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.
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 1-27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to judicial exception(s) without significantly more.
[STEP 1] The claim recites at least one step or structure. Thus, the claim is to a process or product, which is one of the statutory categories of invention (Step 1: YES).
[STEP2A PRONG I] The claim(s) 1, 10 and 19 recite(s):
a. inputting data into a non-transitory memory of the computer that is representative of the individual’s demographics, including weight;
b. periodically inputting data into the non-transitory memory of the computer that is representative of the individual’s weight loss in units over a first predetermined time interval;
c. periodically inputting data into the non-transitory memory of the computer that is representative of the individual’s subjective motivation level on a scale graded from lowest motivation to highest motivation level over the first predetermined time interval;
d. calculating data representative of a weight loss slope over a second predetermined interval which is greater than the first-time interval;
e. generating a score representing the individual’s level of engagement in the weight loss program by summing the data representative of the individual’s weight loss in units over a first predetermined time interval, the data representative of the individual’s subjective motivation level on a scale graded from lowest motivation to highest motivation level over the first predetermined time interval, and the data representative of a weight loss slope over a second predetermined interval; and
f. generating in the computer and communicating messages to the patient from the computer on a third interval, wherein the messages are customized to the patient based upon the score representing the individual’s level of engagement.
The non-highlighted aforementioned limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the human mind or by a human using a pen and paper but for the recitation of generic computer components. That is, other than reciting “non-transitory memory of the computer” [claim 1, 10], “processor” [claim 10], “computer” [claim 10] and “a computer program product” [claims 19], “a non-transitory computer readable medium” [claim 19], and “computer code”[claim 19], nothing in the claim element precludes the step from practically being performed between people. For example, but for the recited language, the step in the context of this claim encompasses a doctor or therapist inputting data into a computer, calculating data over a period first time interval, generating a score representing a person and communicating a message to the user.
If a claim limitation, under its broadest reasonable interpretation, covers performance of limitation in the human mind or by a human using a pen and paper but for the recitation of generic computer components, then it falls within the “Mental Process” grouping of abstract ideas.
Accordingly, the claim recites a judicial exception, and the analysis must therefore proceed to Step 2A Prong Two.
[STEP2A PRONG II] This judicial exception is not integrated into a practical application. In particular, the claim only recites the additional element(s) – “non-transitory memory of the computer” [claim 1, 10], “processor” [claim 10], “computer” [claim 10] and “a computer program product” [claims 19], “a non-transitory computer readable medium” [claim 19], and “computer code”[claim 19],
The “non-transitory memory of the computer,” “processor,” “computer”, “prompt generator”, “computer program product” and “non-transitory computer readable medium” in the aforementioned steps are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. A review of the specification shows that these elements are implemented using generic computing element as seen in paragraph 57 and 64 of the applicant’s specification.
Accordingly, the additional element(s) do(es) not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea and the claim is therefore directed to the judicial exception. (Step 2A: YES).
[STEP2B] The claim does 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 element of using a processor to perform the aforementioned steps amounts to no more than mere instructions to apply the exception using a generic computer component, which cannot provide an inventive concept (for example, see paragraph 57 and 64).
As noted previously, the claim as a whole merely describes how to generally “apply” the aforementioned concept in a computer environment. Thus, even when viewed as a whole, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea.
The claim is not patent eligible. (Step 2B: NO).
Claim(s) 2-9, 11-18 and 20-27 are dependent on supra claim(s) and includes all the limitations of the claim(s). Therefore, the dependent claim(s) recite(s) the same abstract idea. The claim recites no additional limitations. Accordingly, the additional element(s) do(es) not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea and the claim is therefore directed to the judicial exception. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Thus, even when viewed as a whole, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea.
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.
Claims 1, 4-5, 8-10, 13-15, 17-19, 22-25 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Masloski US 20130124218, in view of Bulut US 20200193858, in view of Thorson US 20060015016 and further in view of Quan US 20210280078
Claims 1, 10 and 19: The Masloski reference provide a teaching of a computer implemented method of maintaining engagement of an individual in a weight loss program (see abstract), comprising the steps of:
a. inputting data into a non-transitory memory of the computer that is representative of the individual’s demographics, including weight (see paragraph 57 user entering their weight data);
b. periodically inputting data into the non-transitory memory of the computer that is representative of the individual’s weight loss in units over a first predetermined time interval (see paragraph 58 the weight is entered multiple time over the course of 7 days and see also FIG. 2e-2f);
e. generating a score representing the individual’s level of engagement in the weight loss program by summing the data representative of the individual’s weight loss in units over a first predetermined time interval, the data representative of the individual’s subjective motivation level on a scale graded from lowest motivation to highest motivation level over the first predetermined time interval, and the data representative of a weight loss slope over a second predetermined interval (see paragraph 64); and
f. generating in the computer and communicating messages to the patient from the computer on a third interval, wherein the messages are customized to the patient based upon the score representing the individual’s level of engagement (see paragraph 61).
The Masloski reference is silent on the teaching of periodically inputting data into the non-transitory memory of the computer that is representative of the individual’s subjective motivation level on a scale graded from lowest motivation to highest motivation level over the first predetermined time interval.
However, the Bulut reference provides a teaching of periodically inputting data into the non-transitory memory of the computer that is representative of the individual’s subjective motivation level on a scale graded from lowest motivation to highest motivation level over the first predetermined time interval (see paragraph 91).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Masloski reference with the feature of periodically inputting data into the non-transitory memory of the computer that is representative of the individual’s subjective motivation level on a scale graded from lowest motivation to highest motivation level over the first predetermined time interval, in order to better gauge the mental condition of the user (see paragraph 19).
The Masloski reference fails to provide a teaching of the data representative of a weight loss slope over a second predetermined interval and calculating data representative of a weight loss slope over a second predetermined interval which is greater than the first-time interval.
However, the Thorson reference provides a teaching of the data representative of a weight loss slope over a second predetermined interval (see FIG. 7A showing a slope over as second predetermined interval) and calculating data representative of a weight loss slope over a second predetermined interval which is greater than the first-time interval (see paragraph 100).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the with the feature of Thorson reference provides a teaching of the data representative of a weight loss slope over a second predetermined interval and calculating data representative of a weight loss slope over a second predetermined interval which is greater than the first-time interval, in order to provide an intuitive feedback on the progress of the user.
Specifically for claim 10, the Masloski reference provides a teaching of a non-transitory computer readable medium (see paragraph 44) and one processor (see paragraph 43).
The Maloskis reference is silent on the automatically comparing the calculated engagement score with at least two predetermined threshold values and based on the comparison, dynamically escalating or de-escalating live human-coach interaction.
However, the Quan automatically comparing the calculated engagement score with at least two predetermined threshold values and based on the comparison, dynamically escalating or de-escalating live human-coach interaction (see paragraph 129 “functions to efficiently present useful and actionable information to the coaches. Additionally, S240 can function to ensure that a participant in need of coaching (e.g., due to an emergency, due to a high propensity for leaving the program, based on a time since last check-in, etc.) “).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Maloskis reference with the feature of automatically comparing the calculated engagement score with at least two predetermined threshold values and based on the comparison, dynamically escalating or de-escalating live human-coach interaction, as taught the Quan reference, in order to efficiently flag users who are in desperate need of an intervention (see paragraph 123).
Claims 4, 13, 22: The Masloskis reference provides a teaching of the step of transmitting the score representing the individual’s level of engagement into a medical record of the individual (see paragraph 25 data and score being provided to hospitals, clinics and doctor).
Claims 5, 14, 23: The Masloski reference provides a teaching of comprising the step of inputting data into a non-transitory memory of the computer that is representative of the individual’s eating behaviors (see FIG. 2G and paragraph 59 type of food being consumed by the individual).
Claims 6, 15, 24: The Masloski reference provides a teaching of the step of inputting data into a non-transitory memory of the computer that is representative of the individual’s nutrition (see FIG. 2G and paragraph 59 type of food being consumed by the individual).
Claims 8, 17, 25: The Masloski reference is silent on the teaching of inputting data into a non-transitory memory of the computer that is representative of the individual’s sleep patterns.
However, the Bulut reference provides a teaching of inputting data into a non-transitory memory of the computer that is representative of the individual’s sleep patterns (see paragraph 67).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Masloski reference with the feature of inputting data into a non-transitory memory of the computer that is representative of the individual’s sleep patterns, as taught by the Bulut reference, in order to provide the user with messages that can increase the user’s quality of life (see paragraph 86).
Claims 9, 18 and 27: The Masloski reference provide a teaching of inputting data into a non-transitory memory of the computer that is representative of the individual’s physical activity level (see paragraph 58 inputting type activity).
Claims 2, 11, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Masloski US 20130124218, in view of Bulut US 20200193858, in view of Thorson US 20060015016 and further in view of Ueshima WO 2006070827
Claim 2, 11, 20: The Masloski reference is silent on the teaching of wherein the first-time interval is one week, the second time interval is four weeks, and the third interval is daily.
However, the Ueshima reference provides a teaching of wherein the first-time interval is one week, the second time interval is four weeks, and the third interval is daily (see FIG. 9 item 362, 360 and 366 respectively).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Masloski reference with the feature of wherein the first-time interval is one week, the second time interval is four weeks, and the third interval is daily, as taught by the Ueshima reference, in order to provide the user with the ability to see their progress.
Claims 3, 12 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Masloski US 20130124218, in view of Bulut US 20200193858 and further in view of Thorson US 20060015016 and further in view of Douglass US 20060078868
Claims 3, 12, 21: While the combination of Masloskis and provides a teaching of motivation scores
(see Maloskis paragraph 73). They are silent where the scale representative of the individual’s subjective motivation level ranges from 1 to 10 wherein 1 represents the lowest possible motivation and 10 represents the highest possible motivation.
However, the Douglass reference provides a teaching of where the scale representative of the individual’s subjective motivation level ranges from 1 to 10 wherein 1 represents the lowest possible motivation and 10 represents the highest possible motivation (see paragraph 45).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the with the feature of where the scale representative of the individual’s subjective motivation level ranges from 1 to 10 wherein 1 represents the lowest possible motivation and 10 represents the highest possible motivation, as taught by the Douglass reference, in order to provide the user with an intuitive question format.
Claims 7, 16 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Masloski US 20130124218, in view of Bulut US 20200193858, in view of Thorson US 20060015016 and further in view of Quint US 20120191466
Claims 7, 16, 26: The Masloski reference provide a teaching of comprising the step of inputting data into a non-transitory memory of the computer that is representative of the individual’s medications.
However, the Quint reference provides a teaching of comprising the step of inputting data into a non-transitory memory of the computer that is representative of the individual’s medications (see paragraph 65).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Masloski reference with the feature of comprising the step of inputting data into a non-transitory memory of the computer that is representative of the individual’s medications, as taught by the Quint reference, in order to provide a more complete assessment of the user’s medical history that may affect their weight loss goal (see paragraph 118)
Response to Arguments
Applicant's arguments filed 10/15/2025 have been fully considered but they are not persuasive.
The Applicant argued that current claim limitation solves the computer-centered problem of intelligently allocation limited human-coach resources at scale – something that cannot be performed mentally or with pen-and-paper in real-time across thousand of simultaneous user. The Applicant also argued that claim system provides an automated, data-driven control loop that (i) continuously monitors patient progress, (ii) algorithmically quantifies engagement, (iii) automatically allocates human-coach resources and (iv) provide a highly personalized motivational content. The Applicant argued that
The examiner respectfully disagrees. The examiner notes paragraph 62 of the Applicant’s specification shows that goal of the:
“The purpose of the score is to scale the number of coaches/providers needed to keep the patient motivated. The technology permits scaling back on human intervention when they are doing well, and involving more human support when the patient shows signs of struggle and falling off the program. Thus, cost is optimized by minimizing the cost when it is unnecessary, while increasing costs when needed. The technology permits optimization of the cost. Further, when the patient is losing weight, they reverse diseases and can get off or decrease certain weight loss medications. The diseases included in the database when coupled to data associated with the patient's condition permit mediction removal in a more optimized manner.”
The examiners notes that improving the cost of a specific medical treatment/program are not the type of improvement that has been identified by the courts and the MPEP (see MPEP 2106.05(a)). A review of the MPEP appears to show that the court are specific on the type of improvement in a computer setting (e.g.: A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage, DDR Holdings, 773 F.3d at 1258-59, 113 USPQ2d at 1106-07) or improvement in the technical field (e.g.: Particular computerized method of operating a rubber molding press, e.g., a modification of conventional rubber-molding processes to utilize a thermocouple inside the mold to constantly monitor the temperature and thus reduce under- and over-curing problems common in the art, Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 8 and 10 (1981)). The examiner notes that a claims can recite a mental process even if they are claimed as being performed on a computer. In this particular case, the type of improvement shown in the specification appears to be the type of improvement that one can expect when they automate certain processes using a generic computing device. In this case, a computer is used to improve the speed of performing the monitoring, calculation to determine whether to allocate human-coach resources and ultimately reducing the cost of the treatment by not allocating human-coach resource when it is not necessary. The examiner takes the position that this appear to be similar reasoning to Gottschalk v. Benson, where the computer is used for determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures “can be carried out in existing computers long in use, no new machinery being necessary.” 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (see MPEP 2106.04(a)(2). In order to rebut this presumption, the specification must show how the claimed rules enabled the automation of specific tasks that previously could not be automated. 837 F.3d at 1313, 120 USPQ2d at 1101. See MPEP 2106.05(a).
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).
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 ROBERT J UTAMA whose telephone number is (571)272-1676. The examiner can normally be reached 9:00 - 17:30 Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kang Hu can be reached at (571)270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J UTAMA/Primary Examiner, Art Unit 3715