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 .
DETAILED ACTION
Response to Amendment
Applicant’s submission of a response was received on 12/1/25.
In the response Applicant amended claim(s) 1, 3, 10-12, 15-18, 20.
Currently, claim(s) 1-20 is/are pending.
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.
In the instant application, claim(s) 1-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
Claim(s) 1-20 is/are drawn to at least one of the four statutory categories of invention (i.e. process, machine, manufacture, or composition).
Step 2A:
However, 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.
For instance, regarding independent claim(s) 1, 12, 17,
Prong 1 analysis:
The limitations of “receiving a request for benchmark data for a fitness evaluation, the request including demographic information for a participant in the fitness evaluation; generate a relative performance value for the participant by comparing the performance data to the benchmark data, automatically presenting a visual indicator of the relative performance value; receiving the performance data for the participant; and updating the benchmark data based on the performance data”, are considered to fall within the mental processes grouping. The recited limitations, as drafted, cover performance of the limitations in the mind but for the recitation of generic computer components. That is, other than reciting one or more processors and a memory, nothing in the claim element precludes the step from practically being performed in the mind.
The limitations of “receiving a request for benchmark data for a fitness evaluation, the request including demographic information for a participant in the fitness evaluation; generate a relative performance value by comparing the performance data to the benchmark data, and to present a visual indicator of the relative performance value; receiving the performance data for the participant; and updating the benchmark data based on the performance data”, are considered to fall within the certain methods of organizing human activity grouping (managing personal behavior). The mere nominal recitation of generic computer elements does not take the claim out of the methods of organizing human activity grouping. Thus, the claim(s) recites an abstract idea.
Furthermore, dependent claims 2-11, 13-16, 18-20 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they are merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Prong 2 analysis:
The above-identified abstract idea is not integrated into a practical application under the 2019 PEG because the additional elements “a computer comprising: a processor; a memory storing instructions, a non-transitory computer-readable storage medium; transmitting the benchmark data to a fitness evaluation application executed on a user computing device, wherein the benchmark data enables the fitness evaluation application to capture performance data for the participant for the fitness evaluation”, are generically recited computer elements that do not improve the functioning of a computer, or any other technology or technical field. Nor do these additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Furthermore, the above-identified generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. For at least these reasons, the abstract idea identified above is not integrated into a practical application under the 2019 PEG.
Moreover, the above-identified abstract idea is not integrated into a practical application under the 2019 PEG because the claimed method and system merely implements the above-identified abstract idea using rules (e.g., computer instructions) executed by a computer. The claimed elements are recited at a high level of generality, and amounts to mere data gathering and data transmission, which is a form of insignificant extra-solution activity. Each of the additional limitations are no more than mere instructions to apply the exception using generic computer components. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. As such, the claim is directed to the abstract idea.
Step 2B:
As discussed with respect to Step 2A Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using generic computer components. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using generic computer components cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Further, in view of Berkheimer, the additional elements are considered as conventional activities. For instance, Owusu teaches the additional elements (Fig 20-22, 25, ¶¶0186, 0191-0193, 0220-0221).
In addition, with regards to the present claims, the courts have recognized the computer functions as well‐understood, routine, and conventional activities when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity.
For instance, regarding claims 1-20, each claim describes physical or software elements that provide a generic environment in which to carry out the abstract idea, which is similar to the conventional activity or as insignificant extra-solution activity of selecting information, based on types of information, for collection, analysis and display in EPG, gathering, receiving and transmitting data in Symantec, TLI, OIP Techs., buySAFE.
Therefore, claim(s) 1-20 is/are therefore not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
The factual inquiries 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.
Claim(s) 1-2, 4, 8, 12, 14, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Owusu (2020/0114204) in view of Canberk et al. (2023/0256297).
Re Claim 1,
Owusu discloses a computer-implemented method (¶¶0002, 0006) comprising:
receiving a request for benchmark data for a fitness evaluation, the request including demographic information for a participant in the fitness evaluation (Fig 20-22, ¶¶0186, 0191-0193; the mobile device receive benchmark data from the server system, the benchmark data provides guidelines for specific categories of people based on demographics);
transmitting the benchmark data to a fitness evaluation application executed on a user computing device, wherein the benchmark data enables the fitness evaluation application to capture performance data for the participant for the fitness evaluation (Fig 20-22, ¶¶0186, 0191-0195; the server system transmits the benchmark data to the user mobile device, wherein the physical fitness assessment mobile programing receives activity data from the exercise device),
receiving the performance data for the participant; and updating the benchmark data based on the performance data (¶¶0191-0195, 0200; mobile device adjusts the benchmark physical activity data based on the historic physical activity data of the user).
Owusu does not explicitly disclose generating a relative performance value by comparing the performance data to the benchmark data, and presenting a visual indicator of the relative performance value.
However, Canberk teaches generating a relative performance value by comparing the performance data to the benchmark data, and presenting a visual indicator of the relative performance value (Fig 7A-8, ¶¶0026, 0116, 0127). Canberk further teaches such a configuration displays real-time feedback about user performance relative to the virtual targets (¶0022). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the teaching of Canberk into the physical fitness assessment of Owusu in order to help improving the performance by displays real-time feedback about user performance relative to the virtual targets.
Re Claim 2,
Owusu discloses the benchmark data includes metrics for a plurality of events included in the fitness evaluation (Fig 21, ¶¶0189-0195).
Re Claim 4,
Owusu discloses the visual indicator is a color scale (¶¶0161, 0163, 0194, 0196).
Re Claims 8, 14,
Owusu discloses the fitness evaluation application is configured to capture the performance data for the participant in response to receiving sensor data from a sensor communicatively coupled to the user computing device (Fig 20, ¶¶0173, 0186).
Re Claims 12, 17,
Claims disclose a computer apparatus and a non-transitory CRM embodied the method of claim 1. See claim 1 for rejection on limitations.
Claim(s) 7, 13, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Owusu (2020/0114204) in view of Canberk et al. (2023/0256297), further in view of Mosak (2019/0340301).
Re Claims 7, 13,
Owusu as modified by Canberk discloses all limitations as set forth above but is silent on manually input receiving from a user of the user computing device. However, Mosak teaches manually input receiving from a user of the user computing device (¶¶0024, 0033). Mosak further teaches certain measured skills such as vertical skills can be recorded manually (¶0022). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the teaching of Mosak into the physical fitness assessment of Owusu as modified by Canberk in order to improve the evaluation of certain measured skills.
Re Claim 19,
Owusu as modified by Canberk discloses all limitations as set forth above but is silent on manually input receiving from a user of the user computing device. See claim 7 for rejection on the limitation.
Response to Arguments
Applicant's arguments filed 12/1/25 have been fully considered but they are not persuasive.
Re 35 U.S.C.§101 Rejection,
Step 2A, Prong One,
Applicant argues that the amended claims are not directed to an abstract idea because the claimed invention provides fair parameters, reduces manual intervention and is appealing to younger audiences. Examiner respectfully disagrees. The argument of fair parameters and is appealing to younger audiences describes desired results for the claimed invention and has not identified any “improved technological result” generated by the identified limitations. Cf. McRO, 837 F.3d at 1316. Furthermore, the idea of adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea (Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363 (Fed. Cir. 2015).
Applicant further argues that “generating and comparing” steps are not mental evaluation because they require mapping of performance data with the benchmark data to generate the relative performance value. Examiner respectfully disagrees. The recited elements can be easily performed by a human trainer in his/her mind. For example, the trainer can observe a user performs an exercise and evaluates the performance by comparing it to an expert’s performance and giving a score value in his/her mind.
Applicant further argues that the claims are not directed to an abstract idea in view of McRo. This argument is not persuasive. For instance, the McRo claims are directed to an improvement in computer-related technology (allowing computers to produce “accurate” and realistic lip synchronization and facial expressions in animated characters). For example, the McRo included limitations such as “…generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules; generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters”. That is, McRo's claims defined a specific way, namely use of particular rules to set morph weights and transitions through phonemes, to solve the problem of producing accurate and realistic lip synchronization and facial expressions in animated characters. Here, in contrast, the present claims merely describe collecting data and comparing data to a benchmark to generate a score. In other words, Applicant’s claimed invention does not provide any improvement in existing computer technology. Similarly, in CardioNet, the claimed invention improves the functioning of a cardiac monitoring device. Here, the recited elements does not improve any function of a particular device.
Step 2A, Prong Two, and Step 2B,
Applicant argues that the amended claims provides a specific technical solution in fitness evaluation of a participant. Examiner respectfully disagrees. As noted above, the identified additional elements do not improve the functioning of a computer, or any other technology or technical field. Nor do these additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Furthermore, the above-identified generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. Similarly, in Step 2B analysis, the amended claims describe instructions to apply an exception using generic computer components cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Therefore, for the reasons as set forth above, the 101 rejection has been maintained.
Re 35 U.S.C. §103 Rejection,
Applicant argues that Canberk fails to teach generating a relative performance value by comparing the performance data to the benchmark data, presenting a visual indicator of the relative performance value, and updating the benchmark data because Canberk’s benchmarks are fixed virtual posture boundaries and updating positions relative to current device motion during runtime. Examiner respectfully disagrees. As discussed above, Owusu teaches adjusting the benchmark physical activity data based on the historic physical activity data of the user, i.e., updating the benchmark data. Further, the recited limitations are claimed broadly, as result, Canberk’s teaching of capturing activity data, comparing to benchmarks and presenting scores or evaluation metrics on a display meets the recited limitations. Therefore, the rejection has been maintained.
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 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 JASON TAHAI YEN whose telephone number is (571)270-1777. The examiner can normally be reached Mon - Fri 7am- 3pm PST.
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, Dmitry Suhol can be reached at 571-272-4430. 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.
/JASON T YEN/Primary Examiner, Art Unit 3715