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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12, 14-17, 19, 20, 51, and 52 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant’s amended independent claims recite (using claim 1 language) “determining a current time value and biometric data associated with the user … determining, using control circuitry, a first correlation between the one or more properties of the first object and (1) the current attribute of interest of the user, (2) the current time value, and (3) the biometric data associated with the user; … identifying, using control circuitry, a second object having one or more properties exhibiting a stronger second correlation with (1) the current attribute of interest of the user, (2) the current time value, and (3) the biometric data associated with the user”. It is noted Applicant cites paragraphs 116, 120, and 151 for support, although it appears Applicant is relying on the Pre-Grant Publication paragraph enumeration, corresponding to originally filed paragraphs 113, 117, and 148. However, Applicant’s disclosure only discusses using biometric data for determining what the attribute of interest is, not determining the claimed correlations, i.e. paragraph 117 indicates that the attribute of interest may be determined based on factors including time of day and biometric data. While paragraph 148 describes using biometric sensors for determining a user’s level of interest in objects or areas in the environment, this still corresponds to the step of determining the attribute of interest, i.e. the attribute of interest as recited in the claim is a product ingredient, not an actual product in the environment, such that the biometric indicators of paragraph 148 are disclosed as being used to determine an attribute of interest based on an object of interest, not the claimed correlations. Further, the disclosure does not describe the claimed correlations being determined based on biometric data captured from the user, i.e. even if, for sake of argument, the indicators of paragraph 148 were disclosed as being used to determine the claimed correlation rather than the claimed attribute, the second correlation would be undefined, i.e. it is not apparent how a second object could have a higher correlation to the attribute of interest based on biometric indicators of the first user that are measured in response to the first object which is actually physically present, in contrast to the second object which is not physically present, thereby not having any biometric correspondence. That is, Applicant’s disclosure does not describe either the first or second correlation as recited in the amended independent claims, and therefore include subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Depending claims are rejected under the same rationale. In particular, claim 51 further recites that the biometric data corresponds to the indicators of paragraph 148, however, as discussed, these are used to determine the first object/attribute of interest, not the first or second correlations.
Claims 1-12, 14-17, 19, 20, 51, and 52 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Applicant’s amended independent claims recite (using claim 1 language) “determining a current time value and biometric data associated with the user … determining, using control circuitry, a first correlation between the one or more properties of the first object and (1) the current attribute of interest of the user, (2) the current time value, and (3) the biometric data associated with the user; … identifying, using control circuitry, a second object having one or more properties exhibiting a stronger second correlation with (1) the current attribute of interest of the user, (2) the current time value, and (3) the biometric data associated with the user”. As noted in the above written description rejection, Applicant appears to be relying on the Pre-Grant Publication paragraph enumeration, citing paragraphs 116, 120, and 151 corresponding to originally filed paragraphs 113, 117, and 148. Further, as discussed in the written description rejection, Applicant’s disclosure discloses using biometrics for determining the first object/attribute of interest, not for the first and second correlations as in the amended independent claims.
In consideration of the Wands factors, (A), the claimed scope includes determining biometric data associated with the user, and determining first and second correlations with respect to the first and second object, respectively, based on the attribute of interest, current time, and biometric data, a three variable correlation. Further, with respect to factors (C)(D), the state of the prior art and level of one of ordinary skill, the prior art includes sensors for determining biometric data, and one of ordinary skill would have sufficient understanding of statistical programming techniques for generally determining correlations between two related variables. With respect to factor (F), the amount of direction provided by the inventor, Applicant’s disclosure, figure 10, paragraphs 161-167, describes determining attribute of interest correlation strength using the correlation strength as an x axis variable and the time of day, object attributes, user’s past selections, or “other factors”, i.e. a direct correlation between a single input variable, such as time, object attributes, or user’s past selections, and the strength of the interest/correlation, which is a two variable correlation, and the description of paragraphs 161-167 does not suggest that the “other factors” include biometric data determined by the system. Further with respect to factor (F), Applicant’s disclosure, paragraph 167-170 describes the high complexity of implementing the disclosed system for determining the correlations/interest scores, without actually describing how these highly complex solutions relate to determining the correlation/interest score, i.e. these paragraphs indicate that the solution is highly technical, naming potential technologies which could be used in implementing the system, without actually describing how they would be used to determine the claimed correlation/interest scores. Similarly, with respect to factor (G), the existence of working examples, as noted above with respect to the biometric data and sensors of paragraphs 117 and 148, the disclosed exemplary use of biometric data is only for determining the first object/attribute of interest, and there is no description or example of using the biometric data/indicators for determining the correlation strength of the first object, additionally based on the current time, or otherwise, and similarly there is no description of using the biometric data/indicators for determining the correlation strength of the second object, additionally based on the current time, or otherwise. Further, as noted in the written description rejection above, Applicant’s disclosure does not contemplate or suggest how biometric indicators determined with respect to the first object could be used to determine a second object having a higher correlation strength than the first object based on the biometric indicators determined with respect to the first object.
Therefore it is apparent with respect to factor (H), the quantity of experimentation needed to make/use the invention based on the content of the disclosure would be an undue amount because one of ordinary skill in the art would have no examples of the claimed three variable correlations to use a guide, would have to figure out how to determine the particularly claimed three variable correlation using only generic two way correlation technique for guidance, along with Applicant’s suggestion to employ highly complex solutions as in paragraphs 167-170 without any guidance on how to employ the highly complex solutions to arrive at the claimed correlations. Further, one of ordinary skill in the art would recognize that the second claimed correlation is effectively undefined, i.e. it is not apparent how the correlations can be measured such that biometric indicators determined with respect to the first object could be used to determine a second object having a higher correlation strength than the first object based on the biometric indicators determined with respect to the first object. Therefore the claims are not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Depending claims are rejected under the same rationale.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12, 14-17, 19, 20, 51, and 52 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Applicant’s amended independent claims recite (using claim 1 language) “determining a current time value and biometric data associated with the user … determining, using control circuitry, a first correlation between the one or more properties of the first object and (1) the current attribute of interest of the user, (2) the current time value, and (3) the biometric data associated with the user; … identifying, using control circuitry, a second object having one or more properties exhibiting a stronger second correlation with (1) the current attribute of interest of the user, (2) the current time value, and (3) the biometric data associated with the user”. As noted in the above written description rejection, Applicant appears to be relying on the Pre-Grant Publication paragraph enumeration, citing paragraphs 116, 120, and 151 corresponding to originally filed paragraphs 113, 117, and 148. Further, as discussed in the written description and enablement rejections, Applicant’s disclosure discloses using biometrics for determining the first object/attribute of interest, not for the first and second correlations as in the amended independent claims.
With respect to the first correlation, Applicant’s paragraph 148 describes using biometric sensors for determining a user’s level of interest in objects or areas in the environment, this still corresponds to the step of determining the attribute of interest, i.e. the attribute of interest as recited in the claim is a product ingredient, not an actual product in the environment, such that the biometric indicators of paragraph 148 are disclosed as being used to determine an attribute of interest based on an object of interest, not the claimed first correlation. Further, Applicant’s disclosure does not describe or suggest how the claimed biometrics/biometric indicators are correlated to a product ingredient, i.e. the example of the disclosure indicates that an object or area of interest can be determined based on the biometric indicators, but it is not apparent how the biometric indicators would correlate to a particular product ingredient, e.g. the example of paragraph 96 is a drink having high or low caffeine content, but the user’s biometric response would be with respect to the drink, i.e. the first object, not the caffeine content, i.e. the ingredient which is the attribute of interest, nor is it apparent how a biometric response with respect to a product, per se, could be used to measure a correlation to an ingredient of the product. Therefore the scope of the claimed first correlation is indefinite, i.e. the claimed correlation based on the attribute of interest, current time, and biometric data is undefined because there is no direct relation between the biometric data and the attribute of interest to measure. Depending claims are rejected under the same rationale, including claim 51 further clarifying that the biometric data is one of the indicators of paragraph 148.
Similarly the second claimed correlation is indefinite for the same reasons as the first correlation. The second claimed correlation is further found to be indefinite because, as discussed in the above written description and enablement rejections, even if, for sake of argument, the indicators of paragraph 148 were disclosed as being used to determine the claimed correlation rather than the claimed attribute, the second correlation would be undefined, i.e. it is not apparent how a second object could have a higher correlation to the attribute of interest based on biometric indicators of the first user that are measured in response to the first object which is actually physically present, in contrast to the second object which is not physically present, thereby not having any biometric correspondence. As the gathered biometric data has no correspondence to the second object, there is no defined correlation, and by extension, the correlation of the second object cannot have a stronger correlation strength than the first object, leaving the claimed scope further undefined, i.e. it is not apparent how a second object, for which the user has not exhibited any biometric indicators measured by the sensors, could have a higher correlation score than the first object to which the user exhibited the biometric indicators measured by the system. Therefore the scope of the claimed second correlation is indefinite, i.e. the claimed correlation based on the attribute of interest, current time, and biometric data is undefined because there is no direct relation, or indirect relation, between the biometric data and the attribute of interest with respect to the second object. Depending claims are rejected under the same rationale.
Response to Arguments
Applicant’s arguments, see pages 8-9, filed 10/30/25, with respect to the rejection(s) of claim(s) 1-12, 14-17, 19 and 20 under 35 U.S.C. 102(a)(2) and 35 U.S.C. 103(a) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection are made in view of Applicant’s amended claims.
It is noted that Applicant asserts support is found in paragraphs 116, 120, and 151, however, as discussed in the above rejections, neither the cited paragraphs or the remainder of the disclosure support the amended limitations, such that this assertion is not found to be persuasive.
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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/ROBERT BADER/Primary Examiner, Art Unit 2611