791
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