DETAILED ACTION
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 and 5-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 8,566,272 in view of Shiina, US-PGPUB 2017/0292968 and Amit, US Pat No. 11,006,860. Although the US Pat does not disclose various limitations, including calculating the walking information such as step length, excluding processing, height information estimated from atmospheric pressure sensor data, storage, transmissions, and predetermined threshold, and interpolation, etc., Shiina and Amit discloses the limitations as shown below. As such, it would have been obvious to use the teaching of Shiina with the US Pat, and discloses as claimed, so as to accurately determine the walking information to help the user with their health.
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.
4. Claims 1-3 and 5-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without being integrated into a practical application and do not include additional elements that amount to significantly more than the judicial exception.
Utilizing the two step process adopted by the Supreme Court (Alice Corp vs CLS Bank Int'l, US Supreme Court, 110 USPQ2d 1976 (2014) and the recent 101 guideline, Federal Register Vol. 84, No., Jan 2019)), determination of the subject matter eligibility under the 35 USC 101 is as follows: Specifically, the Step 1 requires claim belongs to one of the four statutory categories (process, machine, manufacture, or composition of matter). If Step 1 is satisfied, then in the first part of Step 2A (Prong one), identification of any judicial recognized exceptions in the claim is made. If any limitation in the claim is identified as judicial recognized exception, then proceeding to the second part of Step 2A (Prong two), determination is made whether the identified judicial exception is being integrated into practical application. If the identified judicial exception is not integrated into a practical application, then in Step 2B, the claim is further evaluated to see if the additional elements, individually and in combination, provide “inventive concept” that would amount to significantly more than the judicial exception. If the element and combination of elements do not amount to significantly more than the judicial recognized exception itself, then the claim is ineligible under the 35 USC 101.
Looking at the claims, the claims satisfy the first part of the test 1A, namely the claims are directed to one of the four statutory class, apparatus. In Step 2A Prong one, we next identify any judicial exceptions in the claims. In Claim 1 (as a representative example), we recognize that the limitations “calculates walking information indicating a walking state of a user by using position information of a consecutive section set on a
basis of behavior analysis information obtained as a result of analyzing behavior of the user,” is an abstract idea, as it recites steps that can be performed by mentally process.
Similar rejections are made for other independent and dependent claims. With the identification of abstract ideas, we proceed to Step 2A, Prong two, where with additional elements and taken as a whole, we evaluate whether the identified abstract idea is being integrated into a practical application.
In Step 2A, Prong two, the claims additionally recite “storage unit that stores the walking information that has been calculated,” and “the storage unit stores the walking information in association with at least one of the position information of the consecutive section or the behavior analysis information,” but said limitations are merely directed to storing the desired information. The claims additionally recite “a transmission unit that, transmits the position information to another information processing apparatus,” “transmit the second walking information to an information processing terminal,” but said limitations, recited at high level of generality, are merely directed to sending the desired information. The claims do not improve the functioning of any machines and do not improve other technology. At most, the claims are an improvement in the abstract idea of processing information related to the user and walking, but improved or new abstract idea is still an abstract idea, and not eligible under the 101. In short, the claims do not provide sufficient evidence to show that they are more than a drafting effort to monopolize the abstract idea. As such, the abstract idea is not integrated into a practical application. Consequently, with the identified abstract idea not being integrated into a practical application, we proceed to Step 2B and evaluate whether the additional elements provide “inventive concept” that would amount to significantly more than the abstract idea.
In Step 2B, the claims additionally recite “storage unit that stores the walking information that has been calculated,” and “the storage unit stores the walking information in association with at least one of the position information of the consecutive section or the behavior analysis information,” but said limitations are merely directed to storing the desired information, that is well-understood, routine and conventional. The claims additionally recite “a transmission unit that, transmits the position information to another information processing apparatus, and “transmit the second walking information to an information processing terminal,” but said limitations, recited at high level of generality, are merely directed to sending the desired information, that is also well-understood, routine and conventional.
In Summary, the claims recite abstract idea without being integrated into a practical application, and do not provide additional elements that would amount to significantly more than the abstract idea. As such, taken as a whole, the claims are ineligible under the 35 USC 101.
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.
Claims 1-3 and 5-19 are rejected under 35 U.S.C. 103 as being unpatentable over Shiina, US-PGPUB 2017/0292968 (hereinafter Shiina) in view of Amit, US Pat No. 11,006,860 (hereinafter Amit)
Regarding Claim 1, 16, 17. Shiina discloses an information processing apparatus (Abstract), comprising
a central processing unit (CPU) configured to:
acquire behavior analysis information that includes a result of analysis of a behavior of a first user; set a first consecutive section based on the behavior analysis information,
wherein the first consecutive section includes a plurality of pieces of first position information of the first user, determine, based on the plurality of pieces of first position information, first walking information indicating a walking state of the first user (Paragraph [0048], usage of GPS or another positioning device; Paragraph [0049], step count, walking speed; Paragraph [0051], daily walking energy consumption; Paragraphs [0076]- [0079], changes in walking; Paragraphs [0054], [0057], [0062], user walking patterns differing based on whether the user is walking straight, walking while talking on the phone, standing still, outdoor, indoor, direction, etc., Paragraph [0063], walking straight and stably; Paragraph [0080], depending on mood, etc., Paragraphs [0084]-[0085]; Paragraph [0099], depending on personality of the walker, etc., Paragraph [0027]; Figs. 1-2)
Shiina does not disclose interpolating the first walking information in a second consecutive section, wherein in the second consecutive section, one or more pieces of second position information of the first user are unacquirable, determine, based on the interpolation of the first walking information, second walking information of the first user in the second consecutive section; and transmit the second walking information to an information processing.
Amit discloses disclose interpolating the first walking information in a second consecutive section, wherein in the second consecutive section, one or more pieces of second position information of the first user are unacquirable, determine, based on the interpolation of the first walking information, second walking information of the first user in the second consecutive section; and transmit the second walking information to an information processing (Col. 2, lines 16-22; Col. 11, lines 11-24, Col. 12, lines 46-59; Col. 13, lines 13-29; Abstract)
At the time of the invention filed, it would have been obvious to a person of ordinary skill in the art to use the teaching of Amit in Shiina and interpolate the first walking information in a second consecutive section, wherein in the second consecutive section, one or more pieces of second position information of the first user are unacquirable, determine, based on the interpolation of the first walking information, second walking information of the first user in the second consecutive section, and transmit the second walking information to an information processing and thereby obtain accurate determination of walking condition.
Regarding Claim 2. Shiina discloses the walking information calculation unit calculates at least one of a step length, a number of steps, a walking distance, a walking speed, or an exercise amount of the user (Paragraph [0049])
Regarding Claim 3. Shiina discloses excluding, from the first consecutive section. a piece of first position information among the plurality of pieces of first position information; obtain, based on the exclusion of the piece of first position information, a third consecutive section that includes a set of pieces of first position information of the plurality of pieces of first position information; and determine the first walking information based on the set of pieces of first position information (Paragraph [0080], excluding the vj; Paragraph [0081], abnormal values excluded; Paragraph [0082], intentionally quickened walk excluded; Paragraph [0084], measurements walks excluded during bad weather)
Regarding Claim 5. Shiina discloses the CPU determine the first walking information based on external environment information of the first consecutive section (Paragraph [0048], straight and flat surface; Paragraphs [0064]-[0065], flat and curves; Paragraph [0084], excluding bad weather)
Regarding Claim 6. Shiina discloses CPU estimates height information based on atmospheric pressure sensor data and determine the first walking information based on the height information (Paragraph [0047], atmospheric pressure determines flat or sloping walking path, Paragraphs [0064]-[0065]).
Regarding Claim 7. Shiina discloses the CPU configured to determine height information based on a distance associated with the first consecutive section and determine the first walking information based on the height information, a number of steps of the first user and a step length of the first user (Paragraph [0047], atmospheric pressure determines flat or sloping walking path, Paragraphs [0064]-[0065]).
Regarding Claim 8. Shiina discloses a memory that stores the first walking information (Paragraph [0058]; Fig. 1)
Regarding Claim 9. Shiina discloses the memory to store the first walking information in association with at least one of the plurality of pieces of first position information or the behavior analysis information (Paragraph [0058])
Regarding Claim 10. Shiina discloses the memory is further configured to store walking information of a second user (Paragraph [0058]; Fig. 1), Amit discloses interpolating at least one of the first walking information of the second user in the second consecutive section, and determine, based on the interpolation of the at least one of the first walking information of the first user or the walking information of the second user, the second walking information of the first user in the second consecutive section (Col. 2, lines 16-22; Col. 11, lines 11-24, Col. 12, lines 46-59; Col. 13, lines 13-29; Abstract)
Regarding Claim 11. Shiina discloses a CPU configured to set, in a case, based on analysis of a specific behavior of the first user, a piece of first position information in the first consecutive section is associated with the first consecutive section and the analysis of the specific behavior is based on the behavior analysis information (Paragraph [0033], determining whether the walker is walking straight or not; Paragraph [0063])
Regarding Claim 12. Shiina discloses the CPU excluding process on the piece of first position information (Paragraph [0075], fixed period; Paragraph [0080], excluding the vj; Paragraph [0081], abnormal values excluded; Paragraph [0082], intentionally quickened walk excluded; Paragraph [0084], measurements walks excluded during bad weather)
Regarding Claim 13. Shiina discloses a CPU transmits the first walking information based on the determination to an information processing terminal (Fig. 1; Paragraph [0074], transmits to analysis apparatus 50)
Regarding Claim 14. Shiina discloses the CPU configured to determine that an amount of change between the first walking information and past walking information of the first user is larger than a threshold value, and transmits the first walking information to the information processing terminal based on the determination that the amount of change between the first walking information and the past walking information is larger than the threshold value (Paragraphs [0074]-[0078], sent to terminal holder 40, if tendency toward reduction to a certain degree or more, which obviously involve a predetermined threshold value to determine the degree that goes beyond certain degree of more, to trigger the transmission of information)
Regarding Claim 15. Shiina discloses the threshold value is different for each user of a plurality of users, the plurality of users is associated with a plurality of information processing terminals, and the plurality of information processing terminals includes the information processing terminal (Paragraph [0099]), where the degree of reduction would obviously be different depending on the walking ability, age or personality)
Regarding Claims 18 and 19. Shiina discloses an information processing system (Abstract), comprising:
a first information processing apparatus, a second information processing apparatus, (Fig. 1, mobile device), the first information processing apparatus includes a first central processing unit (CPU) configured to analyze a behavior of a user and acquire behavior analysis information that includes a result of the analysis of the behavior of the user, set a first consecutive section based on the behavior analysis information, wherein the first consecutive section includes a plurality of pieces of first position information of the user determine, based on the plurality of pieces of first position information, first walking information indicating a walking state of the user (Paragraphs [0054], [0057], [0062], user walking patterns differing based on whether the user is walking straight, walking while talking on the phone, standing still, outdoor, indoor, direction, etc., Paragraph [0063], walking straight and stably; Paragraph [0080], depending on mood, etc., Paragraphs [0084]-[0085]; Paragraph [0099], depending on personality of the walker, etc., Paragraph [0027]; Figs. 1-2)(Fig. 2, behavior to walk straight and stably),
transmits the position information to a second information processing apparatus (Paragraph [0074], transmits to analysis apparatus 50, Note: the claims do not say transmit “only” in which the specific behavior has been analyzed); and the second information processing apparatus includes a second CPU configured to determine walking information of the user in the second consecutive section (Paragraphs [0075]-[0079]),
Shiina does not disclose interpolate the first walking information in a second consecutive section, wherein in the second consecutive section, one or more pieces of second position information of the user are unacquirable; and transmit, based on the interpolation of the first walking information, the second consecutive section position to the second information processing apparatus, and transmit the second walking information to an information processing terminal.
Amit discloses disclose interpolating the first walking information in a second consecutive section, wherein in the second consecutive section, one or more pieces of second position information of the first user are unacquirable, determine, based on the interpolation of the first walking information, second walking information of the first user in the second consecutive section; and transmit the second walking information to an information processing (Col. 2, lines 16-22; Col. 11, lines 11-24, Col. 12, lines 46-59; Col. 13, lines 13-29; Abstract)
At the time of the invention filed, it would have been obvious to a person of ordinary skill in the art to use the teaching of Amit in Shiina and interpolate the first walking information in a second consecutive section, wherein in the second consecutive section, one or more pieces of second position information of the user are unacquirable; and transmit, based on the interpolation of the first walking information, the second consecutive section position to the second information processing apparatus, and transmit the second walking information to an information processing terminal, and thereby obtain accurate determination of walking condition.
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot in view of new grounds of rejection. With respect to 101 rejection, the Examiner respectfully disagrees with the following reason.
The Section 101 provides that anyone who “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. The Supreme Court has repeatedly emphasized that patent protection should not extend to claims that monopolize “the basic tools of scientific and technological work.” Gottschalk vs Benson, 409 US 63, 67, 93 S. Ct. 253, 34 L. Edd. 2d 273 [175 USPQ 673] (1972)). Accordingly, laws of nature, natural phenomena, and abstract ideas are not patent-eligible subject matter. Alice, 134 S. Ct. at 2354.
The 101 subject matter eligibility analysis begins with the claimed language (see Synopsis vs Mentor Graphics, 120 USPQ2d 1473 839 F.3d 1138 (Fed. Cir. 2016), Id., at 1481 “The 101 inquiry must focus on the language of the Asserted Claims themselves.”), followed by identifying the focus or underlying invention (see Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 [103 USPQ2d 1425] (Fed. Cir. 2012), Id., at 1431-1432, “Subsequently, however, we explained in CyberSource Corp. v. Retail Decisions, Inc. that we look not just to the type of claim but also “to the underlying invention for patent-eligibility purposes.” 654 F.3d 1366, 1374 [99 USPQ2d 1690] (Fed. Cir. 2011). Looking at the claims in the instant application, we recognize the focus of the claimed invention is “determining the walking information of a user,” an abstract idea.
Here, note that the Supreme Court has emphatically rejected the idea that claims become patent eligible simply because they disclose a specific solution to a particular problem (Supreme Court, Alice Corp v CLS Bank Int’l, 110 USPQ 2d 1976 at 1985; DDR Holding, 773 F.3d at 1265)). In other words, even if the claims had recited specific abstract ideas for “determining the walking information of a user,” would not have made the claims eligible under 35 USC 101. In the instant application, the claims are generically recited, reciting generic limitations such as “behavior analysis information”, “walking information”, etc.
Additionally, note that the novelty of the abstract idea itself, also does not help in overcoming the 101 rejection (see Flook, In Gottschalk vs Benson, Id., at 195, “we held that the discovery of a novel and useful mathematical formula may not be patented,” Indeed, the novelty of the mathematical algorithm is not a determining factor at all.”). This means that any novelty or non-conventionality in the abstract idea of “determining the walking information of a user,” will not be a determining factor. New abstract idea is still an abstract idea (see Synopsis, 839 F.3d 1138, 120 USPQ2d, 1473 (2016), Id., at 1483, “a claim for a new abstract idea is still an abstract idea. The search for a 101 inventive concept is thus distinct from demonstrating 102 novelty.”).
Having said that, the subject matter eligibility analysis continues with the examination of the additional elements with respect to the practical application and significantly more criteria. Looking at the claimed invention, the claims additionally recite
various limitations discussed above,” but said limitations are merely directed to recitation of general-purpose computer and storing of data, and insignificant post-solution activity, recited at high level of generality that are well-understood, routine and conventional.
Furthermore, nothing in the claims, understood in light of the original disclosure, requires anything other than off-the-shelf, conventional general-purpose computer and storage for collecting data, analyzing and obtaining the desired information (unlike Thales 85- F.3d 1343, 121 USPQ2d 1898 (2017), Id., at 1898 where the inertial sensors are used in non-conventional manner for measuring position and orientation).
Furthermore, the claims do not improve the functioning of any machines. The claims in the instant application with the cpu, memory, information processing terminal, the focus of the claims is not on such an improvement in said machines and devices, etc as tools (as in Enfish), or focused on a specific asserted improvement in “determining the walking information of a user,” in non-abstract way (or improvement in computer animation in non-abstract way, without animators able to do to same, as in McRo), but on certain independently abstract ideas that use those machines and devices, etc as tools. In other words, the Applicant is basically claiming the algorithm itself.
Furthermore, the claims also do not improve any technology. At most, the claim is an improvement in the abstract idea of “determining the walking information of a user.” However, improved or new abstract idea is still an abstract idea, and not eligible.
Finally, limiting the claims to the technological environment of walking analysis, without the abstract idea being integrated into a practical application or without the additional elements amounting to significantly more than the abstract idea, is insufficient to transform them into patent-eligible applications of the abstract ideas (Flook established that limiting an abstract idea to one field of use or adding token post-solution components did not make the concept patentable” Bilski v. Kappos, 95 USPQ2d 1001, 1010 (U.S. 2010).
For the reasons given above, the abstract idea is not integrated into a practical application and the additional elements do not amount significantly more than the abstract idea.
In Summary, the claims recite the abstract idea of determining the walking information without being integrated into a practical application, and do not provide additional elements that would amount to significantly more than the abstract idea. As such, taken as a whole, the claims are ineligible under the 35 USC 101.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HYUN D PARK whose telephone number is (571)270-7922. The examiner can normally be reached 11-4.
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/HYUN D PARK/Primary Examiner, Art Unit 2857
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