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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 13, 2026 has been entered.
Response to Arguments
I. Claim Rejections under 35 U.S.C. § 101
Applicant’s remarks concerning the § 101 rejections have been fully considered but are not persuasive.
Applicant first argues that the claims here do not recite an abstract idea because the claims recite a process that allegedly could not practically be performed by the human mind or with pen and paper. To support this, Applicant points to numeric values from the specification, specifically “540 coordinate regions mapped to 50 clusters, operating on big data with nearly 100 million records.” This argument is not persuasive primarily because it relies on features which are not claimed. The claims do not require that number of coordinate regions, that number of clusters, or that many records, and thus the argument is moot. However, even if such numbers were claimed, Applicant has not explained why the steps couldn’t be carried out on pen and paper, since even extremely large data sets can be analyzed and processed manually on paper. Applicant also merely alleges that the “scale and specificity” of claimed steps such as “dividing BMI into stages, subdividing PBF into regions within each stage …” is not practically performed mentally or with pen and paper, but does not explain why.
Applicant next argues that the claims provide improvements to a technology, namely body composition analysis technology. To support this, Applicant argues about the advantages provided by considering the numerous sources of data recited in the claims. Applicant’s argument fails to show any improvement to technology. Rather, the alleged improvement provided here is apparently due to the sequence of steps (which could be done mentally or with pen and paper) which are implemented using otherwise generic and routine technology. The end result is that existing technology is used to carry out an otherwise mental process that might yield an advantageous result; however, the advantageous result is not necessarily evidence that a technological improvement was involved. This is supported by the fact that if a person were to carry out the claimed steps mentally or on pen and paper, the very same advantageous result would be present. In other words, the alleged improvement is due to the judicial exception itself, not due to any improvement to technology.
Finally, Applicant argues that the claims are eligible under Step 2B because the claimed steps (e.g. “dividing BMI into stages and PBF into regions …”) are not routine or conventional. This argument is not persuasive because these steps are part of the mental process itself, whereas Step 2B is concerned solely with the additional elements in the claims, i.e. those additional elements other than the mental process. As such, whether or not the specific mental steps themselves were routine or conventional is not a relevant consideration in Step 2B.
II. Claim Rejections under 35 U.S.C. § 103
Applicant’s remarks concerning the previous § 103 rejections have been fully considered and are persuasive in view of the most recent claim amendments. Those rejections are withdrawn.
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 1-2, 4, 16-17, 19 and 41-46 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a mental process without significantly more.
Step 1: All claims are directed either to a method/process or to a system/machine.
Step 2A, Prong One: The claims recite the mental process of analyzing a user’s body composition data (e.g. performing various statistical comparisons with a population) and assigning the user into a cluster (a group based on users having a similar body composition), which is a process which could be performed by the human mind and/or by a human with a physical aid such as pen and paper.
Step 2A, Prong Two: This judicial exception is not integrated into a practical application because the claims merely implement the mental process using generic processing technology and add insignificant extra-solution activity. Specifically: the step of gathering the user’s body composition with a body composition analyzer is considered insignificant pre-solution activity of mere data gathering, since it merely collects the data necessary to carry out the mental process using a generic and well-known type of measurement device; the step of displaying the various results on a display screen is considered insignificant post-solution activity since it merely outputs the result of the mental process using a generic output modality. Furthermore, merely carrying out mental steps using generic computing technology such as a “terminal” and a “server” is well established to not amount to an integration into a practical application under the § 101 analysis. See, e.g., MPEP §§ 2106.04(a)(2)(III)(C) and 2106.04(d)(I) and 2106.05(f).
Step 2B: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only additional elements recited in the claims are generic processing/computing components and generic data collection and output components. The Examiner previously took official notice that these are basic, generic components which are well-understood, routine and conventional in the medical diagnostic arts, and the claims here merely use them for their well-understood, routine and conventional functions. Furthermore, as one example, all of the same generic devices (except for the type of analyzer including a handle, which is addressed further below) recited in the instant claims can be found in US 2022/0076818 A1 to Kodama et al., cited in this action (see body analyzer 30, server 20, and user terminal with display screen 32+33 which can be embodied in a separate mobile device such as a smartphone per Para. [0088]). Concerning a body analyzer as claimed including the handle with thumb electrodes, attention is directed to US 20140025346 A1 to Uchiyama and KR 20130027187 A to Cha, which each teach a body composition analyzer having a sensor unit with an electrode sensor and an automatic zero-point compensation load cell, and a handle unit provided with a pair of thumb electrodes for contacting both thumbs of a user, thereby illustrating that such analyzers were known (at least) roughly 10 years prior to Applicant’s filing date in this application (see, e.g., FIG. 1 of Uchiyama and FIG. 3 of Cha; concerning the automatic zero-point load cell: see e.g. Paras. 52 and 67 of Uchiyama; search the word “zero” in the attached machine translation of Cha). There is nothing unusual or new about Applicant’s use of such an analyzer here; rather, Applicant merely uses a well-known, routine and conventional body composition analyzer to gather the data necessary to practice the mental steps. As such, those additional elements cannot be considered “significantly more” than the judicial exception in Step 2B of the § 101 analysis.
The dependent claims merely further add mental analysis steps, and/or provide for arrangement of the display of the data which is merely insignificant post-solution activity. As such, those claims follow the same § 101 analysis above.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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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/JOHN R DOWNEY/Primary Examiner, Art Unit 3792