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 Arguments
Applicant's amendments and arguments filed 6/22/2026 with respect to the rejections under 35 U.S.C. § 103 are persuasive. Remarks filed 6/22/2026, pp. 14-15 with respect to the teachings of Hoffman and Blackadar and the motivation to combine are persuasive. The totality of teachings of Hoffman, Blackadar, and Sazonov are not sufficient to teach, suggest, or make obvious the combination of features including the claimed body worn device, second device, interactions between body worn and second device for receiving/obtaining data, and interactions with an additional user using data from the body worn and second devices.
With respect to the Double Patenting rejections, new grounds for rejection are presented in view of the Sazonov reference, previously cited.
With respect to the rejections under 35 U.S.C. § 101, the Remarks filed 6/22/2026 have been considered but are unpersuasive.
Applicant firstly alleges that the claims do not recite a mental process because a human mind is not equipped to perform claim limitations such as “comparing data received from the body worn device to a plurality of signal templates” and “selecting, from the plurality of signal templates and based on a result of the comparing, a best-match signal template,” and describes this limitation as requiring computational processing that cannot practically be performed in the human mind.
This is not persuasive as a PHOSITA is capable of comparing a signal to multiple signal templates and determining a best fit via visual observation and judgment or decision-making. Applicant has not recited any particular matching standard (such as a statistical analysis or other steps), or any data resolution or length, or time-frame which would render the computational processing outside the realm of practical performance by the human mind. On p. 11, Applicant further alleges that the structural elements such as a body worn device and a second device, generating and transmitting sensor data wirelessly, are elements that require computer implementation and therefore cannot be considered a mental process or abstract idea.
This is unpersuasive because although the structural elements are nominally computer elements, courts have held that a general purpose computer added post-hoc to an abstract idea does not render claims eligible (in contrast to “requiring computer implementation” by comprising specific implementation(s) of a solution to a problem in the software arts). “Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 223-24, 110 USPQ2d 1976, 1983-84 (2014).” See MPEP § 2106. The alleged elements requiring computer implementation appear to be generic computer components to perform generic computer functions added to the mental process recited.
On pp. 11-12, Applicant alleges that the identified mental process is integrated into a practical application because the claimed process is directed to a practical purpose: the claimed energy expenditure calculations using signal template matching, the determination that two users are participating in a common athletic activity, and the stationarity analysis based on data from a second device are all tied to the practical application of managing athletic activity sessions across multiple devices-including automatically pausing a session based on cross-device data analysis and a determination that the first user has remained stationary.
This is not found persuasive, because the Examiner's position is that the additional elements claimed are only nominally tied to the recited abstract idea. The recited additional elements are either providing functions prior to the execution of the abstract idea (such as data collection via sensors) or providing functions after the execution of the abstract idea (such as output or display). None of the elements alone or in combination are integrated with the abstract idea as recited. The analysis steps that Applicant alleges are tied to the practical application are all specifically the steps identified as the abstract idea and are not integrated with any such additional elements claimed for the reasons above.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more.
This analysis in view of 35 U.S.C. § 101 is based on MPEP § 2106, please see
this section of the MPEP for additional information.
First, the broadest reasonable interpretation of the claim as a whole is
established:
Claim 1, and similarly in claims 8 and 15, is directed to a device/method/computer readable medium comprising a body worn sensor, processor, display device, and memory, configured to calculate energy expenditure values using the body worn device in two time periods, determining that two users are participating in common athletic activity based on energy expenditure values and locational data, and transmitting a request to one of the users, for joining an athletic activity group including both users, and obtaining data from a second device for determining a user has stopped their activity to pause a timer.
Claims 2-3, 9-10, and 16-17 specify that the body worn device is a sensor.
Claims 4-7, 11-14, and 18-20 add additional calculation and display steps.
Step 1 of the analysis is the question: “Is the claim to a process, machine,
manufacture, or composition of matter?” and the answer is determined to be yes, as the
claims as a whole are directed to a machine/process.
For Step 2, the preliminary question is whether the eligibility of the claim is self-
evident. The answer is determined to be no, as the claim is not immediately self-evident
as statutory.
Step 2A Prong One: Is the claim directed to a law of nature, a natural phenomenon (product of nature) or an abstract idea?
A claim is directed to a judicial exception when a law of nature, a natural
phenomenon, or an abstract idea is recited (i.e., set forth or described) in the claim.
While the terms “set forth” and “describe” are thus both equated with “recite”, their
different language is intended to indicate that there are different ways in which an
exception can be recited in a claim. For instance, the claims in Diehr set forth a
mathematical equation in the repetitively calculating step, the claims in Mayo set forth
laws of nature in the wherein clause, meaning that the claims in those cases contained
discrete claim language that was identifiable as a judicial exception. The claims in Alice
Corp., however, described the concept of intermediated settlement without ever explicitly using the words “intermediated” or “settlement.”
Claim 1, and similarly in claims 8 and 15, recites the following limitations:
automatically initiating an energy expenditure accumulator configured to calculate energy expenditure values for a first user…during a first predetermined duration of time
initiating a session for the first user based on data received from the body worn device
comparing data received from the body worn device to a plurality of signal templates;
selecting, from the plurality of signal templates and based on a result of the comparing, a best-match signal template;
calculating, using the best-match signal template, energy expenditure values for a first non-predetermined duration of time, in which the first non-predetermined duration of time is within the first predetermined duration of time
determining that first user and a second user are participating in a common athletic activity based upon energy expenditure values of the first user and received energy expenditure value of the second user, and locational data indicating that the first user and the second user are within a predetermined distance of one another
determining, based on an analysis of the additional data received from the second device associated with the first user, that the first user has remained stationary
responsive to determining, based on the additional data received from the second device associated with the first user, that the first user has remained stationary, pausing the session of the first user
Each of the claim elements above comprises an explicit claim recitation of an abstract idea. Therefore, rather than merely involve a judicial exception, the claims are directed to the identified judicial exception.
This claim language is identified as an abstract idea, because in MPEP §
2106.04(a)(2) III B. this language is similar to concepts relating to organizing or
analyzing information in a way that can be performed mentally or are analogous to
human mental work. For example, Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 120 USPQ2d 1473 (Fed. Cir. 2016). In Synopsys, the patentee claimed methods
of logic circuit design, comprising converting a functional description of a level sensitive
latch into a hardware component description of the latch. 839 F.3d at 1140; 120 USPQ2d at 1475. Although the patentee argued that the claims were intended to be
used in conjunction with computer-based design tools, the claims did not include any
limitations requiring computer implementation of the methods and thus do not involve
the use of a computer in any way. 839 F.3d at 1145; 120 USPQ2d at 1478-79. The
court therefore concluded that the claims “read on an individual performing the claimed
steps mentally or with pencil and paper,” and were directed to a mental process of
“translating a functional description of a logic circuit into a hardware component
description of the logic circuit.” 839 F.3d at 1149-50; 120 USPQ2d at 1482-83.
In the instant case, the identified abstract idea is similar to Synopsys because the
language reads on an individual performing the claimed activity tracking, initiation, pausing, and social workout initiation mentally. They do not require any computer implementation beyond the recitation of a general purpose computer, or using the computer as a tool to perform the function and therefore are directed to a mental process of finding a workout group or partner based on similar exercise intensity levels and proximity. They rely specifically on automating an individual’s mental process which relies on observation, evaluation, judgment, and/or opinion.
Yes. The claim is directed to an abstract idea.
Step 2A Prong Two: Does the claim recite additional elements that integrate the judicial exception into a practical application?
First, the additional elements are identified (Noted, if a claim is not listed here, it is determined to not contain any additional elements beside specifying the abstract idea as already identified, above):
Claim 1: processor, display device, computer readable medium, body worn device, wireless transmission/transmitter, second device associated with the first user.
Claims 2-3, 9-10, 16-17: sensor
Claim 8: body worn device, transmitter
Claim 11, 18: display
Claim 15: processor, memory, transmitter, body worn device
In the case of the wireless transmission/transmitter, display device, computer readable medium, memory, and processor these elements appear to describe a general purpose computer, added post-hoc to an abstract idea rather than an improvement to computer functionality, and do not qualify as a particular machine.
The acquisition of sensor data, and body worn device/second device broadly recited, appear to be insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea such as a step of obtaining information about credit card transactions so that the information can be analyzed by an abstract mental process, as discussed in CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (see MPEP § 2106.05(g)). The sensor/body worn device, and second device appears to only nominally tie the abstract idea to a technical field. The second device is further not claimed as sensing or comprising a sensor, thereby only serving to transmit any broadly recited additional data.
Step 2B: Does the claim recite additional elements that amount to significantly
more than the judicial exception?
In the case of the transmission, display device, computer readable medium, memory, and processor these elements appear to describe a general purpose computer, added post-hoc to an abstract idea rather than an improvement to computer functionality, and do not qualify as a particular machine.
The acquisition of sensor data, and body worn device/second device broadly recited, appear to be insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea such as a step of obtaining information about credit card transactions so that the information can be analyzed by an abstract mental process, as discussed in CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (see MPEP § 2106.05(g)). The sensor/body worn device, and second device appears to only nominally tie the abstract idea to a technical field. The second device is further not claimed as sensing or comprising a sensor, thereby only serving to transmit any broadly recited additional data.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20/1-15/1-20 of U.S. Patent Nos. 10,216,985, 10,803,305, and 11,581,081 in view of Sazonov et al. (U.S. Patent Application Publication No. 2011/0054359) hereinafter referred to as Sazonov.
Although the claims at issue are not identical, they are not patentably distinct from each other because the earlier patented claims are narrower than the instant claims and therefore anticipate the instant claims and are subject to nonstatutory double patenting.
Furthermore, attention is drawn to the Sazonov reference, which teaches wireless transmission. It would have been obvious to one of ordinary skill in the art at the time of filing to modify the invention of claims 1-20/1-15/1-20 of U.S. Patent Nos. 10,216,985, 10,803,305, and 11,581,081 to include wireless transmission, as taught by Sazonov, because the disclosed wireless protocols may be low-power consumption protocols that preserve the battery life of the battery of the device (Sazonov ¶[0047]).
Conclusion
The prior art made of record and not relied upon is considered remaining pertinent to applicant's disclosure.
U.S. Patent Application Publication No. 2011/0082007 to Birrell et al. teaches a community based exercise gamification algorithm.
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 AMANDA L STEINBERG whose telephone number is (303)297-4783. The examiner can normally be reached Mon-Fri 8-4.
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/AMANDA L STEINBERG/ Examiner, Art Unit 3792
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