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 .
Response to Amendment
Applicant has amended Claims 6, 7, 13, 14, and 20 thus the rejection of the claims under 35 USC § 2 are withdrawn.
Applicant has amended the claims and argues that with the addition of structural features that the claims cannot be interpreted as no longer an abstract mental process or directed to an interaction between people (Remarks 10, 11 filed 11/12/2025). Examiner disagrees. It is not sufficient not is it the proper test of abstractness under 35 USC § 101. First, the Courts have already opined “[i]t should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014). Second, white the claim may have elements of structure, when recited at a high level of generality they fail to impose significant limitations on the recited invention as constitute mere extra-solution activity where “[t]here does not appear to be any extra-solution activity but for the above devices employe as tools. Even when the limitations are viewed in combination, the additional elements in this claim do no more than automate the steps needed to be performed, using the one of more computer components as tools. While this type of automation is an improvement in a general sense as opposed to performance manually, there is no change to the computers and other technology that are recited in the claim as automating the abstract ideas, and thus this claim cannot improve computer functionality or other technology. See, e.g., Trading Technologies Int’l v. IBG, Inc., 921 F.3d 1084, 1093 (Fed. Cir. 2019) (using a computer to provide a trader with more information to facilitate market trades improved the business process of market trading, but not the computer). Here, as to Claim 1, the amendments create a highly generic computing environment and further reciting use of a well-know sensors to perform mere extra-solution data gathering. The claim also recites that in response to determining that the subject has received the evaluation obtained in the first event which is additional abstract mental processing as determining if a subject has received an evaluation can be observed by a human as an operation performed in the human mind. Similarly, Claim 8 remains ineligible. Claim 15 further specifies a wearable sensor which is also well-known and further represents extra-solution data gathering. New Claim 21 adds additional highly generalized components to the computing environment as well as well-known data classifications stored memory which are extra-solution activity. Thus, for the above reasons the rejection of the Claims under 35 USC § 101 are maintained.
Applicant argues that the art of record fail to teach that the second event of obtaining an evaluation is in response to determining that the subject has received the evaluation obtained in the first event. Examiner disagrees. Kimura in combination with Uchida teaches that an evaluation is a ranking where Kimura displays the first activity to the subject (Fig. 3 display message), so the ranking is displayed {received}. Following this, in response, Kimura discloses executing the second event where as in Fig. 3 S10, the activity moves to a next {second} stage, where a exercise intensity setting unit 24 causes the exercise stage to proceed to the next exercise stage having a higher level of exercise intensity [0052]), the second activity state being an activity state of the subject when the subject is performing a second activity.
Claim Rejections - 35 USC § 101
5. 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.
6. Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
7. Step 1
Claims 1-7 are directed to a method meeting the requirements for Step 1.
Claims 8-20 are directed to an apparatus/system meeting the requirements for Step 1.
8. Step 2A Prong 1
In independent Claim 1 (and similarly for Claims 8 and 15), the following italicized steps recite, in essence, a training session made up of a plurality of activities and evaluations which is abstract managing personal behavior categorized as a certain method of organizing human activity. (See MPEP 2104(a)(2)(II)). Claim 1 recites:
1. An information processing method executed under the control of a computer comprising a hardware processor, the method comprising:
executing a first event of obtaining an evaluation of a first activity state of a subject based on output from a sensor worn on a body of the subject while the subject is performing a first activity;
determining whether the subject has received the evaluation obtained in the first event; and
in response to determining that the subject has received the evaluation obtained in the first event, executing a second event of obtaining an evaluation a second activity state different from the first activity state, the second activity state being an activity state of the subject while the subject is performing a second activity.
According to Applicant, when the activities and respective evaluations are conducted in order, the result is that remaining events are performed with less burden on the body and less injury resulting in lengthened training periods and improved skills related to the activities (Spec. 28). While it is in a different field of endeavor, an example of a claim reciting managing personal behavior is Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 115 USPQ2d 1636 (Fed. Cir. 2015). The patentee in this case claimed methods comprising storing user-selected pre-set limits on spending in a database, and when one of the limits is reached, communicating a notification to the user via a device. 792 F.3d. at 1367, 115 USPQ2d at 1639-40. The Federal Circuit determined that the claims were directed to the abstract idea of “tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting)”, which “is not meaningfully different from the ideas found to be abstract in other cases before the Supreme Court and our court involving methods of organizing human activity.” 792 F.3d. at 1367-68, 115 USPQ2d at 1640. Here, there is a parallel between the Claim 1 and Intellectual Ventures, where the training session includes executing first and second events such as rankings akin to the pre-set limits which are received by the trainee after each activity.
Thus, Claim 1, as drafted, and similarly, Claims 8 and 15, under their broadest reasonable interpretations, covers performance of the limitations according to the abstract idea of managing personal behavior which is a certain method of organizing human activity.
9. Step 2A Prong II
The recited claims fail to recite any elements that provide a practical application.
Applicant's specification does not disclose new ways to collect data, new ways, new ways to communicate data, or new ways to transfer data but discloses only known technologies used in their customary ways. Specifically, Examiner finds in the specification describes a generalized computing environment of a processor executing common processing (Spec. 9) and various arithmetic processing (Spec. 10); memory of known RAM and flash memory (Spec. 9); servers generically described as having “a CPU, a random access memory, a storage unit, a communication unit, a bus, and the like” (Spec. 8); terminal devices which are “devices mainly carried and used by the user and is for example, a smartphone”, see also tablet terminal, notebook PC, desktop PC (Spec. 8); wearable devices of known sensors (Spec. 4), the wearable device may include a plurality of processors executing a plurality of types of processing (Spec. 11) such as known acceleration sensors, gyro sensors, and geomagnetic sensors (Spec. 12); known Bluetooth wireless communication (Spec. 11); activity states evaluated by known pre-determined algorithms (Spec. 17-19); and rankings of users are generated based on the evaluation values of the activity states (Spec. 6). Thus, the elements provide a generic computing environment and serve as tools to carry out the abstract idea.
The limitations of determining whether the subject receives the evaluation in the first event and at least on a condition that it is determined that the subject receives the evaluation in the first event are deemed extra-solution data transmissions. Further, the output from a sensor worn by the subject is extra-solution data gathering. As to Claim 21, storing in memory associations between events is well known extra-solution categorization and the obtaining evaluations of the activities is well-known extra-solution data storage and retrieval.
Even when these limitations are viewed in combination, the additional elements in this claim do no more than automate the abstract data processing steps needed to be performed in using the one of more computer components as tools. While this type of automation is an improvement in a general sense as opposed to performance manually, there is no change to the processors and other technology that are recited in the claim as automating the abstract idea, and thus this claim cannot improve computer functionality or other technology. Thus, Claim 1, and similarly Claims 8 and 15, lack the eligibility requirements of Step 2 Prong II.
10. Step 2B
According to the 2019 PEG, in addition to the considerations discussed in Step 2A, an additional consideration indicative of an inventive concept (aka “significantly more”) is the addition of a specific limitation other than what is well-understood, routine, conventional activity in the field (MPEP 2106.05(d)). Conversely, an additional consideration not indicative of an inventive concept is simply appending well-understood, conventional activities previously known to the industry, specified at a high level of generality, to the abstract idea (MPEP 2106.05(d) and Berkheimer Memo, April 20, 2018). Thus, the additional elements evaluated under Step 2A are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field.
The additional elements of determining whether the subject receives the evaluation in the first event and at least on a condition that it is determined that the subject receives the evaluation in the first event are well-known (See, receiving or transmitting data over a network (MPEP 2106.05(d)(II)(i)); performing repetitive calculations (MPEP 2106.05(d)(II)(ii); storing and retrieving information in memory (MPEP 2106.05(d)(II)(iv)); electronic recordkeeping (MPEP 2106.05(d)(II)(iii) and arranging a hierarchy of groups, sorting information (MPEP 2106.05(d)(II)(vi). Accordingly, a conclusion that the step is well-understood, routine, conventional activity is supported under Berkheimer. Therefore, these limitations remain insignificant extra-solution activity even upon reconsideration, and do not amount to significantly more. Thus, Claim 1, and similarly Claims 8 and 15, are ineligible.
11. Dependent Claims
Claims 2-7 and 21 inherit the same abstract idea as Claim 1.
Claims 9-14 inherit the same abstract idea as Claim 8.
Claims 16-20 inherit the same abstract idea as Claim 15.
In Reference to Claims 2-7, 9-14, and 16-21
Claims 2, 4-7, 9, 11-14, and 16, 18-20 are all directed towards more abstract steps of managing personal behavior and as such cannot supply the practical application or inventive concept sufficient to transform the nature of the claim into a patent-eligible application. Claims 3, 10 and 17 are additional extra-solution sensors used a tool. Claim 21 adds additional highly generalized components to the computing environment as well as well-known data classifications stored memory which are extra-solution activity. Thus, for the above reasons the rejection of the Claims under 35 USC § 101 are maintained.
Claim Rejections - 35 USC § 103
12. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
13. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
14. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
15. Claims 1-21 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. Pub. No. 2018/0345082 to Kimura in view of U.S. Pat. Pub. No. 2016/0035229 to Uchida.
In Reference to Claims 1, 8, and 15
Kimura discloses an information processing system and method (Fig. 3 terminal apparatus 10, processor, program, memory [0129]) causing a computer (Fig. 1 10) to:
execute a first event of obtaining an evaluation (Fig. 2 setting parameters e.g., travel speed) a first activity state of a subject (user [0003]) based on output from a sensor worn on a body of the subject while the subject is performing a first activity (Fig. 2 exercise type of walking at ground level, exercise measurement unit 22 of a pedometer [0021, 0075]);
determining whether the subject has received the evaluation obtained in the first event (Fig. 3 S06 display image of performance compared to pacemaker, [0048]); and
in response, executing a second event for evaluating a second activity state different from the first activity state (Fig. 3 S10 to a next {second} stage, where a exercise intensity setting unit 24 causes the exercise stage to proceed to the next exercise stage having a higher level of exercise intensity [0052]), the second activity state being an activity state of the subject when the subject is performing a second activity (Fig. 2 another exercise activity, see also Fig. 3 based on a threshold of defeat or competitor S08 [0049] and if not, maintain current stage Fig. 3 S14) that it is determined that the subject receives the evaluation in the first event (Fig. 3 S11 display message).
Kimura discloses the invention substantially as claimed. However, the reference does not explicitly disclose activity states or determines if a user receives an evaluation (e.g., a rank) in the first activity. One of skill in the art would be aware of the exercise analysis (Titl.) of Uchida.
Uchida teaches of exercise analysis that includes users wearing sensors and generating a plurality of exercise information pieces during exercising (Abstr.). A running analysis portion 290 outputs information after running ([0356]) of some or all of the exercise information pieces during the user’s running ([0356]) as to running state. The exercise information pieces result from output from an exercise analysis unit 24 based on calculation data and provide advice for improving running attainments or improving the running state ([0356]). For example, “[t]he exercise analysis unit 24 changes an item for determination depending on an advice mode among six types of items such as a running velocity, a running pitch, a stride, vertical movement, left and right deviations, and forward tilt, and generates advice information on the basis of a determination result. (See also, pitch determination [0504], stride [0505], attitude angle [0562]). Further, Uchida provides additional information to include ranking the performance of the exercise running states [0244]. Uchida invents this system and method to improve running attainments of the user ([0205]) after experiencing burdens on the body [0297]).
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way; and
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
Here, it would require only routine skill in the art to modify the exercise types of Kimura and the modify displayed performance of Kimura with the advice mode type and/or activity states and ranking information or Uchida in order to achieve the predictable result of improving a user’s running attainments. The Courts have held that combining prior art elements according to known methods to yield predictable results to be indicia of obviousness.
In Reference to Claims 2, 9, and 16
Kimura discloses that the terminal apparatus 10 selects an exercise for the next stage (Fig. 3 S10) from among a list of exercises (Fig. 2) and a higher level of intensity than the previous exercise (0052]).
In Reference to Claims 3, 10, and 17
Kimura discloses that the device may be a terminal worn on the body to measure exercise activity [0119]. Also, Uchida teaches of inertial sensors worn by a user [0011] to acquire a first {second} activity index data detected by the sensor when the subject is performing the first {second} activity with the sensor worn on a body and Kimura discloses a termina apparatus to evaluate the first {second} activity state based on the acquired first {second} activity index data.
In Reference to Claims 4, 11, and 18
Examiner construes the claim fails to impose a limitation because a recited element and its converse are recited. Nonetheless, Examiner construes regularly broadly as occurring once and capable or being repeated. Kimura discloses that the first event is executed regularly (Fig. 2 Running is evaluated multiple times and irregularly where walking (level ground) is evaluated once.
In Reference to Claims 5, 12, and 19
Kimura discloses a plurality of users (Fig. 3) performing the first {second} activities.
In Reference to Claims 6, 13, and 20
Examiner construes the relationship of a trade-off in light of Applicant’s specification (Spec. 41) wherein the situation is created because a second activity is duplicated following difference first activities. What is called a trade-off or not is a mere label to the use of a second activity more than once.
Kimura in view of Uchid discloses that there is no limit to the number of combinations of first and second exercises and associated activity indexes. Yet, the combination of references do not explicitly disclose combinations with a trade-off relationship.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to combine any number of variables to create combinations demonstrating a trade-off relationship since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. (In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)). (In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a “web” which lies in the joint, and a plurality of “ribs” projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced).
In Reference to Claims 7 and 14
Uchida teaches wherein the first activity state is an activity state representing a burden on the body of the subject due to the certain activity ([0241, 0261, 0297, 0298, 0348-0350]).
In Reference to Claim 21
Kimura discloses an exercise setting table storing in memory (Fig. 2),:
an association between the first event, the first activity state, and a first motion metric (exercise setting table of the type of an exercise {first event}, the travel speed during the exercise (in m/min and km/h) {activity state}, the MET of the exercise and the activity duration (in min) {both are motion metrics} [0037]). This table holds data for each {second} event, activity state, and motion metric and the values are updated [0038]. The first {second} motion metric being different from the first {second} activity state as identified above, and
the method further comprises:
obtaining the evaluation of the first {second} activity state when a motion of a subject satisfies the first {second} motion metric. Examiner construes this as merely a table look up operation. Kimura discloses that an exercise setting unit 30 refers to the exercise setting table to identify exercise parameters associated with Fig. 3 step S01.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Paul A. D’Agostino whose telephone number is (571) 270-1992.
18. 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.
19. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached on (571) 272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-270-2992.
/PAUL A D'AGOSTINO/Primary Examiner, Art Unit 3715