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 .
Response to Amendment
The Amendment filed May 28, 2026 has been entered. Claims 1, 3, 5-6, 9-11, 13-16 and 18-22 remain pending in the application.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claim 1: Claim limitation “an electric resistance value acquisition unit for acquiring an electric resistance value of one or more parts of a body of a person to be measured” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “unit” coupled with functional language “for acquiring” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier that has a known structural meaning before the phrase “unit”.
Claim 1: Claim limitation “a type determination unit for using the electric resistance value to determine a type representing a physical characteristic of the person to be measured from one or more predetermined points of view.” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “unit” coupled with functional language “to determine” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier that has a known structural meaning before the phrase “unit”.
Claim 11: Claim limitation “a body composition calculation unit for using the electric resistance value and an algorithm corresponding to the determined type to calculate a body composition value of the person to be measured” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “unit” coupled with functional language “to calculate” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier that has a known structural meaning before the phrase “unit”. Claims 12-14 recite the same limitations and are interpreted the same.
Claim 16: Claim limitation “a divergence determination unit for comparing a body composition value corresponding to a body shape accepted as a choice from the person to be measured with the calculated body composition value, and determining a divergence from the body shape accepted as a choice.” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “unit” coupled with functional language “for comparing” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier that has a known structural meaning before the phrase “unit”. Claims 17-18 recite the same limitations and are interpreted the same.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
Claim 1: “electric resistance value acquisition unit”, refers to the specification [0029 - 0030]: the measurement device described comprising the electrodes for applying and measuring current/impedance/resistance.
Claim 1: “type determination unit”, refers to the specification [0036]: processor, computer program, storage.
Claim 11 and 13-14: “body composition calculation unit”, refers to the specification [0036]: processor, computer program, storage.
Claim 16 and 18: “divergence determination unit”, refers to the specification [0036]: processor, computer program, storage.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3, 5-6, 9-11, 13-16 and 18-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1 of the subject matter eligibility test (see MPEP 2106.03).
Claim 1 is directed to “a device” which describes one of the four statutory categories of patentable subject matter, i.e. a machine or manufacture.
Claim 20 is directed to “a non-transitory computer readable medium comprising a program causing a computer to function” which describes one of the four statutory categories of patentable subject matter, i.e. a machine or manufacture.
Each of Claims 1, 3, 5-6, 9-11, 13-16 and 18-22 has been analyzed to determine whether it is directed to any judicial exceptions.
Step 2A of the subject matter eligibility test (see MPEP 2106.04).
Prong One:
Claims 1 and 20 recite (“sets forth” or “describes”) the abstract idea of “mathematical concepts” (MPEP 2106.04(a)(2).I.), substantially as follows: “a type determination unit for using the electric resistance value to determine a type representing a physical characteristic of the person to be measured from one or more predetermined points of view, wherein the type determination unit uses the electric resistance value to determine the type independently of whether the type corresponds to an actual physical characteristic of the person to be measured or not, wherein the type determination unit indicates a degree of correspondence indicating how much of the body of the person to be measured corresponds to each of a plurality of types defined for a determination item that is for performing determination on the person to be measured from the one or more predetermined points of view, and wherein the type determination unit determines, as the types, a degree of correspondence of the person to be measured to female and a degree of correspondence of the person to be measured to male.”
In claims 1 and 20, the above recited steps are mathematical concepts, which is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations. The Specification teaches that the electrical resistance value can be used to calculate a type using calculations and formulas. Spec. [0040]. Computing the type encompasses the use of mathematical equations, which has been recognized as an abstract idea (i.e., a mathematical concept). Patent Eligibility Guidance, 84 Fed. Reg. at 52. In sum, we determine that Prong 1 recites a judicial exception, and proceed to Step 2A, Prong 2.
Therefore, each of the above steps are grouped as mathematical concepts, hence an abstract idea.
Claims 1 and 20 recite (“sets forth” or “describes”) the abstract idea of “a mental process” (MPEP 2106.04(a)(2).III.), substantially as follows: “a type determination unit for using the electric resistance value to determine a type representing a physical characteristic of the person to be measured from one or more predetermined points of view, wherein the type determination unit uses the electric resistance value to determine the type independently of whether the type corresponds to an actual physical characteristic of the person to be measured or not, wherein the type determination unit indicates a degree of correspondence indicating how much of the body of the person to be measured corresponds to each of a plurality of types defined for a determination item that is for performing determination on the person to be measured from the one or more predetermined points of view, and wherein the type determination unit determines, as the types, a degree of correspondence of the person to be measured to female and a degree of correspondence of the person to be measured to male.”
In claims 1 and 20, the above recited steps can be practically performed in the human mind, with the aid of a pen and paper or with a generic computer, in a computer environment, or merely using the generic computer as a tool to perform the steps. If a person were to visually examine, i.e., perform an observation, the electrical resistance data, either in a printout or an electronic format, he/she would be able to obtain/ascertain the type via pen and paper. He/she further would be able to assign a type whether it is the real type or not. There is nothing recited in the claim to suggest an undue level of complexity in how the type is identified. A person is fully capable of viewing another person and/or the persons resistance values in printout or electronic form and deciding and assigning a type to that person. Therefore, a person would be able to perform the type determination mentally or with a generic computer.
Prong Two: Claims 1 and 20 do not include additional elements that integrate the mental process into a practical application.
This judicial exception is not integrated into a practical application. In particular, the claims recites (1) “an electric resistance value acquisition unit for acquiring an electric resistance value of one or more parts of a body of a person to be measured”
(2) “one or more processors and one or more computer-readable storage medium having instructions stored thereon (as discussed in the 112f claim interpretation section above)”.
The steps in (1) represent merely data gathering or pre-solution activities that are necessary for use of the recited judicial exception and are recited at a high level of generality with conventionally used tools (see below Step IIB for further details).
The steps in (2) merely recite generic computer components used to implement the abstract idea on, as tools.
As a whole, the additional elements merely serve to gather and feed information to the abstract idea and to output a notification based on the abstract idea, while generically implementing it on conventionally used tools. There is no practical application because the abstract idea is not applied, relied on, or used in a meaningful way. No improvement to the technology is evident, and the estimated type is not outputted in any way such that a practical benefit is realized. Therefore, the additional elements, alone or in combination, do not integrate the abstract idea into a practical application.
Step 2B of the subject matter eligibility test (see MPEP 2106.05).
Claims 1 and 20 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the claims recite additional steps of (1) “an electric resistance value acquisition unit for acquiring an electric resistance value of one or more parts of a body of a person to be measured”
(2) “one or more processors and one or more computer-readable storage medium having instructions stored thereon (as discussed in the 112f claim interpretation section above)”.
These steps represents mere data gathering, data outputting or pre/post/extra-solution activities that are necessary for use of the recited judicial exception and are recited at a high level of generality.
The resistance information is obtained from a body impedance sensor. These additional limitations merely represent insignificant, conventional pre-solution activities well-understood in the industry of vibration based bio-information estimation, as the sensors recited are well understood, routine and conventional, as evidenced by Wachi et al. (US 2021/0369140 A1) (“Wachi”). Wachi discloses the sensors as mapped below in reference to claim 1. Additionally, Koyoma (US 2005/0228449 A1) (“Koyoma”) discloses body impedance sensors as such as well-understood, routine and conventional, see [0013] and [0030].
Accordingly, these additional steps and tools for measuring a resistance value/impedance, and outputting a notification amount to no more than insignificant conventional extra-solution activity. Mere insignificant conventional extra-solution activity cannot provide an inventive concept.
The recited processors and computer-readable storage medium are generic computer elements (i.d. para. [0036] describing generic computers).
Therefore, none of the Claims 1 and 20 amounts to significantly more than the abstract idea itself.
Accordingly, Claims 1 and 20 are not patent eligible and rejected under 35 U.S.C. 101 as being directed to abstract ideas implemented on a generic computer in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. and 2019 PEG.
Dependent Claims
The following dependent claims merely further define the abstract idea and are, therefore, directed to an abstract idea for similar reasons:
Claims 3, 5-6, 9-11, 13-14, 16, 18, 20 and 31-32 recitations further limits the abstract idea above, further defining the type and comparisons merely further defines the mental process or mathematical equations discussed above. Claims 31-32 further recite mathematical algorithms to determine the type.
The following dependent claims merely further describe the extra-solution activities and therefore, do not amount to significantly more than the judicial exception or integrate the abstract idea into a practical application for similar reasons:
Claims 15 and 19 recitations merely recite data transmission to the output device discussed above as extra-solution activity (data output).
Taken alone and in combination, the additional elements do not integrate the judicial exception into a practical application at least because the abstract idea is not applied, relied on, or used in a meaningful way. They also do not add anything significantly more than the abstract idea. Their collective functions merely provide computer/electronic implementation and processing, and no additional elements beyond those of the abstract idea. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. There is no indication that the combination of elements improves the functioning of a computer, output device, improves technology other than the technical field of the claimed invention, etc. Therefore, the claims are rejected as being directed to non-statutory subject matter.
Response to Arguments
Applicant's arguments filed May 28, 2026 have been fully considered but they are not persuasive. With respect to the arguments regarding the 101 rejections, the arguments are not persuasive. As is displayed in the rejection claim 1 consists of data gathering using well-understood, routine and conventional sensors and processing the data to result in a type. There is no improvement to the accuracy or speed of the processors or computer themselves. The claims merely recite the generic electrical resistance sensors and determine an arbitrary type of the person, the type does not need to be real or accurate, as recited. Thus, there is merely a recital of generic sensors acquiring values and a generic computer component manipulating the acquired data to determine what type of a person it is. A person can merely look at an induvial and classify them into a type, or look at electrical resistance values of a person and classify them into a type. There is no output or display claimed, simply an arbitrary classification of a person, that need not be accurate or real. Thus, the arguments are not persuasive. With respect to claims 31 and 32, the claims additionally recite a mathematical concept, and mental process, further defining the abstract idea. Applying weights to a regression equation is reciting the mathematical concept and a person can again perform the calculations via pen or paper or with a generic computer. This is merely further defining the abstract idea.
Taken alone and in combination, the additional elements do not integrate the judicial exception into a practical application at least because the abstract idea is not applied, relied on, or used in a meaningful way. They also do not add anything significantly more than the abstract idea. Their collective functions merely provide computer/electronic implementation and processing, and no additional elements beyond those of the abstract idea. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. There is no indication that the combination of elements improves the functioning of a computer, output device, improves technology other than the technical field of the claimed invention, etc. Therefore, the claims are rejected as being directed to non-statutory subject matter.
Applicant’s arguments, see Remarks section 102 rejections, filed May 28, 2026, with respect to the section 102 rejection have been fully considered and are persuasive. The section 102 rejection has been withdrawn. The art of record fails to disclose, “wherein the type determination unit uses the electric resistance value to determine the type independently of whether the type corresponds to an actual physical characteristic of the person to be measured or not, wherein the type determination unit indicates a degree of correspondence indicating how much of the body of the person to be measured corresponds to each of a plurality of types defined for a determination item that is for performing determination on the person to be measured from the one or more predetermined points of view, and wherein the type determination unit determines, as the types, a degree of correspondence of the person to be measured to female and a degree of correspondence of the person to be measured to male.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH A TOMBERS whose telephone number is (571)272-6851. The examiner can normally be reached on M-TH 7:00-16:00, F 7:00-11:00(Eastern).
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/JOSEPH A TOMBERS/ Examiner, Art Unit 3791
