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 .
Status of Claims
Claims 1-2, 5, 9-12, 15, and 19-20 have been amended in the response filed January 6, 2026.
Claims 1-20 are pending.
Claims 1-20 are rejected.
Detailed rejections begin on page 3.
Indication of Subject Matter Overcoming the Prior Art begins on page 11.
Response to Arguments begins on page 14.
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. The claims recite an abstract idea. This judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The steps for determining eligibility under 35 U.S.C. 101 can be found in the MPEP § 2106.03-2106.05.
Under Step 1, the claims are directed to statutory categories. Specifically, the method, as claimed in claims 1-10, is directed to a process. Additionally, the system, as claimed in claims 11-20, is directed to a machine.
While the claims fall within statutory categories, under Step 2A, Prong 1, the claimed invention recites the abstract idea of product customization. Specifically, representative claim 1 recites the abstract idea of:
obtaining a plurality of readings;
identifying at least one customization criterion for the user;
determining a plurality of biomechanical contributing factor values for the user based on the readings;
determining a cost value based on at least one difference between the plurality of biomechanical contributing factor values and a plurality of preferred biomechanical contributing factor values;
optimizing a footwear article design by adjusting at least one characteristic of the test footwear article to minimize the cost value;
identifying a custom footwear article design as the footwear article design corresponding to a minimum cost value; and
wherein the at least one customization criterion comprises a specified customization metric, and the specified customization metric is one of an injury risk metric, a performance level metric, and a discomfort level metric;
wherein the plurality of preferred biomechanical contributing factor values are defined based on an analysis to determine a value of the specified customization metric, wherein the analysis identifies the preferred biomechanical contributing factor values as those biomechanical contributing factor values that contribute to a desired metric value of the specified customization metric;
wherein training data includes training readings obtained from a plurality of training users performing one or more specified activities, wherein the plurality of users are associated with different metric values of the specified customization metric; and
wherein the training data comprises training user anthropometric data and training user wellness data for the plurality of training users.
Under Step 2A, Prong 1, it is necessary to evaluate whether the claim recites a judicial exception by referring to subject matter groupings articulated in the guidance. When considering MPEP §2106.04(a), the claims recite an abstract idea. For example, representative claim 1 recites the abstract idea of product customization, as noted above. This concept is considered to be a certain method of organizing human activity. Certain methods of organizing human activity are defined in the MPEP as including “fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).” MPEP §2106.04(a)(2) subsection II. In this case, the abstract idea recited in representative claim 1 is a certain method of organizing human activity because identifying a custom footwear article design as the footwear article design corresponding to a minimum cost value is a sales activity. Thus, representative claim 1 recites an abstract idea.
The recited limitations of representative claim 1 also recite an abstract idea because they are considered to be mental processes. As described in the MPEP, mental processes are “concepts performed in the human mind (including an observation, evaluation, judgment, opinion)”. MPEP §2106.04(a)(2) subsection III. In this case, obtaining a plurality of readings; identifying at least one customization criterion for the user; identifying a custom footwear article design as the footwear article design corresponding to a minimum cost value, wherein the at least one customization criterion comprises a specified customization metric, and the specified customization metric is one of an injury risk metric, a performance level metric, and a discomfort level metric are types of observation. Additionally, determining a plurality of biomechanical contributing factor values for the user based on the sensor readings; optimizing a footwear article design by adjusting at least one characteristic of the test footwear article to minimize the cost value; wherein the plurality of preferred biomechanical contributing factor values are defined based on an analysis to determine a value of the specified customization metric, wherein the analysis identifies the preferred biomechanical contributing factor values as those biomechanical contributing factor values that contribute to a desired metric value of the specified customization metric; wherein training data includes training readings obtained from a plurality of training users performing one or more specified activities, wherein the plurality of users are associated with different metric values of the specified customization metric; wherein the training data comprises training user anthropometric data and training user wellness data for the plurality of training users are types of judgement. Furthermore, determining a cost value based on at least one difference between the plurality of biomechanical contributing factor values and a plurality of preferred biomechanical contributing factor values is a type of evaluation. Thus, representative claim 1 recites an abstract idea.
Under Step 2A, Prong 2, if it is determined that the claims recite a judicial exception, it is then necessary to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of that exception. See MPEP §2106.04(d). In this case, representative claim 1 includes additional elements such as a plurality of sensor readings, a corresponding plurality of sensors provided in a wearable device, and while the wearable device is worn by a user while also wearing a test footwear article; manufacturing the custom footwear article using the custom footwear article design; and a machine learning model trained, wherein the machine learning model is trained using training data that includes training sensor readings.
Although reciting additional elements, the additional elements do not integrate the abstract idea into a practical application because they merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. Similar to the limitations of Alice, representative claim 1 merely recites a commonplace business method (i.e., product customization) being applied on a general purpose computer. See MPEP §§2106.04(d) and 2106.05(f). Thus, the claimed additional elements are merely generic elements and the implementation of the elements merely amounts to no more than an instruction to apply the abstract idea using a generic computer. Since the additional elements merely include instructions to implement the abstract idea on a generic computer or merely use a generic computer as a tool to perform an abstract idea, the abstract idea has not been integrated into a practical application. As such, representative claim 1 is directed to an abstract idea.
Under Step 2B, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). See MPEP §2106.05.
In this case, as noted above, the additional elements recited in independent claim 1 are recited and described in a generic manner merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Even when considered as an ordered combination, the additional elements of representative claim 1 do not add anything that is not already present when they considered individually. In Alice, the court considered the additional elements “as an ordered combination,” and determined that “the computer components ... ‘ad[d] nothing ... that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014). (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Also see MPEP §2106.05(f). Similarly, when viewed as a whole, representative claim 1 simply conveys the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B, there are no meaningful limitations in representative claim 1 that transforms the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
As such, representative claim 1 is ineligible.
Dependent claims 2-10 do not aid in the eligibility of independent claim 1. For example, claims 2-3 and 10 merely further define the abstract limitations of claim 1. Also, claims 4-9 merely provide further embellishments of the abstract limitations recited in independent claim 1.
Additionally, it is noted that claims 2-4 and 7-10 do not include further additional elements not previously recited. Therefore, the claims do not integrate the abstract idea into a practical application because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea. The claims also do not amount to significantly more than the abstract idea because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Furthermore, it is noted that claim 5 includes further additional elements of finite element analysis; and claim 6 includes further additional elements of wherein the plurality of sensors comprises one or more of a force-sensing element and an inertial measurement unit. However, these additional elements do not integrate the abstract idea into a practical application because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea. These additional elements are merely generic elements and are likewise described in a generic manner in Applicant’s specification. Additionally, the additional elements do not amount to significantly more because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Thus, dependent claims 2-10 are also ineligible.
Lastly, the analysis above applies to all statutory categories of invention. Although literally invoking a machine, claims 11-20 remain only broadly and generally defined, with the claimed functionality of claims 11-19 paralleling that of claims 1 and 3-9. It is noted that claim 11 includes additional elements of a system for creating a custom footwear article design comprising: a plurality of sensors mountable to a user, while the user is also wearing a test footwear article; a memory; and one or more processors. However, these additional elements do not integrate the abstract idea into a practical application because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea. These additional elements are merely generic elements and are likewise described in a generic manner in Applicant’s specification. Additionally, the additional elements do not amount to significantly more because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea. As such, claims 11-19 are rejected for at least similar rationale as discussed above.
Furthermore, it is noted that claim 20 includes further additional elements of wherein the custom footwear article is an insole and the manufacturing process is at least one of an additive manufacturing process, a subtractive manufacturing process, a casting process, and a fabrication process. However, these additional elements do not integrate the abstract idea into a practical application because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea. These additional elements are merely generic elements and are likewise described in a generic manner in Applicant’s specification. Additionally, the additional elements do not amount to significantly more because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea. Therefore, claim 20 is also rejected.
Subject Matter Overcoming Prior Art
Claims 1-20 overcome the prior art. The following is an examiner’s statement of reasons for indicating subject matter overcoming the prior art:
Claims 1-20 overcome the prior art due to the combination of features. Specifically, obtaining sensor readings from a wearable device and determining a customized footwear design that minimizes cost in combination with a machine learning model that is trained using anthropometric and wellness data to predict a specific customization value is novel and non-obvious over the cited prior art. The cited prior art utilizes each of these features, but the cited prior art fails to obviously teach this claimed combination of elements.
The most relevant prior art includes Marks (US 9648926 B2, herein referred to as Marks), DiBenedetto et. al. (US 20160180440 A1, herein referred to as DiBenedetto), Lee et. al. (US 20240403509 A1, herein referred to as Lee), Bright et. al. (US 8762292 B2, herein referred to as Bright), and Eom et. al. (2021 NPL, herein referred to as Eom).
Marks discloses a footwear recommendation method and system that scans a 3D representation of a user’s foot, including the length, arch, and width (Marks: [Col. 1, ln. 47-53]; [Col. 12, ln. 42-48]). The method and system use that representation to find shoe designs that are an appropriate match for the user based on their additional preferences, including tightness or price (Marks: [Col. 1, ln. 56-59]; [Col. 11, ln. 16-20]). The user’s tightness and price preferences can be weighted to find their ideal shoe design (Marks: [Col. 5, ln. 53-54]). The recommended designs can be sent to a manufacturer, who can employ 3D printing or additive manufacturing to manufacture the shoe (Marks: [Col. 7, ln. 35-41]).
Marks does not disclose obtaining a plurality of sensor readings from a corresponding plurality of sensors while the wearable device is worn by a user while also wearing a test footwear article, nor optimizing a footwear article design by adjusting at least one characteristic of the test footwear article. Marks also does not disclose utilizing a trained machine learning model, user training data, or user wellness data.
DiBenedetto discloses a footwear recommendation method and system that obtains user gait information, such as speed or angle, during a user activity, from sensors that can be embedded in the sole of a shoe (DiBenedetto: [0047], [0078]). Other sensors can also be attached to the user and obtain other user information during the activity, including temperature or heart rate (DiBenedetto: [0127]-[0128]). The design of the shoe can be adjusted by calibrating the sensors to a variety of use conditions, such as different movement speeds, sports, or weather conditions (DiBenedetto: [0235]). The manufacturer or retailer can also receive information from the user about prior injuries and track injuries and performance metrics while using the shoe (DiBenedetto: [0253], [0304]). However, DiBenedetto does not disclose utilizing a trained machine learning model to determine a specific customization value, nor training the machine learning model using the user’s gait or wellness data. DiBenedetto also does not disclose manufacturing the shoe.
Lee discloses a product sensing system that utilizes finite element analysis to analyze the pressure of the product on a user’s body, and developing a customized product therefrom (Lee: [0053]). The system can be adjusted based on iterative feedback from the user (Lee: [0050]). However, Lee does not disclose utilizing a trained machine learning model, user training data, or user wellness data. Lee also does not disclose manufacturing the shoe nor determining a cost value of the shoe.
Bright discloses a product customization system that implements a trained machine learning model to analyze a user’s aesthetic preferences and body size information and make apparel recommendations based on whether a product will fit the user’s body and aesthetic preferences (Bright: [Col. 3, ln. 48-51]; [Col. 5, ln. 58-66]). The model is trained on data from real-world fit tests that evaluate the fit based on the dimensions of the individual and the item in various settings (Bright: [Col. 9, ln. 46-52]; [Col. 10, ln. 63-65]). The designs can be sent to a manufacturer for creation (Bright: [Col. 19, ln 36-42]). Bright does not disclose determining a specific customization value for an activity, nor training the machine learning model using the user’s training or wellness data.
Eom discloses a wearable sensor system integrated into shoes (Eom at 1-2). The system can measure gait and step count via pressure, accelerometer gyroscope sensors, and then predict energy expenditure and heart rate using a neural network (Eom at 2-4). The neural network was trained using leave-one-subject-out cross-validation training methods (Eom at 10). Eom does not disclose optimizing a footwear article design by adjusting at least one characteristic of the test footwear article. Eom also does not disclose utilizing a trained machine learning model to determine a specific customization value of the shoe, manufacturing the shoe, nor determining a cost value of the shoe.
Although individually the references teach the individual claimed features, none of the cited references anticipate or render obvious the combination of features. While these references arguably may teach the claimed limitations using a piecemeal analysis, these references would only be combined and deemed obvious based on knowledge gleaned from the applicant's disclosure. Such a reconstruction is improper (i.e., hindsight reasoning). See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Accordingly, claims 1-20 taken as a whole, are indicated to overcome the cited prior art. The Examiner emphasizes that it is the interrelationship of the limitations that overcomes the prior art/additional art.
Therefore, it is hereby asserted by the Examiner that, in light of the above and in further deliberation over all the evidence at hand, that the claims overcome the prior art as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in art.
Response to Arguments
With respect to the rejections under 35 U.S.C. 101, Applicant’s arguments have been considered but are not persuasive. However, in view of the amendments, new grounds of rejection have been applied. These new grounds of rejection have been necessitated by Applicant’s amendments.
With respect to page 11 of the Remarks, Applicant argues “amended claim 1 addresses the concrete use case of creating a custom footwear article, and as such is not directed to an abstract idea.” However, Examiner respectfully disagrees.
As explained in the MPEP at § 2106.04(a), key concepts were extracted and synthesized in order to identify groupings of abstract ideas. One of those groupings was “certain methods of organizing human activity,” which is defined to include “fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions),” which can include certain activity between a person and a computer.
The claims recite certain methods of organizing human activity because the claim recites determining a cost value based on at least one difference between the plurality of biomechanical contributing factor values and a plurality of preferred biomechanical contributing factor values; optimizing a footwear article design by adjusting at least one characteristic of the test footwear article to minimize the cost value; and identifying a custom footwear article design as the footwear article design corresponding to a minimum cost value. These claim features are sales activities. “Sales activities” is a broad phrase that encompasses activities that are related to sales, which includes any steps taken to move customers through a sales process. Identifying a custom article footwear design corresponding to a minimum cost value is moving a customer through a sales process of buying a customized shoe. Therefore, the claims recite certain methods of organizing human activity.
Another abstract idea grouping is “mental processes,” which is defined to include limitations that can practically be performed in the human mind or with a physical aid, including, for example, observations, evaluations, judgments, and opinions. The MPEP at § 2106.04(a)(2), section III(c) explains that a claim that requires a computer may still recite a mental process. If the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept, then the claim is considered to recite a mental process. The only claims that do not recite mental processes are claims that “do not contain limitations that can practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations.” See MPEP at § 2106.04(a)(2), section III(a).
In this case, the claims recite a mental process because the claim recites observations, evaluations, and judgements. Absent the additional elements, a human can practically obtain data, make determinations, and make identifications with or without a physical aid. Thus, the additional elements recited are merely used to perform the abstract idea in a technological environment. While the claims do recite additional elements such as manufacturing the custom footwear, the recitation of these additional elements in each independent claim are generic and are merely being used as a tool to implement the abstract idea of creating custom footwear. Therefore, the claims recite a mental process.
Examiner notes that the claims reciting abstract ideas does not in it of itself make the claims ineligible; rather, Steps 2A Prong 2 and 2B of the 2019 Subject Matter Patent Eligibility Guidance determine whether the claims reciting the abstract idea are eligible or ineligible.
Applicant also argues on pages 11-12 of the Remarks “[t]he amended claim is directed to a concrete solution for users who require a footwear article tuned to at least a user-specific customization criterion, such as metrics for reducing injury risk, improving performance, and/or reducing discomfort. This solution for creating a custom footwear article embodies measurable changes to physical construction, anchoring the claimed method and system in a specific, practical application that confers a real-world technological benefit.” However, Examiner respectfully disagrees.
The MPEP at §§ 2106.04(d)1 and 2106.05(a) provides guidance on how to evaluate whether claims recite an improvement in the functioning of a computer or an improvement to other technology or technical field. For example, the MPEP states “the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.” The MPEP further states that “[t]he specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art,” and that, “conversely, if the specification explicitly sets forth an improvement but in a conclusory manner…the examiner should not determine the claim improves technology.” That is, the claim includes the components or steps of the invention that provide the improvement described in the specification.
Looking to the specification is a standard that the courts have employed when analyzing claims as it relates to improvements in technology. For example, in McRO, the claimed improvement, as confirmed by the originally filed specification, was “…allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters…’” and it was “…the incorporation of the claimed rules, not the use of the computer, that “improved [the] existing technological process” by allowing the automation of further tasks.” McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016).
In this case, Applicant’s claims do not recite an improvement to the functioning of a computer or other technology. Rather, the claims focus “on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Id. citing Enfish at 1327, 1336. This is reflected in paragraphs [0067] and [0082] of Applicant’s specification, which describe Applicant’s claimed invention is directed toward solving abstract problems such as designing custom footwear. Although the claims include additional elements such as manufacturing, such elements are merely peripherally incorporated in order to implement the abstract idea because the claims do not reflect how the manufacturing process is implementing the data analysis in a technological way. This is unlike the improvements recognized by the courts in cases such as McRO.
Unlike McRO, the claims of the instant invention do not identify such a specific improvement to computer or manufacturing capabilities. The instant claims are not directed to improving “the existing technological process” but are directed to improving the commercial and mental task of designing custom footwear for purchase. The claimed process is not providing any improvement to another technology or technical field as the claimed process is not, for example, improving the processor and/or computer components that operate the system. Rather, the claimed process is utilizing different data while employing generic components to improve designing custom footwear for purchase, e.g. commercial and mental process. As such, the claims do not recite specific technological improvements, and the rejection is maintained.
With respect to the rejections under 35 U.S.C. 103, Applicant’s arguments have been considered and are persuasive in view of the amendments. Therefore, the rejection under 35 U.S.C. 103 is hereby withdrawn.
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.
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/KATHERINE A BARLOW/Examiner, Art Unit 3689
/VICTORIA E. FRUNZI/Primary Examiner, Art Unit 3689 2/2/2026