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 Amendment
In response to the preliminary amendment filed on 6/1/2023, claim 4 has been amended, and new claims 9 and 10 are added. Claims 1-10 are pending and under examination.
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: “first index information input unit,” “second index information input unit,” and “exercise intensity setting unit” in claim 11.
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 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 1-10 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 recites the phrase "a plurality of pieces of index information input by the first index information input unit and the second index information input unit" in lines 10-12. The limitation “a plurality of pieces of index information input” is ambiguous which renders the claim indefinite because it is unclear whether the limitation refers to the inputted “normal-time subjective index information,” “objective index information,” “normal-time objective index information,” or “exercise-time objective index information” in claim 1 or another new “index information.” For the reason, dependent claims thereof and another independent claim 8 are rejected as well.
Claim 2 recites the limitation “thereafter”. It is vague which renders the claim indefinite because it is unclear what the limitation refers to. For the reason, claims 2, 4, 5, 7, 9, 10 and dependent claims thereof are rejected as well.
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.
Claim 8 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the preamble “An exercise habituation assisting program for causing a computer to function as” is directed to software under the broadest reasonable interpretation, and therefore is not patent eligible as software per se. See MPEP 2106.03(I).
Claims 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to judicial exception(s) without significantly more.
[STEP 1] The claim recites at least one step or structure. Thus, the claim is to a process or product, which is one of the statutory categories of invention (Step 1: YES).
[STEP2A PRONG I] The claim(s) 1 and 8 recite(s):
a first index information input unit/means configured to input normal-time subjective index information including a degree of at least one of fatigue, sleep disturbance, and a depressive symptom felt by a patient at normal times when the patient is not exercising;
a second index information input unit/means configured to input objective index information including at least one of normal-time objective index information including at least one of a physical function of the patient at the normal times, a result of diagnosis by a doctor, and treatment content and exercise-time objective index information related to a physical function of the patient during exercise; and
an exercise intensity setting unit/means configured to set exercise intensity based on a plurality of pieces of index information input by the first index information input unit and the second index information input unit.
The non-highlighted aforementioned limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation between people but for the recitation of generic computer components. That is, other than reciting “unit/means,” and arguably “input [data],” nothing in the claim element precludes the step from practically being performed between people. For example, but for the recited language, the step in the context of this claim encompasses a coach preparing a fitness plan based on client’s data2.
If a claim limitation, under its broadest reasonable interpretation, covers managing interactions between people, then it falls within the “Organization of Human Activity” grouping of abstract ideas.
Alternatively, the non-highlighted aforementioned, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting the aforementioned additional elements, nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the recited language, the step in the context of this claim encompasses a coach preparing a fitness plan based on client’s data.
Accordingly, the claim recites a judicial exception, and the analysis must therefore proceed to Step 2A Prong Two.
[STEP2A PRONG II] This judicial exception is not integrated into a practical application. In particular, the claim only recites the additional element(s) – “unit/means” and “input [data].”
The “unit/means” in the aforementioned steps is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component.
The claim recites the following additional elements: “input [data].” The additional element step is recited at a high level of generality, and amounts to mere data gathering, which is a form of insignificant extra-solution activity. Each of the additional limitations is no more than mere instructions to apply the exception using a generic computer component.
Accordingly, the additional element(s) do(es) not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea and the claim is therefore directed to the judicial exception. (Step 2A: YES).
[STEP2B] The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform the aforementioned steps amounts to no more than mere instructions to apply the exception using a generic computer component, which cannot provide an inventive concept.
As noted previously, the claim as a whole merely describes how to generally “apply” the aforementioned concept in a computer environment. Thus, even when viewed as a whole, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea.
As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform the aforementioned step(s) amounts to no more than adding insignificant extra-solution activity to the judicial exception, which cannot provide an inventive concept.
Under the 2019 PEG, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be reevaluated in Step 2B. Here, the aforementioned step(s) was/were considered to be extra-solution activity in Step 2A, and thus it is reevaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field. The background of the specification does not provide any indication that the additional element(s) is/are anything other than a generic, off-the-shelf computer component, and the Symantec, TLI, and OIP Techs. court decisions cited in MPEP 2106.05(d)(II) indicate that mere collection or receipt of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Accordingly, a conclusion that the aforementioned step(s) is/are well-understood, routine, conventional activity is supported under Berkheimer Option 2.
As noted previously, the claim as a whole merely describes how to generally adding insignificant extra-solution activity to the judicial exception. Thus, even when viewed as a whole, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea.
The claim is not patent eligible. (Step 2B: NO).
Claim(s) 2-7, 9, and 10 is/are dependent on supra claim(s) and includes all the limitations of the claim(s). Therefore, the dependent claim(s) recite(s) the same abstract idea. The claims do not recite any additional limitation. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Thus, even when viewed as a whole, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Blevins (U.S. Patent Application Publication 2019/0247718).
Regarding claims 1 and 8, Blevins discloses an exercise habituation assisting system/program (Abstract) characterized by comprising:
a first index information input unit configured to input normal-time subjective index information including a degree of at least one of fatigue, sleep disturbance, and a depressive symptom felt by a patient at normal times when the patient is not exercising (352 in FIG. 3B discloses collection of initial assessment prior to exercise, i.e., normal-time index information; ¶135 discloses normal-time subjective index information: “historical recovery and workload.”; see also “subjective feedback” in ¶58; );
a second index information input unit configured to input objective index information including at least one of normal-time objective index information including at least one of a physical function of the patient at the normal times, a result of diagnosis by a doctor, and treatment content and exercise-time objective index information related to a physical function of the patient during exercise (352 in FIG. 3B discloses collection of initial assessment prior to exercise, i.e., normal-time index information; ¶135 discloses various index parameters; ¶109 discloses one of the objective index information: “Weakpoints refer to the point in a lift where a lifter is weakest. This is determined by the client through knowledge of his or her training history and is gathered in the initial questionnaire.”); and
an exercise intensity setting unit configured to set exercise intensity based on a plurality of pieces of index information input by the first index information input unit and the second index information input unit (358 in FIG. 3B; ¶139: “These are filled out each day or week to create real-time adjustments. These scores could be assessed over any period to further alter training decisions made by the system.”;).
Regarding claim 2, Blevins further discloses that the exercise intensity setting unit initially sets the exercise intensity based on the objective index information input by the second index information input unit (358 in FIG. 3B; ¶139: “These are filled out each day or week to create real-time adjustments. These scores could be assessed over any period to further alter training decisions made by the system.”), and adjusts the exercise intensity based on the normal-time subjective index information input by the first index information input unit during treatment for a lifestyle disease thereafter (¶50: “The feedback may be a fatigue information of the client 110A… Ongoing adjustments to the fitness plan are made based on the feedback”; ¶66 discloses the treatment duration: ”macro cycle/training period” and “block”).
Regarding claim 3, Blevins further discloses that the first index information input unit inputs the normal-time subjective index information and exercise-time subjective index information related to difficulty of exercise felt by the patient during exercise; and the exercise intensity setting unit adjusts the exercise intensity based on the normal-time subjective index information and the exercise-time subjective index information input by the first index information input unit during the treatment for the lifestyle disease after initial setting of the exercise intensity (¶139 discloses exercise-time subject index information results in adjusting the exercise intensity: “if a client consistently reports of being fatigued, then the baseline amount of work could be lowered from the original plan.”; ¶179: “if the fatigue level of a user is high, then exercise information is modified/defined to include exercises of lesser intensity.”).
Regarding claim 4, Blevins further discloses that the exercise intensity setting unit initially sets the exercise intensity based on the objective index information input by the second index information input unit, determines necessity of adjusting the exercise intensity based on the objective index information input by the second index information input unit during the treatment for the lifestyle disease thereafter, and adjusts the exercise intensity based on subjective index information input by the first index information input unit when it is determined that the exercise intensity needs to be adjusted (¶50: “in the case of an injury to the client 110A, a rehabilitation plan may be worked out or the fitness plan may be adapted based on degree of injury as understood from an injury report including the injury information.”).
Regarding claim 5, Blevins further discloses that the exercise intensity setting unit initially sets the exercise intensity based on the objective index information input by the second index information input unit, determines necessity of adjusting the exercise intensity based on the normal-time subjective index information input by the first index information input unit during the treatment for the lifestyle disease thereafter, and adjusts the exercise intensity based on the objective index information input by the second index information input unit when it is determined that the exercise intensity needs to be adjusted (¶139: “if a client consistently reports of being fatigued, then the baseline amount of work could be lowered from the original plan.”).
Regarding claim 6, Blevins further discloses that the first index information input unit inputs the normal-time subjective index information and exercise-time subjective index information related to difficulty of exercise felt by the patient during exercise (¶135 discloses normal-time subjective index information: “historical recovery and workload.”; ¶139 discloses exercise-time subjective index information, i.e., fatigue); and the exercise intensity setting unit determines necessity of adjusting the exercise intensity based on the normal-time subjective index information and the exercise-time subjective index information input by the first index information input unit during the treatment for the lifestyle disease after initial setting of the exercise intensity (¶139: “if a client consistently reports of being fatigued, then the baseline amount of work could be lowered from the original plan.”).
Regarding claim 7, Blevins further discloses that the exercise intensity setting unit initially sets the exercise intensity based on the normal-time subjective index information input by the first index information input unit (¶135 discloses normal-time subjective index information: “historical recovery and workload.”), and adjusts the exercise intensity based on the objective index information input by the second index information input unit during the treatment for the lifestyle disease thereafter (¶50: “in the case of an injury to the client 110A, a rehabilitation plan may be worked out or the fitness plan may be adapted based on degree of injury as understood from an injury report including the injury information.”).
Regarding claim 9, Blevins further discloses that the exercise intensity setting unit initially sets the exercise intensity based on the objective index information input by the second index information input unit, determines necessity of adjusting the exercise intensity based on the objective index information input by the second index information input unit during the treatment for the lifestyle disease thereafter, and adjusts the exercise intensity based on subjective index information input by the first index information input unit when it is determined that the exercise intensity needs to be adjusted (¶50: “in the case of an injury to the client 110A, a rehabilitation plan may be worked out or the fitness plan may be adapted based on degree of injury as understood from an injury report including the injury information.”; ¶139 discloses exercise-time subject index information results in adjusting the exercise intensity: “if a client consistently reports of being fatigued, then the baseline amount of work could be lowered from the original plan.”;).
Regarding claim 10, Blevins further discloses that the exercise intensity setting unit initially sets the exercise intensity based on the objective index information input by the second index information input unit, determines necessity of adjusting the exercise intensity based on the objective index information input by the second index information input unit during the treatment for the lifestyle disease thereafter (¶50: “in the case of an injury to the client 110A, a rehabilitation plan may be worked out or the fitness plan may be adapted based on degree of injury as understood from an injury report including the injury information.”), and adjusts the exercise intensity based on subjective index information input by the first index information input unit when it is determined that the exercise intensity needs to be adjusted (¶139 discloses exercise-time subject index information results in adjusting the exercise intensity: “if a client consistently reports of being fatigued, then the baseline amount of work could be lowered from the original plan.”;).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J HONG whose telephone number is (571)272-0993. The examiner can normally be reached 9AM-5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Vasat can be reached at (571) 270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
THOMAS J. HONG
Primary Examiner
Art Unit 3715
/THOMAS J HONG/ Primary Examiner, Art Unit 3715
1 The examiner acknowledges that the claimed “unit” and “means” have corresponding structural support from the specification. For example, Figure 2 illustrates the three units, i.e., “first index information input unit,” “second index information input unit,” and “exercise intensity setting unit” as software functional blocks. The specification further describes that such unit are embedded in storage medium. See Spec. ¶ 17.
2 Blevins also describes such process as merely mimicking coach’s logic for automation. Blevins (U.S. Patent Application Publication 2019/0247718), ¶136.