DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
I. Claim Objection
The Examiner agrees that the cancellation of claim 17 renders the previous objection moot. The objection is now withdrawn.
II. 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 “identifying a specific life habit … and notifying the user of that cause” is “concrete, tailored, and action-oriented, providing feedback that directly prompts user behavior change, thereby integrating any abstract concept into practical application.” The Examiner respectfully disagrees. The “identify” step is part of the mental process, since a human can mentally determine which life habit(s) are reasons for increased risk of hypertension based on reviewing data such as the claimed use log. The “notify” step is merely insignificant post-solution activity, since it merely outputs the result of the mental process. This is no more “action-oriented” than any of the other typical forms of insignificant post-solution activity, such as wirelessly transmitting results, printing the results on paper, etc. There is also nothing in the claims that “directly prompts user behavior change”; the claim simply requires notifying a user about their risk and a life habit that contributes to it. Nothing in the claim requires the user take any action in response to that notification.
Applicant next argues “The claim further ties the analysis to specific real-world inputs (user terminal logs and location-specific weather information) and uses a specifically constructed model built via a defined training pipeline (per-user averaging of blood pressure values and labeling). This is not generic post-solution activity; it is a particularized implementation that produces a specific, actionable output.” The Examiner respectfully disagrees. There is nothing that precludes insignificant pre-solution activity of mere data gathering from including “real-world inputs.” MPEP § 2106.05(g) provides a list of “mere data gathering” activities identified by courts, all of which are “real-world inputs” such as “performing clinical tests…” and “consulting and updating an activity log …” and “determining a level of a biomarker in blood.” Furthermore, a human can mentally (and/or manually with a physical aid) construct a model that includes averaging users’ blood pressure values. Merely implementing those steps on generic computing tool(s) such as “processing circuitry” is well established not to give rise to patentability under either Step 2A, Prong Two, or Step 2B.
Applicant next argues “The claim also includes an unconventional data processing architecture: constructing the training set by averaging blood pressure values per user to reduce noise and then correlating a hypertension label to each user based on the averaged value. This defined training pipeline addresses a specific technical problem in preparing stable, reliable training labels from noisy health data.” The Examiner respectfully disagrees. Averaging blood pressure data and then assigning a label to a user is a process that can be (and routinely is) done mentally. There is nothing unconventional about averaging blood pressure values for a user to evaluate hypertension. This is also fundamentally not a “technological” problem. Even if the averaging does reduce noise, it would reduce noise in the data set even if the “acquiring … averaging … and correlating …” steps were carried out entirely mentally; the exact same benefit would be realized even in the complete absence of technology. It is thus not appropriate to characterize it as a technological problem or solution.
Applicant next argues “The ordered combination of steps is not routine or conventional and yields a different, functionally improved output-cause identification with tailored notification-than merely calculating and displaying a risk score.” The Examiner respectfully disagrees. It is noted that in Step 2B, the evaluation of whether steps are routine or conventional is only performed on the additional elements, not on the mental process steps. Here, the only additional elements are collecting the requisite data using generic collection tools, performing the mental steps on generic computing technology, and outputting the results in a notification. These are not only individually well-understood, routine and conventional, but also this combination of steps is particularly well-understood, routine and conventional in the medical diagnostic arts, as the usual flow of such diagnostic methods is to collect the data, process it, and output the results.
Applicant next argues “These features make it explicitly clear that the claim as a whole cannot practically be performed as a mental process and the claim integrates any abstract idea into a practical application.” The Examiner respectfully disagrees. Looking at claim 1, for example, the human mind is fully capable of acquiring data, constructing a model, averaging data, correlating data sets with each other, estimating risk by reviewing data in a model, identifying a life habit that is a reason for increased risk based on data analysis. The remaining limitations are either insignificant extra-solution activity and/or merely carrying out mental steps on generic computing technology, as noted above and in the rejections.
Applicant next argues that, similar to the McRo case, the claims here amount to an improvement to the technological environment. The Examiner respectfully disagrees for the reasons already explained above, namely that the same benefits asserted by Applicant here would be present even if the steps of the claims were carried out entirely mentally. There is thus no “technological” improvement. Rather, at best, there is a mental process that yields a desirable result, and which can provide that same result whether implemented with generic technology or performed mentally.
Applicant’s remarks concerning BASCOM are similarly unpersuasive because none of the claimed limitations result in any changes to the underlying technology in the claims. There is no improved performance of the processing circuitry, for example. Rather, a mental process is merely carried out using a generic processor for its well-understood benefits of speed, accuracy, etc.
Applicant’s final remarks concerning Ex Parte Desjardins are similarly unpersuasive for the same reasons explained above.
III. Claim Rejections under 35 U.S.C. §§ 102 and 103
Applicant’s remarks concerning the previous prior art rejections have been fully considered and are persuasive in view of the most recent claim amendments. Those previous 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 1-5 and 18-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a mental process without significantly more.
Step 1: All of claims 1-5 and 18-19 are directed either to a machine/apparatus or to a method.
Step 2A, Prong One: The claims recite a mental process including at least the steps of “construct a hypertension detection model by acquiring training data including blood pressure values for a plurality of users, averaging the blood pressure values for each user, and correlating a label indicating whether there is hypertension with each user based on the averaged blood pressure value; estimate a risk of hypertension of a target user by inputting the use log of the target user and the weather information of the target user to the constructed hypertension detection model; identify a life habit that is a reason for an increased risk of hypertension based on the use log” (see claims 1 and 19) which could be performed by the human mind and/or by a human with a physical aid such as pen and paper, since the human mind is fully capable of constructing a model, averaging, correlating, estimating and identifying in the manner claimed here.
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 steps of “acquire a use log …” and “acquire weather information …” are 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 acquiring unit. The step of “notify the user” is considered insignificant post-solution activity since it merely outputs the result of the mental process. Furthermore, merely carrying out mental steps using generic computing technology such as an “processing circuitry” 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 (e.g. “processing circuitry”) and generic data collection components (“use log”). 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 to implement a mental process. Applicant’s reply did not traverse the Examiner's assertion of official notice; therefore, the facts under official notice are now taken to be admitted prior art. See MPEP § 2144.03(C) (“If applicant does not traverse the examiner' s assertion of official notice or applicant' s traverse is not adequate, the examiner should clearly indicate in the next Office action that the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner' s assertion of official notice or that the traverse was inadequate.”). As such, those additional elements cannot be considered “significantly more” than the judicial exception in Step 2B of the § 101 analysis.
Dependent claims 2-5 and 18 merely add further mental steps and/or clarifies the types of data gathered from the insignificant pre-solution activity, and thus follow the same analysis above.
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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/JOHN R DOWNEY/Primary Examiner, Art Unit 3792
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