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 .
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 following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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:
location prediction engine, first recited in claim 1 (part of computing device 108, paragraphs [0057]-[0059], [0100] as filed, which includes processor-executable instructions, paragraph [0151])
activity prediction engine, first recited in claim 1 (part of computing device 108, paragraphs [0057]-[0059], [0100] as filed, which includes processor-executable instructions, paragraph [0151])
activity-to-recommendation module, first recited in claim 23 (part of computing device 108, paragraphs [0057], [0100] as filed, which includes processor-executable instructions, paragraph [0151])
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.
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 § 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.
Claim 4 is 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. Claim 4 now calls for the determining of the second location to comprise “confirming the first location”; the only disclosed finding of a “second location” is a finding of an actual location, either by updating the first location or obtaining a separate location – see paragraph [0096] as filed. Confirmation of a first location is not disclosed as a determination of any sort of additional or second location (see paragraphs [0030], [0058], [0099] as filed), but is instead an alternative embodiment of determination of the user’s location. As such, the disclosure does not convey possession of determination of a second location by confirming the location of a first location at the time the invention was filed.
Claim 5 is 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. Claim 5 now calls for the determining of the second location to comprise “selecting one of the at least two candidate first locations”; the only disclosed finding of a “second location” is a finding of an actual location, either by updating the first location or obtaining a separate location – see paragraph [0096] as filed. Confirmation of a first location is not disclosed as a determination of any sort of additional or second location (see paragraphs [0031], [0059], [0098], [0145] as filed), but is instead an alternative embodiment of determination of the user’s location. As such, the disclosure does not convey possession of determination of a second location by confirming the location of a first location at the time the invention was filed.
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, 21-27 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.
Claim 1 now recites “wherein the first sensor data is generated substantially in real time as it is received by the location prediction engine”. It is entirely unclear how a “first source” can generate data “as it is received” by a different element – does the act of receiving somehow cause the generation of the data itself? Or is the intent that the data is received substantially in real time as it is generated? Clarification is required. The same issue is found in claim 26.
Claim 1 in line 11 calls for finding “a second location of a user”; line 6 also calls for finding “a first location of a user”. It is unclear if this method involves locations of two separate users or if the second should refer to a second location of the user, particularly as if it involves two users the claim is further indefinite in its later references to “the user”; for the purposes of examination it will be treated as only involving one user but correction is required. The same issue is found in claims 23 and 26.
Claim 1 in lines 14-15 recites “the predicted activity” – it is unclear if this refers to both possible outcomes of the prediction engine or only an activity that a user “will perform”; subsequent claims also refer to “the predicted activity”, and the same issue is also found in claim 26. Clarification is required.
Claim 5 now recites that determining the first location comprises selecting a location as the second location; this is entirely unclear. It is unclear whether the selected location from the plurality of locations should be treated as the first location, per the preamble, or as the second location, per the “selecting” step. Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. See MPEP 2173.06.
Claim 9 recites that “determining the activity comprises predicting, based on the second location, a state of the activity”; per claim 1, the determining of the activity is a determination of an activity that the user is or will be performing. If the determination is of an activity currently being performed, it is unclear how this relates to a predicted (future) state of that activity. Clarification is required.
Claim 10 calls for determining “an additional location of the user” and, based on this additional information, “a different state of the activity”. If the user is currently performing the activity, as set forth in the determination in claim 1, it is unclear how the user can suddenly be in a different location experiencing a different state of that activity that is currently being performed. Clarification is required.
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 1-12, 21, 22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Please see the following Subject Matter Eligibility (“SME”) analysis:
For analysis under SME Step 1, the claims herein are directed to a process, which would be classified under one of the listed statutory classifications (SME Step 1=Yes).
For analysis under revised SME Step 2A, Prong 1, independent claim 1 recites a method comprising obtaining data, detecting a location based on the data, detecting an additional location based on the first location and the data, determining an activity based on the second location, and generating a recommendation based on the activity.
The dependent claims appear to be encompassed by the abstract idea of the independent claims since they merely indicate generating additional information (claims 3-5), , processing the data (claims 2, 6-9, 12, 21), obtaining additional data and generating additional information based on the additional data (claim 10, 22), and outputting the result (claim 11)
The claim elements may be summarized as the idea of obtaining and processing data to report information; however, the Examiner notes that although this summary of the claims is provided, the analysis regarding subject matter eligibility considers the entirety of the claim elements, both individually and as a whole (or ordered combination). This idea is within the following grouping(s) of subject matter:
Mental processes (e.g., concepts performed in the human mind such as observation, evaluation, judgment, and/or opinion) as based on the observation and evaluation of sensor data – a judgment or opinion regarding conditions based on the received data
Therefore, the claims are found to be directed to an abstract idea.
For analysis under revised SME Step 2A, Prong 2, the above judicial exception is not integrated into a practical application because any additional elements do not impose a meaningful limit on the judicial exception when evaluated individually and as a combination. The only recited additional elements are “a location prediction engine” and “an activity prediction engine”, which appear to be computing elements, recited at a high level of generality with no indication of particular specialized algorithms or components and which merely provide a technological environment for execution of the abstract idea itself. The recited “first source” and “second source” are tangentially involved but not positively recited as performing any part of the method as claimed. At best claim 11 calls for causing display of a result on “a computing device”, where this additional element does not reflect an improvement in the functioning of a computer or an improvement to other technology or technical field, effect a particular treatment or prophylaxis for a disease or medical condition, implement the judicial exception with, or by using in conjunction with, a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing (there is no transformation/reduction of a physical article), and/or apply or use the judicial exception in some other meaningful way beyond generically linking use of the judicial exception to a particular technological environment.
The claims appear to merely apply the judicial exception, include instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform the abstract idea. The additional elements appear to merely add insignificant extra-solution activity to the judicial exception and/or generally link the use of the judicial exception to a particular technological environment or field of use.
For analysis under SME Step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception; as noted above the additional elements of “a location prediction engine” and “an activity prediction engine” merely appear to be disembodied computer programming code, recited at a high level of generality and only for performance of the abstract idea itself (see MPEP 2106.05(d), Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims."), showing that these computer functions are well-understood, routine, and conventional functions). The other possible additional elements in claim 1 would be the “first source” and “second source” that do not perform any of the steps of the method as claimed, as they are only recited as a passive source of data; further, even if positively recited the “sources” are presented at a high level of generality and only for the insignificant extrasolution activity of data gathering - see MPEP 2106.05(d), where determining the level of a biomarker by any means, Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; Cleveland Clinic Foundation v. True Health Diagnostics, LLC, 859 F.3d 1352, 1362, 123 USPQ2d 1081, 1088 (Fed. Cir. 2017) is held to be well-understood, routine, and conventional. The wholly nonspecific “computing device” of claim 11 is recited at a high level of generality and only for the insignificant postsolution activity of outputting a result - see MPEP 2106.05 - Presenting data, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93 - another type of activity that the courts have found to be well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. Further, the “output” of the generated recommendation is itself entirely disembodied, such that its broadest reasonable interpretation is of a signal; even if embodied it appears no more than the insignificant postsolution activity of outputting the result of the abstract idea (see MPEP 2106.05 - Presenting data, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93 - another type of activity that the courts have found to be well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity).
The individual elements therefore do not appear to offer any significance beyond the application of the abstract idea itself, and there does not appear to be any additional benefit or significance indicated by the ordered combination, i.e., there does not appear to be any synergy or special import to the claim as a whole other than the application of the idea itself.
The dependent claims, as indicated above, appear encompassed by the abstract idea since they merely limit the idea itself or the computer components performing the abstract idea; therefore the dependent claims do not add significantly more than the idea.
Therefore, SME Step 2B=No, any additional elements, whether taken individually or as an ordered whole in combination, do not amount to significantly more than the abstract idea, including analysis of the dependent claims.
Claims 23-25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Please see the following Subject Matter Eligibility (“SME”) analysis:
For analysis under SME Step 1, the claims herein are directed to a process, which would be classified under one of the listed statutory classifications (SME Step 1=Yes).
For analysis under revised SME Step 2A, Prong 1, independent claim 23 recites a method comprising obtaining data, detecting a location based on the data, detecting an additional location based on the first location and the data, determining an activity based on the second location, and generating a recommendation based on the activity.
The dependent claims appear to be encompassed by the abstract idea of the independent claims since they merely indicate outputting the result (claims 24, 25)
The claim elements may be summarized as the idea of obtaining and processing data to report information; however, the Examiner notes that although this summary of the claims is provided, the analysis regarding subject matter eligibility considers the entirety of the claim elements, both individually and as a whole (or ordered combination). This idea is within the following grouping(s) of subject matter:
Mental processes (e.g., concepts performed in the human mind such as observation, evaluation, judgment, and/or opinion) as based on the observation and evaluation of sensor data – a judgment or opinion regarding conditions based on the received data
Therefore, the claims are found to be directed to an abstract idea.
For analysis under revised SME Step 2A, Prong 2, the above judicial exception is not integrated into a practical application because any additional elements do not impose a meaningful limit on the judicial exception when evaluated individually and as a combination. The only recited additional elements are a “computer-implemented” “location prediction engine”, “activity prediction engine”, and “activity-to-recommendation module”, which appear to be computing elements, recited at a high level of generality with no indication of particular specialized algorithms or components and which merely provide a technological environment for execution of the abstract idea itself. The recited “first source” and “second source” are tangentially involved but not positively recited as performing any part of the method as claimed. The recited “recommendation for mitigating therapy” is not a particular treatment or prophylaxis as this recommendation is not positively implemented nor is there any specificity as to what this might involve. These additional elements do not reflect an improvement in the functioning of a computer or an improvement to other technology or technical field, effect a particular treatment or prophylaxis for a disease or medical condition, implement the judicial exception with, or by using in conjunction with, a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing (there is no transformation/reduction of a physical article), and/or apply or use the judicial exception in some other meaningful way beyond generically linking use of the judicial exception to a particular technological environment.
Dependent claim 24 includes an optional “modifying medicament delivery”, which is also not a particular treatment or prophylaxis, as it is recited at a high level of generality with no specific as to what is being modified or how it is modified or how the modification might relate to any other aspect of the determination.
The claims appear to merely apply the judicial exception, include instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform the abstract idea. The additional elements appear to merely add insignificant extra-solution activity to the judicial exception and/or generally link the use of the judicial exception to a particular technological environment or field of use.
For analysis under SME Step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception; as noted above the additional elements of “a location prediction engine”, “an activity prediction engine”, and “an activity-to recommendation module” merely appear to be disembodied computer programming code, recited at a high level of generality and only for performance of the abstract idea itself (see MPEP 2106.05(d), Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims."), showing that these computer functions are well-understood, routine, and conventional functions). The other possible additional elements in claim 23 would be the “first source” and “second source” that do not perform any of the steps of the method as claimed, as they are only recited as a passive source of data; further, even if positively recited the “sources” are presented at a high level of generality and only for the insignificant extrasolution activity of data gathering - see MPEP 2106.05(d), where determining the level of a biomarker by any means, Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; Cleveland Clinic Foundation v. True Health Diagnostics, LLC, 859 F.3d 1352, 1362, 123 USPQ2d 1081, 1088 (Fed. Cir. 2017) is held to be well-understood, routine, and conventional. Further, the generated recommendation is itself entirely disembodied, such that its broadest reasonable interpretation is of a signal; even if embodied it appears no more than the insignificant postsolution activity of outputting the result of the abstract idea (see MPEP 2106.05 - Presenting data, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93 - another type of activity that the courts have found to be well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity).
The individual elements therefore do not appear to offer any significance beyond the application of the abstract idea itself, and there does not appear to be any additional benefit or significance indicated by the ordered combination, i.e., there does not appear to be any synergy or special import to the claim as a whole other than the application of the idea itself.
The dependent claims, as indicated above, appear encompassed by the abstract idea since they merely limit the idea itself or the computer components performing the abstract idea; therefore the dependent claims do not add significantly more than the idea.
Therefore, SME Step 2B=No, any additional elements, whether taken individually or as an ordered whole in combination, do not amount to significantly more than the abstract idea, including analysis of the dependent claims.
Claims 26, 27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Please see the following Subject Matter Eligibility (“SME”) analysis:
For analysis under SME Step 1, the claims herein are directed to a process, which would be classified under one of the listed statutory classifications (SME Step 1=Yes).
For analysis under revised SME Step 2A, Prong 1, independent claim 26 recites a method comprising obtaining data, detecting a location based on the data, detecting an additional location based on the first location and the data, determining an activity based on the second location, generating a recommendation based on the activity, and causing an adjustment of a therapy or instructions.
The dependent claims appear to be encompassed by the abstract idea of the independent claims since they merely indicate generating the information (claim 27)
The claim elements may be summarized as the idea of obtaining and processing data to report information; however, the Examiner notes that although this summary of the claims is provided, the analysis regarding subject matter eligibility considers the entirety of the claim elements, both individually and as a whole (or ordered combination). This idea is within the following grouping(s) of subject matter:
Mental processes (e.g., concepts performed in the human mind such as observation, evaluation, judgment, and/or opinion) as based on the observation and evaluation of sensor data – a judgment or opinion regarding conditions based on the received data
Therefore, the claims are found to be directed to an abstract idea.
For analysis under revised SME Step 2A, Prong 2, the above judicial exception is not integrated into a practical application because any additional elements do not impose a meaningful limit on the judicial exception when evaluated individually and as a combination. The only recited additional elements are “a location prediction engine” and “an activity prediction engine”, which appear to be computing elements, recited at a high level of generality with no indication of particular specialized algorithms or components and which merely provide a technological environment for execution of the abstract idea itself. The recited “first source” and “second source” are tangentially involved but not positively recited as performing any part of the method as claimed. The disembodied optional “causing adjustment of medicament delivery” is not a particular treatment or prophylaxis as there is no particularity recited in the delivery, let alone any determination of what adjustment should be executed. These additional elements do not reflect an improvement in the functioning of a computer or an improvement to other technology or technical field, effect a particular treatment or prophylaxis for a disease or medical condition, implement the judicial exception with, or by using in conjunction with, a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing (there is no transformation/reduction of a physical article), and/or apply or use the judicial exception in some other meaningful way beyond generically linking use of the judicial exception to a particular technological environment.
The claims appear to merely apply the judicial exception, include instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform the abstract idea. The additional elements appear to merely add insignificant extra-solution activity to the judicial exception and/or generally link the use of the judicial exception to a particular technological environment or field of use.
For analysis under SME Step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception; as noted above the additional elements of “a location prediction engine” and “an activity prediction engine” merely appear to be disembodied computer programming code, recited at a high level of generality and only for performance of the abstract idea itself (see MPEP 2106.05(d), Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims."), showing that these computer functions are well-understood, routine, and conventional functions). The other possible additional elements in claim 26 would be the “first source” and “second source” that do not perform any of the steps of the method as claimed, as they are only recited as a passive source of data; further, even if positively recited the “sources” are presented at a high level of generality and only for the insignificant extrasolution activity of data gathering - see MPEP 2106.05(d), where determining the level of a biomarker by any means, Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; Cleveland Clinic Foundation v. True Health Diagnostics, LLC, 859 F.3d 1352, 1362, 123 USPQ2d 1081, 1088 (Fed. Cir. 2017) is held to be well-understood, routine, and conventional. Further, the generated recommendation is itself entirely disembodied, such that its broadest reasonable interpretation is of a signal; even if embodied it appears no more than the insignificant postsolution activity of outputting the result of the abstract idea (see MPEP 2106.05 - Presenting data, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93 - another type of activity that the courts have found to be well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity). Finally, the “causing adjustment” of medicament and/or instructions is entirely disembodied and recited at a high level of generality, where nonspecific adjustment of an unidentified medicament without even a determination of what adjustment should be performed is, at its broadest reasonable interpretation, the effect of the output of the results where the adjustment can be entirely a subjective user response equivalent to the other alternative of adjusting delivered instructions (see MPEP 2106.05 - Presenting data, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93 - another type of activity that the courts have found to be well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity).
The individual elements therefore do not appear to offer any significance beyond the application of the abstract idea itself, and there does not appear to be any additional benefit or significance indicated by the ordered combination, i.e., there does not appear to be any synergy or special import to the claim as a whole other than the application of the idea itself.
The dependent claims, as indicated above, appear encompassed by the abstract idea since they merely limit the idea itself or the computer components performing the abstract idea; therefore the dependent claims do not add significantly more than the idea.
Therefore, SME Step 2B=No, any additional elements, whether taken individually or as an ordered whole in combination, do not amount to significantly more than the abstract idea, including analysis of the dependent claims.
Please see the Subject Matter Eligibility (SME) guidance and instruction materials at https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility, which includes the latest guidance, memoranda, and update(s) for further information.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-4, 6-12, 21-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhong (US 2022/0104761) in view of Kim (US 2022/0030388).
Regarding claim 1, Zhong discloses a method comprising:
receiving, by a “location prediction engine”, sensor data from a source substantially in real time (paragraph [0062]);
determining, by the “location prediction engine” and based on the sensor data, a location of a user (paragraph [0061], [0065]);
determining, by an “activity prediction engine” and based on the location of the user, an activity that the user is performing or will perform at the location (paragraph [0061], [0065], [0068]);
generating a recommendation to control a glycemic response of the user to the determined activity (paragraph [0060], [0061], [0076]), and
outputting the recommendation for use in a therapy to mitigate the glycemic response (paragraph [0076]).
The Examiner notes that the disclosure of the instant invention sets forth that a “location prediction engine” is merely “various types of logic to predict the location 408 of a user” (paragraph [0099] as filed).
Zhong does not disclose the sensor data including first and second sensor data, and determining a first location of the user based on the first sensor data and determining a second location of the user based on the first location and the second sensor data.
Kim teaches a method comprising:
receiving first sensor data from a first source, wherein the first sensor data is received substantially in real time (paragraph [0075], [0098]);
determining, based on the first sensor data, a first location of a user (paragraph [0075], [0098]);
receiving second sensor data from a second source, wherein the second sensor data is received substantially in real time (paragraph [0080], [0098]);
determining, based on the first location and the second sensor data, a second location of a user (paragraphs [0098], [0099]); and
using the second location as the user location (paragraph [0102]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have followed Zhong and used first and second sensor data to find first and second locations, as taught by Kim, in order to increase the accuracy of the final determined location.
Regarding claim 2, Zhong further discloses that generating the recommendation further comprises: determining the glycemic response of the user to the determined activity; determining whether the glycemic response of the user to the predicted activity will cause an adverse health event; and responsive to determining that the glycemic response of the user to the predicted activity will cause the adverse health event, determining a mitigating therapy to prevent the adverse health event, wherein the recommendation includes the mitigating therapy (paragraph [0076], [0087]).
Regarding claim 3, Kim further teaches that the first sensor data is a different type than the second sensor data (paragraphs [0047], [0127]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have followed Zhong, as modified by Kim, using different types of sensor data, as further taught by Kim, in order to enable sensing in different areas.
Regarding claim 4, Kim further teaches that determining the second location of the user comprises confirming the first location based on the second sensor data (paragraphs [0098], [0099], the comparison between locations). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have followed Zhong as modified by Kim, and further included confirming the first location based on the second sensor data, as further taught by Kim, in order to ensure accuracy of the ultimately determined location.
Regarding claim 6, Zhong further discloses that the recommendation comprises administering an amount of a medicament to the user to control the glycemic response of the user to the predicted activity (paragraphs [0076], [0087]).
Regarding claim 7, Zhong further discloses communicating instructions to a medicament delivery system, the instructions causing the medicament delivery system to administer the amount of the medicament to the user (paragraph [0076]).
Regarding claim 8, Zhong further discloses that the medicament comprises insulin (paragraph [0031]).
Regarding claims 9 and 21, Zhong further discloses that the predicting the activity comprises predicting, based on the location, a state of the activity, the state comprising a pre-activity state, an activity state, or a post-activity state, wherein the recommendation is based on the state of the activity (paragraph [0070], [0121]). As modified by Kim above , this would be the second location.
Regarding claim 10, Zhong further discloses receiving additional sensor data; determining, based on the additional sensor data, an additional location of the user; determining, based on the additional location of the user, a different state of the activity; and generating an additional recommendation based on the different state of the activity (paragraph [0070], [0124]).
Regarding claim 11, Zhong further discloses causing display of the recommendation to control the glycemic response of the user on a computing device (paragraph [0024], [0044], [0105]).
Regarding claim 12, Zhong further discloses that the predicted activity comprises exercising, eating, or sleeping (paragraph [0040]).
Regarding claim 22, Zhong further discloses that determining the activity that the user is performing or will perform at the location is based on historical data indicating an activity previously performed at the location (paragraph [0065], the use of data from the initial learning phase). As modified by Kim, this location would be the “second location”.
Regarding claim 23, Zhong discloses a computer-implemented method performed by a glycemic control system (paragraph [0042]), the method comprising:
receiving, by a “location prediction engine” of the glycemic control system, sensor data from a source (paragraph [0062]);
determining, by the location prediction engine and based on the sensor data, a location of a user (paragraphs [0061], [0065]);
determining, by an “activity prediction engine” of the glycemic control system and based on the location of the user, an activity that the user is performing or will perform at the location (paragraph [0061], [0065], [0068]); and
generating, by an “activity-to-recommendation module” of the glycemic control system, a recommendation for mitigating therapy to control a predicted glycemic response of the user to the activity (paragraphs [0060], [0061], [0076]), wherein the activity-to-recommendation module applies a machine learning model that has been trained using training data associating activities with mitigating therapies to output the mitigating therapy for the activity (paragraph [0070]).
The Examiner notes that the disclosure of the instant invention sets forth that a “location prediction engine” is merely “various types of logic to predict the location 408 of a user” (paragraph [0099] as filed).
Zhong does not disclose the sensor data including first and second sensor data from first and second sources, and determining a first location of the user based on the first sensor data and determining a second location of the user based on the first location and the second sensor data.
Kim teaches a method comprising:
receiving first sensor data from a first source, wherein the first sensor data is received substantially in real time (paragraph [0075], [0098]);
determining, based on the first sensor data, a first location of a user (paragraph [0075], [0098]);
receiving second sensor data from a second source, wherein the second sensor data is received substantially in real time (paragraph [0080], [0098]);
determining, based on the first location and the second sensor data, a second location of a user (paragraphs [0098], [0099]); and
using the second location as the user location (paragraph [0102]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have followed Zhong and used first and second sensor data to find first and second locations, as taught by Kim, in order to increase the accuracy of the final determined location.
Regarding claim 24, Zhong further discloses that the mitigating therapy comprises at least one of modifying medicament delivery to the user, prompting the user to ingest carbohydrates, or both modifying medicament delivery to the user and prompting the user to ingest carbohydrates (paragraph [0076], [0105]).
Regarding claim 25, Zhong further discloses that generating the recommendation comprises determining that the predicted glycemic response causes a hypoglycemic or hyperglycemic event (paragraphs [0076], [0087]).
Regarding claim 26, Zhong discloses a computer-implemented method performed by a glycemic control system (paragraph [0042]), the method comprising:
receiving, by a “location prediction engine” of the glycemic control system, sensor data from a source, wherein the sensor data is received substantially in real time (paragraph [0062]);
determining, by the “location prediction engine” and based on the sensor data, a location of a user (paragraphs [0061], [0065]);
determining, by an” activity prediction engine” and based on the location of the user, an activity that the user is performing or will perform at the location (paragraph [0061], [0065], [0068]);
determining, by the glycemic control system, whether a predicted glycemic response to the activity is associated with an adverse health event (paragraphs [0076], [0087]);
in response to determining that the predicted glycemic response is associated with an adverse health event, determining and generating, without user input, a mitigating therapy recommendation configured to control the glycemic response of the user to the activity(paragraphs [0060], [0061], [0076], [0105]); and
based on the mitigating therapy recommendation, causing adjustment of medicament delivery to the user, instruction to the user, or both causing adjustment of medicament delivery and instruction to the user (paragraph [0076], [0105]).
The Examiner notes that the disclosure of the instant invention sets forth that a “location prediction engine” is merely “various types of logic to predict the location 408 of a user” (paragraph [0099] as filed).
Zhong does not disclose the sensor data including first and second sensor data, and determining a first location of the user based on the first sensor data and determining a second location of the user based on the first location and the second sensor data.
Kim teaches a method comprising:
receiving first sensor data from a first source, wherein the first sensor data is received substantially in real time (paragraph [0075], [0098]);
determining, based on the first sensor data, a first location of a user (paragraph [0075], [0098]);
receiving second sensor data from a second source, wherein the second sensor data is received substantially in real time (paragraph [0080], [0098]);
determining, based on the first location and the second sensor data, a second location of a user (paragraphs [0098], [0099]); and
using the second location as the user location (paragraph [0102]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have followed Zhong and used first and second sensor data to find first and second locations, as taught by Kim, in order to increase the accuracy of the final determined location.
Regarding claim 27, Kim further teaches that the first source and the second source are different from each other, and wherein at least one of the first sensor data and the second sensor data is selected from the group consisting of GPS data, Wi-Fi data , Bluetooth data, and cellular antenna data (paragraphs [0047], [0127]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have followed Zhong, as modified by Kim, using different types of sensor data, as further taught by Kim, in order to enable sensing in different areas.
Response to Arguments
Applicant's arguments filed 17 March 2026 have been fully considered but they are not persuasive.
Regarding the rejections under 112, the Examiner notes that though previous issues have been resolved, the amendments to the claims have raised several new issues as set forth above.
Regarding the rejections under 101, Applicant first argues that the use of disembodied “engines” defines “structured operations that rely on computerized systems that cannot be practically carried out in the human mind alone”. This is entirely unpersuasive, as no specific algorithm or processing step involved in any of these “engines” has been recited in the claims, particularly none that would be unable to be carried out in the human mind. As presented, these nonspecific “engines” merely provide some technological environment for execution of the abstract idea itself, and at least in claim 1 are not even explicitly “computerized”, such that this is entirely unpersuasive.
Applicant further argues that the invention as claimed provides a practical application by generating a “recommendation” “thereby effecting a physiological change” – as the “recommendation” does not involve active implementation of anything that could result in a change, this is unpersuasive. Even if the “recommendation” were actively implemented, it is only recited at a high level of generality insufficient to constitute a particular treatment or prophylaxis – see the Office’s 101 example 43. This also applies to claim 26, which only calls for nonspecific “adjustment” that is somehow “based” on a recommendation.
The claims remain rejected.
Applicant’s arguments with respect to the art rejections under Zhong have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Applicant argues only that Zhong does not disclose the newly added limitations directed to finding two locations; as Kim teaches these above, these remarks are moot.
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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/KAREN E TOTH/ Examiner, Art Unit 3791
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