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 .
Information Disclosure Statement
The information disclosure statement filed 08/23/2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
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 35-54 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 significantly more.
Specifically, representative Claim 35 recites:
A handheld computer comprising:
a recording device on the handheld computer;
at least one processor configured to:
receive, from the recording device, information relating to a measurement of an environmental condition made by a user of the handheld computer using a probe,
wherein the measurement is made using the probe, wherein the measurement comprises a temperature, a humidity, a pressure, a water quality, a gas indication, a radiation level, or an indication of contamination; and
in response to determining, based on the information, that at least one action by the user with the probe includes at least one deviating action by the user from a stored monitoring protocol (Note that as written, the claimed apparatus does not determine the deviating action, as it is not a positively recited limitation of the handheld computer. Examiner suggests removing the “in response to language” and making the “determining” and “guiding” steps distinct. To promote compact prosecution, the Examiner will interpret the two to be separate steps performed by the handheld computer.), guide the user to perform a corrective action to correct the at least one deviating action by the user.
The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements”.
Under the Step 1 of the eligibility analysis, we determine whether the claims are to a statutory category by considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter. The above claim is considered to be in a statutory category (machine).
Under the Step 2A, Prong One, we consider whether the claim recites a judicial exception (abstract idea). In the above claim, the highlighted portion constitutes an abstract idea because, under a broadest reasonable interpretation, it recites limitations that fall into/recite an abstract idea exceptions. Specifically, under the 2019 Revised Patent Subject matter Eligibility Guidance, it falls into the grouping of subject matter when recited as such in a claim limitation, that covers mental processes – concepts performed in the human mind including an observation, evaluation, judgement, and/or opinion.
For example, steps of “in response to determining, based on the information, that at least one action by the user with the probe includes at least one deviating action by the user from a stored monitoring protocol, guide the user to perform a corrective action to correct the at least one deviating action by the user (provide information based on a determination made from an observation)” are treated by the Examiner as belonging to mental process grouping.
Similar limitations comprise the abstract ideas of Claims 41 and 53.
Next, under the Step 2A, Prong Two, we consider whether the claim that recites a judicial exception is integrated into a practical application.
In this step, we evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
The above claims comprise the following additional elements:
Claim 35: A handheld computer comprising: a recording device on the handheld computer; at least one processor configured to: receive, from the recording device, information relating to a measurement of an environmental condition made by a user of the handheld computer using a probe, wherein the measurement is made using the probe, wherein the measurement comprises a temperature, a humidity, a pressure, a water quality, a gas indication, a radiation level, or an indication of contamination;
Claim 41: A method of operating a handheld computer comprising a recording device,;
Claim 53: A non-transitory computer readable storage medium encoded with computer- executable instructions that, when executed by a processor, cause a handheld computer to perform a method.
The additional element in the preamble of “A handheld computer/method of operating a handheld computer ” is not qualified for a meaningful limitation because it only generally links the use of the judicial exception to a particular technological environment or field of use. A recording device on the handheld computer and to receive, from the recording device, information relating to a measurement of an environmental condition made by a user of the handheld computer using a probe, wherein the measurement is made using the probe, wherein the measurement comprises a temperature, a humidity, a pressure, a water quality, a gas indication, a radiation level, or an indication of contamination represents a mere data gathering step and only adds an insignificant extra-solution activity to the judicial exception. A non-transitory computer readable storage medium (generic memory) and a processor (generic processor) are generally recited and are not qualified as particular machines.
In conclusion, the above additional elements, considered individually and in combination with the other claim elements do not reflect an improvement to other technology or technical field, and, therefore, do not integrate the judicial exception into a practical application. Therefore, the claims are directed to a judicial exception and require further analysis under the Step 2B.
However, the above claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception (Step 2B analysis).
The claims, therefore, are not patent eligible.
With regards to the dependent claims, claims 36-40, 42-52, and 54 provide additional features/steps which are part of an expanded algorithm, so these limitations should be considered part of an expanded abstract idea of the independent claims.
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 35-54 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4-6, 9, 14-19, 21, 22, 24, 27, 30, and 31 of U.S. Patent No. 11715114. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 35-54 are anticipated by claims 1, 2, 4-6, 9, 14-19, 21, 22, 24, 27, 30, and 31 of the ‘114 patent as follows:
Claim 35 is anticipated by claim 1 of the ‘114 patent.
Claim 36 is anticipated by claim 2 of the ‘114 patent.
Claim 37 is anticipated by claim 4 of the ‘114 patent.
Claim 38 is anticipated by claim 5 of the ‘114 patent.
Claim 39 is anticipated by claim 6 of the ‘114 patent.
Claim 40 is anticipated by claim 9 of the ‘114 patent.
Claim 41 is anticipated by claim 14 of the ‘114 patent.
Claim 42 is anticipated by claim 15 of the ‘114 patent.
Claim 43 is anticipated by claim 16 of the ‘114 patent.
Claim 44 is anticipated by claim 17 of the ‘114 patent.
Claim 45 is anticipated by claim 18 of the ‘114 patent.
Claim 46 is anticipated by claim 19 of the ‘114 patent.
Claim 47 is obvious in view of claim 19 of the ‘114 patent (See ‘114, Col. 12 Line 34, the corrective action may indicate that changes to the environment should be performed (e.g., increase air conditioning)).
Claim 48 is anticipated by claim 21 of the ‘114 patent.
Claim 49 is anticipated by claim 22 of the ‘114 patent.
Claim 50 is anticipated by claim 24 of the ‘114 patent.
Claim 51 is anticipated by claim 27 of the ‘114 patent.
Claim 52 is anticipated by claim 27 of the ‘114 patent (See ‘114, Col. 12 Line 34, the corrective action may indicate that changes to the environment should be performed (e.g., increase air conditioning)).
Claim 53 is anticipated by claim 30 of the ‘114 patent.
Claim 54 is anticipated by claim 31 of the ‘114 patent.
The Examiner notes that there are currently no prior art rejections (discussed more below)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mobley et al. (US 20130301673 A1), hereinafter “Mobley”, discloses a Method And Apparatus For Measuring, Storing And Retrieving Food Temperature Data, and is considered by the Examiner to be the closest prior art of record. Although Mobley teaches a mobile device that measures and records data through a probe (see Mobley Fig. 1), Mobley, as best understood by the Examiner, does not fairly teach or suggest to guide the user to perform a corrective action to correct the at least one deviating action by the user, when it is determined that the user has taken action that deviates from the stored monitoring protocol.
Wallace (US 7026929 B1) discloses a Food Information Monitoring System, but does not resold the deficiency of Mobley of guiding the user to perform a corrective action to remedy a deviation from protocol.
Bernstein (US 9625327 B1) discloses a Device And Method For Logging Data From An Inspection Probe To A Computing Device.
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/CHRISTIAN T BRYANT/Examiner, Art Unit 2863 11/14/2025