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 Amendment
The following Office Action is in response to amendments filed on 01/02/2026. Claims 9-10, 13-17, 21-24, and 26-31 are pending in the application. Claims 9-10, 13-17, 21-24, and 26-31 have been rejected as set forth below.
Claim Objections
Claim 29 is objected to because of the following informalities: after the phrase “three markers” in line 3, the phrase “is emitted” needs to be inserted. Appropriate correction is required.
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.
Claims 9-10, 13-17, 21-24 and 26-31 are 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 9 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, for the following reason. Claim 9 recites: “wherein data from the accelerometer regarding proximity of the runner’s foot to each of the at least three markers is transmitted to the at least one processor”. However, nowhere in the original specification support for such limitation has been provided. The specification fails to provide any description regarding the accelerometer providing any data regarding proximity of the runner’s foot to any and each of the at least three markers. As such, this limitation is considered New Matter. Further clarification, appropriate corrections and specific citations within the specification where support for such limitation is found, are respectfully requested. Claims 10, 13-17, 21-24, 26 and 29 are also rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, by virtue of dependency on claim 9.
Claim 27 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, for the following reason. Claim 27 recites: “wherein distance the runner’s foot is from each light is determined by the monitoring device attached to the runner’s shoe, wherein information from the monitoring device is communicated to the at least one processor”. However, nowhere in the original specification, support is provided regarding the distance the runner’s foot is from each light being determined by the monitoring device. Furthermore, nowhere in the original specification, support is provided for the information from the monitoring device being communicated to the at least one processor of the monitoring device (please note that claim 27, in lines 5-8, recites: “a monitoring device…comprising: at least one processor”). As such, these limitations are considered New Matter. Further clarification, appropriate corrections and specific citations within the specification where support for such limitations are found, are respectfully requested. Claim 28 is also rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, by virtue of dependency on claim 27.
Claim 30 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, for the following reason. Claim 30 recites: “wherein data from the accelerometer regarding proximity of the runner’s foot to each of the at least three locations is transmitted to the at least one processor”. However, nowhere in the original specification support for such limitation has been provided. The specification fails to provide any description regarding the accelerometer providing any data regarding proximity of the runner’s foot to any and each of the at least three locations. As such, this limitation is considered New Matter. Further clarification, appropriate corrections and specific citations within the specification where support for such limitation is found, are respectfully requested. Claim 31 is also rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, by virtue of dependency on claim 30.
Claim 31 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, for the following reason. Claim 31 recites: “wherein when the runner’s foot lands near each of the at least three locations a sound, light, and/or vibration is emitted that corresponds to when the runner should step on or near one of the at least three locations”. Nowhere in the original specification support for such limitation is provided. Only, ¶ [0123] of the specification, recites: “Clause 6 - The method of clauses 1-5, further including emitting a sound, light, and/or vibration that corresponds with the moment a runner should step on or near a marker and emitting a sound, light, and/or vibration when a step is landed by the runner”. No other paragraphs within the specification provides any further description or explanation regarding emitting a sound, light, and/or vibration that corresponds to when the runner should step on or near one of the at least three locations, when the runner’s foot lands near each of the at least three locations, the sound, light, and/or vibration and/or how such step would be done. As stated above, according to the first paragraph of 35 U.S.C. 112(a): “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”. As such, this limitation is considered New Matter. Further clarification, appropriate corrections and specific citations within the specification where support for such limitation is found, are respectfully requested.
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 9-10, 13-17, 21-24 and 26-31 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 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reason. Claim 9 recites: “wherein data from the accelerometer regarding proximity of the runner’s foot to each of the at least three markers is transmitted to the at least one processor”. However, it is unclear how the accelerometer provides/detects data regarding proximity of the runner’s foot to each of the at least three markers. As stated above, the original specification also does not provide any description regarding the accelerometer providing any data regarding the proximity of the runner’s foot to each of the least three markers (see rejection of claim 9 under 35 U.S.C. 112(a) above). As such, it is unclear how data regarding proximity of the runner’s foot to each of the at least three markers is determined by the accelerometer or from the accelerometer. Further clarification and appropriate corrections are respectfully requested. Claims 10, 13-17, 21-24, 26 and 29 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, by virtue of dependency on claim 9.
Claim 26 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reason. Claim 26 recites: “wherein (Vi) is zero, wherein for all subsequent steps, (Vi) equal (Vf) of a preceding step”. However, it is unclear for which step the (Vi) is zero. Further clarification and appropriate corrections are respectfully requested.
Claim 27 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reason. Claim 27 recites: “wherein information from the monitoring device is communicated to the at least one processor”, and it is unclear how information from the monitoring device that comprises the at least one processor is communicated to the at least one processor. Further clarification and appropriate corrections are respectfully requested. Claim 28 is also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, by virtue of dependency on claim 27.
Claim 30 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reason. Claim 30 recites: “wherein data from the accelerometer regarding proximity of the runner’s foot to each of the at least three locations is transmitted to the at least one processor”. However, it is unclear how the accelerometer provides/detects data regarding proximity of the runner’s foot to each of the at least three locations. As stated above, the original specification also does not provide any description regarding the accelerometer providing any data regarding the proximity of the runner’s foot to each of the least three locations (see rejection of claim 30 under 35 U.S.C. 112(a) above). As such, it is unclear how data regarding proximity of the runner’s foot to each of the at least three locations is determined by the accelerometer or from the accelerometer. Further clarification and appropriate corrections are respectfully requested. Claim 31 is also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, by virtue of dependency on claim 30.
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 9-10, 13-17, 21-24 and 26-31 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A, Prong 1
Each of Claims 9-10, 13-17, 21-24 and 26-31 recites at least one step or instruction for observation, evaluation, and/or judgement of motion parameters of a user/runner, performing mathematical calculations using such parameters and providing guidance to the user for performance improvements, which are grouped as a mental process under the 2019 PEG, a mathematical concept under the 2019 PEG or certain methods of organizing human activity.
A detailed evaluation of each claim has been shown below. Please note that the underlined portions show the abstract idea, the bolded portions show additional elements, and the statement within the parenthesis clarify the specific abstract idea of the specific limitation.
Specifically, the claims recite:
9. (Currently Amended) A method for training a runner to reduce energy output and reduce momentum change of the runner by training the runner to minimize step by step difference between a final pivot velocity (Vf) of the runner’s torso and an initial pivot velocity (Vi) of the runner’s torso, the method comprising the steps of:
providing a monitoring device comprising: at least one accelerometer; at least one power source; at least one processor; at least one conducting wire, wherein the at least one conducting wire is connected to the accelerometer, wherein the at least one processor receives data from the at least one accelerometer;
determining, by the at least one processor using data from the at least one accelerometer, momentum change based on torso velocity of the runner in a horizontal direction, wherein the determining step further comprises the steps of: measuring g-force for at least one of the runner's feet; measuring stride time for at least one of the runner's feet; measuring pivot time for at least one of the runner's feet; calculating stride length; and calculating step velocity (i.e. by visually observing and runner’s performance and mentally considering known parameters (i.e. g-force value), using a watch/clock, and determining and calculating through mathematical calculations and formulas, stride time, pivot time, stride length, stride velocity and momentum change; involve observation which is grouped as a mental process under 2019 PEG, and involve mathematical formulas or equations and mathematical calculations which is grouped as a mathematical concept under 2019 PEG); and
at least three markers, wherein a first marker is a first distance from a second marker, the second marker is a second distance from a third marker (i.e. by placing various objects or drawing lines, spaced apart from each other, on a surface (for example, using chalk on concrete or asphalt); involves managing interactions between people including teachings and following instructions, which are grouped as certain methods of organizing human activity under 2019 PEG), wherein data from the accelerometer regarding proximity of the runner’s foot to each of the at least three markers is transmitted to the at least one processor, wherein the at least one processor analyzes and processes the data from the accelerometer (i.e., by visually observing position of the runner’s foot near each of the at least three markers (which can be drawn or be in the form of tapes positioned apart from each other), mentally noting when the runner’s foot is proximate to the at least three markers and mentally processing and analyzing the observations; involve observation, evaluation and judgement which are grouped as mental processes under 2019 PEG).
10. (Currently Amended) The method of claim 9, wherein the method further comprises the steps of determining whether the runner has accelerated or decelerated between steps by comparing an initial pivot velocity (Vi) of the runner's torso to a final pivot velocity (Vf) of the runner's torso (i.e. observing the runner’s performance and measuring various parameters (for instance, using a watch/clock and a tape measure) and perform mathematical calculations using mathematical formulas; involve observation, evaluation and judgement which are grouped as mental processes under 2019 PEG and involve mathematical formula and mathematical calculations which are grouped as mathematical concepts under 2019 PEG).
13. (Currently Amended) The method of claim 10, wherein the number of markers corresponds to at least 10 steps by the runner (same as claim 11 above).
14. (Currently Amended) The method of claim 10, wherein the monitoring device further comprises a shoe attachment,
wherein a speed profile run comprises: determining, while the runner runs at least a first speed, momentum change based on the torso speed of the runner in the horizontal direction; determining, while the runner runs at least a second speed, momentum change based on the torso speed of the runner in the horizontal direction; and wherein the at least a second speed is faster than the at least a first speed (same as claim 9 above).
15. (Currently Amended) The method of claim 9, wherein each of the at least three markers have at least three lights, wherein the at least three lights are a first light, a second light, and a third light, wherein the first light designates that the runner should take shorter steps, the second light designates that the runner should take longer steps, and the third light designates a correct step (i.e., by visually observing the user and landing of the user’s foot near each of the three locations and orally generating different sounds or verbally announcing different words, each designating shorter, longer or correct step length, based on the user’s foot landing near each of the three locations; involves observation, evaluation, judgement and opinion which are grouped as mental processes under 2019 PEG).
16. (Currently amended) The method of claim 9, wherein the method further comprises the step of: creating a running timeline by collecting between about 100 and about 1000 data points per second, wherein data is collected over an entire course of a run (same as claim 9 above, please note that such timeline can be mentally created and/or drawn on a piece of paper (the collection of such number of data points is done by the sensor)).
17. (Currently Amended) The method of claim 9, wherein the runner is running on a treadmill, and a metronome is used for timing.
21. (Currently Amended) The method of claim 9, wherein the determining step further comprises the steps of: calculating the initial pivot velocity (Vi); calculating the final pivot velocity (Vf); and calculating momentum change (same as claim 9 above).
22. (Currently Amended) The method of claim 21, wherein the determining step further comprises the steps of: calculating step time; and calculating step length (same as claim 9 above).
23. (Currently Amended) The method of claim 22, wherein the determining step further comprises the steps of: calculating foot pivot length; calculating foot air time; and calculating foot air length (same as claim 9 above).
24. (Currently Amended) The method of claim 23, wherein the determining step further comprises the steps of: calculating foot air velocity; and calculating energy (same as claim 9 above).
26. (Currently Amended) The method of claim 9, wherein (Vi) is zero, wherein for all subsequent steps, (Vi) equals (Vf)of a preceding step, wherein when (Vf) is greater than (Vi), energy is consumed at Kinetic Energy = 0.5 x runner mass x (Vf2 – Vi2) (i.e. mentally and/or via pen and paper setting appropriate velocity values and using mathematical formulas and calculations, calculate Kinetic Energy; involves evaluation which is a grouped as a mental process under 2019 PEG and involves mathematical formulas/equations and calculations which are grouped under mathematical concepts under 2019 PEG).
27. (New) A method for training a runner to reduce energy output and reduce momentum change of the runner by training the runner to minimize step by step difference between a final pivot velocity (Vf) of the runner's torso and an initial pivot velocity (Vi) of the runner's torso, the method comprising the steps of:
providing a monitoring device attached to the runner's shoe comprising: at least one accelerometer; at least one power source; at least one processor; at least one conducting wire, wherein the at least one conducting wire is connected to the accelerometer, wherein the at least one processor receives data from the at least one accelerometer;
determining, by the at least one processor using data from the at least one accelerometer, momentum change based on torso velocity of the runner in a horizontal direction, wherein the determining step further comprises the steps of: measuring g-force for the at least one of the runner's feet; measuring stride time for the at least one of the runner's feet; measuring pivot time for the at least one of the runner's feet; calculating stride length; calculating step length; calculating step velocity (i.e. by visually observing and runner’s performance and mentally considering known parameters (i.e. g-force value), using a watch/clock, and determining and calculating through mathematical calculations and formulas, stride time, pivot time, stride length, stride velocity and momentum change; involve observation which is grouped as a mental process under 2019 PEG, and involve mathematical formulas or equations and mathematical calculations which is grouped as a mathematical concept under 2019 PEG); and
positioning at least three lights, wherein a first light is a first distance from a second light, the second light is a second distance from a third light, wherein the lights emit a light, that corresponds to when the runner should step on or near one of the at least three lights (i.e., by manually drawing markers/placing the lights spaced apart from each other and on a surface; involves managing interactions between people including teachings and following instructions, which are grouped as certain methods of organizing human activity under 2019 PEG), wherein the at least three lights have a power source, wherein distance the runner’s foot is from each light is determined by the monitoring device attached to the runner's shoe (i.e., visually observing and mentally noting the distance between the markers/lights; involves observation and evaluation which are grouped as mental processes under 2019 PEG), wherein information from the monitoring device is communicated to the at least one processor.
28. (New) The method of claim 27 wherein the at least three lights are LED light strips.
29. (New) The method of claim 9, wherein a sound, light, and/or vibration that corresponds to when the runner should step on or near one of the at least three markers, wherein the sound, light, and/or vibration further comprises at least a first sound, light, and/or vibration, a second sound, light, and/or vibration, and a third sound, light, and/or vibration, wherein the first sound, light, and/or vibration designates that the runner should take shorter steps, the second sound, light, and/or vibration designates that the runner should take longer steps, and the third sound, light, and/or vibration designates a correct step (i.e., by visually observing the user and landing of the user’s foot near each of the three locations and orally generating different sounds or verbally announcing different words, each designating shorter, longer or correct step length, based on the user’s foot landing near each of the three locations; involves observation, evaluation, judgement and opinion which are grouped as mental processes under 2019 PEG).
30. (New) A method for training a runner to reduce energy output and reduce momentum change of the runner by training the runner to minimize step by step difference between a final pivot velocity (Vf) of the runner's torso and an initial pivot velocity (Vi) of the runner's torso, the method comprising the steps of:
providing a monitoring device comprising: at least one accelerometer; at least one power source; at least one processor; at least one conducting wire, wherein the at least one conducting wire is connected to the accelerometer, wherein the at least one processor receives data from the at least one accelerometer;
determining, by the at least one processor using data from the at least one accelerometer, momentum change based on torso velocity of the runner in a horizontal direction, wherein the determining step further comprises the steps of: measuring g-force for the at least one of the runner's feet; measuring stride time for the at least one of the runner's feet; measuring pivot time for the at least one of the runner's feet; calculating stride length; and calculating step velocity (i.e. by visually observing and runner’s performance and mentally considering known parameters (i.e. g-force value), using a watch/clock, and determining and calculating through mathematical calculations and formulas, stride time, pivot time, stride length, stride velocity and momentum change; involve observation which is grouped as a mental process under 2019 PEG, and involve mathematical formulas or equations and mathematical calculations which is grouped as a mathematical concept under 2019 PEG); and
determining at least three locations, wherein a first location is a first distance from a second location, the second location is a second distance from a third location (i.e. by placing various objects or drawing lines, spaced apart from each other, on a surface (for example, using chalk on concrete or asphalt); involves managing interactions between people including teachings and following instructions, which are grouped as certain methods of organizing human activity under 2019 PEG), wherein data from the accelerometer regarding proximity of the runner's foot to each of the at least three locations is transmitted to the at least one processor, wherein the at least one processor analyzes and processes the data from the accelerometer (i.e., by visually observing position of the runner’s foot near each of the at least three markers (which can be drawn or be in the form of tapes positioned apart from each other), mentally noting when the runner’s foot is proximate to the at least three markers and mentally processing and analyzing the observations; involve observation, evaluation and judgement which are grouped as mental processes under 2019 PEG).
31. (New) The method of claim 30, wherein when the runner's foot lands near each of the at least three locations a sound, light, and/or vibration is emitted that corresponds to when the runner should step on or near one of the at least three locations, wherein emitting the sound, light, and/or vibration further comprises emitting at least a first sound, light, and/or vibration, a second sound, light, and/or vibration, and a third sound, light, and/or vibration, wherein the first sound, light, and/or vibration designates that the runner should take shorter steps, the second sound, light, and/or vibration designates that the runner should take longer steps, and the third sound, light, and/or vibration designates a correct step (i.e., by visually observing the user and landing of the user’s foot near each of the three locations and orally generating different sounds or verbally announcing different words, each designating shorter, longer or correct step length, based on the user’s foot landing near each of the three locations; involves observation, evaluation, judgement and opinion which are grouped as mental processes under 2019 PEG).
Accordingly, as indicated above, each of the above-identified claims recites an abstract idea.
Further, dependent Claims 10, 13-17, 21-24, 26, 28, 29 and 31 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Step 2A, Prong 2
The above-identified abstract idea in independent Claims 9, 27 and 30 (and dependent Claims 10, 13-17, 21-24, 26, 28-29 and 31) are not integrated into a practical application under 2019 PEG because the additional elements (identified above in the claims), either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use. More specifically, the additional elements of: a monitoring device comprising at least one accelerometer, at least one power source, at least one processor, at least one conducting wire connecting the accelerometer to the processor and a shoe attachment, at least three markers/lights, a treadmill and a metronome, are generically recited computer elements, measuring devices/sensors, output devices or conventional exercise devices, in independent claims and their dependent claims, which do not improve the functioning of a computer, or any other technology or technical field. Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Furthermore, the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. For at least these reasons, the abstract idea identified above in independent Claims 9, 27 and 30 (and their dependent claims) are not integrated into a practical application under 2019 PEG.
Moreover, the above-identified abstract idea is not integrated into a practical application under 2019 PEG because the claimed method and system merely implements the above-identified abstract idea (e.g., mental process, mathematical concepts and certain methods of organizing human activity) using rules (e.g., computer instructions) executed by a computer (e.g., a processor, as claimed). In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent claims 9, 27 and 30 and their dependent claims are not integrated into a practical application under the 2019 PEG.
Accordingly, independent claims 9, 27 and 30 (and their dependent claims) are each directed to an abstract idea under 2019 PEG.
Step 2B
None of Claims 9-10, 13-17, 21-24 and 26-31 include additional elements that are sufficient to amount to significantly more than the abstract idea for at least the following reasons.
These claims require the additional elements of: a monitoring device comprising at least one accelerometer, at least one power source, at least one processor, at least one conducting wire connecting the accelerometer to the processor, at least three markers/lights, a shoe attachment, a treadmill and a metronome.
The above-identified additional elements are generically claimed computer components, measuring devices/sensors, output devices or conventional exercise devices which enable the above-identified abstract idea(s) to be conducted by performing the basic functions of automating mental tasks in various exercise areas. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Applicant’s specification does not describe any special programming or algorithms required for the processor or mobile device. This lack of disclosure is acceptable under 35 U.S.C. §112(a) since this hardware performs non-specialized functions known by those of ordinary skill in the computer arts.
The recitation of the above-identified additional limitations in various claims amounts to mere instructions to implement the abstract idea on a computer. Simply using a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
A claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
For at least the above reasons, the method of 9-10, 13-17, 21-24 and 26-31 are directed to applying an abstract idea (e.g., mental process, mathematical concept and certain methods of organizing human activity) on a general purpose computer without (i) improving the performance of the computer itself (as in McRO, Bascom and Enfish), or (ii) providing a technical solution to a problem in a technical field (as in DDR). In other words, none of Claims 9-10, 13-17, 21-24 and 26-31 provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself.
Taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claims 9, 27 and 30 (and their dependent claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment. That is, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity. When viewed as a combination, these above-identified additional elements simply instruct the practitioner to implement the claimed functions with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. As such, the above-identified additional elements, when viewed as whole, do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Thus, Claims 9-10, 13-17, 21-24 and 26-31 merely apply an abstract idea to a computer and do not (i) improve the performance of the computer itself (as in Bascom and Enfish), or (ii) provide a technical solution to a problem in a technical field (as in DDR).
Therefore, none of the Claims 9-10, 13-17, 21-24 and 26-31 amounts to significantly more than the abstract idea itself.
Accordingly, Claims 9-10, 13-17, 21-24 and 26-31 are not patent eligible and rejected under 35 U.S.C. 101 as being directed to abstract ideas implemented on a generic computer in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. and 2019 PEG.
Response to Arguments
Applicant's arguments filed 01/02/2026 have been fully considered but they are not persuasive.
Response to Arguments regarding rejections under 35 U.S.C. § 112(a)
Claim 9:
In response to applicant’s arguments regarding claim 9 stating:
“The Examiner alleges that "wherein data from the accelerometer regarding proximity of the runner's foot to each of the at least three markers is transmitted to the at least one processor" is new matter. However, the specification clearly show this element. Paragraph 0007 states, "[T]he pressure sensors provide information regarding when a runner's foot strikes the ground.... Within the housing is a printed circuit board outfitted with an accelerometer and processor connected to the pressure sensors through conducting wire... When processed ... the accelerometer data allows for the calculation through the running physics model of the energy expended by the runner during a given step." As stated in the portion of paragraph 0007 shown above, the accelerometer is connected to the pressure sensor, and the pressure sensor "provides information regarding the order and relative force with which different parts of a runner's foot strike the ground which can be used to inform the runner if they are overstriding." So, paragraph 0007 clearly shows information from a runner's foot strike being processed by the accelerometer and the processor. Paragraph 0009 states, "The training method improves this consistency by training the runner's muscle memory to place their steps at a consistent length by running continually over a distance marked, or indicated by other consistent distance indicators, in increments equivalent to the determined optimal step distance for the runner." Paragraph 0080 states, "Pressure sensor data and accelerometer g-Force data are collected at a rate of 200 Hz and provide the physics running model with the landing and launching times of the runner along with the length of each stride." Paragraph 0086 states, "Figure 12 additionally shows markers 36 at a consistent distance apart...." These paragraphs clearly show the data from the accelerometer transmitted to the processor regarding proximity of the runner's foot to the three markers. As such, the claim meets the written description requirement. Figures 25 and 26 show data collected from the runner's foot strikes on the markers. (See paragraphs 0091 and 0092). The combination of all of the above paragraphs clearly demonstrate that the inventor was in possession of the invention as claimed in claim 9. The written description does not require in haec verba disclosure. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-85 (Fed. Cir. 2015). It appears that the Examiner is attempting to find the exact wording of claim 9, in the order provided, but this is not the standard for written description requirement.
The Examiner states, "The specification fails to provide any description regarding the accelerometer providing any data regarding proximity of the runner's foot to any and
each of the at least three markers." (Office Action, page 3). But, as pointed out in the combination of paragraphs and Figures above, the specification does not provide the description, just not verbatim from the claim.
Claims 10, 13-17, 21-24, 26, and 29 depend from claim 9, and therefore also meet the written description requirement”,
the Examiner respectfully disagrees and would like to mention the followings. Claim 9, as currently presented, as well as paragraphs [0007], [0009], [0080], [0086], [0091] and [0092] of applicant’s specification has been reproduced below.
“9. (Currently Amended) A method for training a runner to reduce energy output and reduce momentum change of the runner by training the runner to minimize step by step difference between a final pivot velocity (Vf) of the runner's torso and an initial pivot velocity (V1) of the runner's torso, the method comprising the steps of:
providing a monitoring device comprising:
at least one accelerometer;
at least one power source;
at least one processor;
at least one conducting wire, wherein the at least one conducting wire is connected to the accelerometer, wherein the at least one processor receives data from the at least one accelerometer;
determining, by the at least one processor using data from the at least one accelerometer, momentum change based on torso velocity of the runner in a horizontal direction, wherein the determining step further comprises the steps of:
measuring g-force for the at least one of the runner's feet;
measuring stride time for the at least one of the runner's feet;
measuring pivot time for the at least one of the runner's feet;
calculating stride length; and
calculating step velocity; and
at least three markers, wherein a first marker is a first distance from a second marker, the second marker is a second distance from a third marker, wherein data from the accelerometer regarding proximity of the runner's foot to each of the at least three markers is transmitted to the at least one processor, wherein the at least one processor analyzes and processes the data from the accelerometer.”,
“[0007] A mobile monitoring device allows for the relevant metrics to be recorded at any location the runner would prefer to train instead of confined to a treadmill. The mobile monitoring device comprises a set of pressure sensors attached to a shoe insert which can be placed underneath a standard running shoe's insole. These pressure sensors provide information regarding the order and relative force with which different parts of a runner's foot strike the ground which can be used to inform the runner if they are overstriding. Additionally, the pressure sensors provide information regarding when a runner's foot strikes the ground allowing the timing of individual steps or strides. This information is processed within a housing which can attach to the outside of a runner's shoe. Within the housing is a printed circuit board (PCB) outfitted with an accelerometer and processor connected to the pressure sensors through conducting wire. The accelerometer measures g-force in the x, y, and z directions of the runner's foot throughout a given run. When processed with the pressure sensor data, the accelerometer data allows for the calculation through the running physics model of the energy expended by the runner during a given step.
[0009] The training method described in the present teaching is able to train a runner to expend less energy while running at any speed but particularly expend less energy while also increasing their speed. Using the running physics model described in the present teaching the training method recognizes that many runners have a significant variance in their speed between steps, accelerating and decelerating alternatively. This variance forces runners to have higher accelerations more often than they would need if they were more consistent and had smaller decelerations. It has been found that step acceleration variation is directly correlated to step length variation. The training method improves this consistency by training the runner's muscle memory to place their steps at a consistent length by running continually over a distance marked, or indicated by other consistent distance indicators, in increments equivalent to the determined optimal step distance for the runner. As acceleration and step length variation are directly correlated by improving step length consistency the runner will reduce momentum change variation. Once a runner has step length consistency the amount of energy, they are expending at any given speed is reduced. With step length consistency achieved the training method adds a metronome or other consistent timing feedback at the cadence (steps/minute) the runner is seeking to achieve. This trains the runner to place their steps at the consistent step length and time to achieve their desired speed while reducing energy consumption even further.
[0080] Pressure sensor data and accelerometer g-Force data are collected at a rate of 200 Hz and provide the physics running model with the landing and launch times of the runner along with the length of each stride. The physics running model then converts this data into all the runner metrics listed in FIGURE 4. Step landing time is defined as the time the foot first strikes the ground, and step launch time is defined as the time the foot leaves the ground. Two accelerometers can be used at the same time by outfitting one accelerometer on each foot to have a common timeline and measure step-by-step metrics.
[0086] FIGURE 12 additionally shows markers 36 at a consistent distance apart that was comfortable for the runner. The markers indicate where the runner should place their feet when running for a consistent step length. Step length can be indicated by physical markers or by sound, vibration, or any other sensory stimuli. Following the training method disclosed in the present teaching the runner practiced running the track and landing on the solid black marks 36 with each step to train the muscle memory of building a consistent step length. FIGURE 15 shows the step length for the runner while running using the markers became much more consistent. FIGURE 16 shows that the energy consumption during the run with the marks was reduced by as much as 82%. In order to run at higher speed with lower energy, the training with the marks can be practiced with a metronome or similar device to instruct the runner to strike the marks at a higher cadence. This allows the runner to run faster at lower energy.
[0091] FIGURE 25 shows the step times and lengths for the IST run with markers by runner 2. The step lengths show relatively small variations compared to the step lengths of lap 7 of speed profile run seen in FIGURE 19. This is also evident in the momentum changes (Vf-Vi) for the IST run shown in FIGURE 27 and the energy consumed shown in FIGURE 28.
[0092] FIGURE 26 shows the step lengths and final velocities for the IST run with markers by runner 2. As with the step lengths, the step final velocity variations are also smaller compared to FIGURE 20”.
None of these paragraphs, cited by the applicant, provide support for the claim limitation “wherein data from the accelerometer regarding proximity of the runner's foot to each of the at least three markers is transmitted to the at least one processor”. Nowhere in any of these paragraphs or any other paragraphs in the specification, a description regarding the accelerometer providing data regarding proximity of the runner’s foot to each of the at least three markers and transmitting such (proximity) data to the at least one processor has been provided. The specification only provides support regarding the accelerometer measuring g-force in the x,y,z directions of the runner’s foot throughout a given run, that the accelerometer data when processed with pressure sensor data, allows for the calculation through the running physics model of the energy expended by the running during a given step (see ¶ [0007] and [0080] of the specification), that an accelerometer measures acceleration, orientation, and rotational velocity, but only the acceleration is used for determining the step-by-step metrics, and that the nine-axis accelerometer can measure time between strides (see ¶ [0077]). No other portions of the specification describes or implies that the accelerometer provides data regarding proximity of the runner’s foot to the at least three markers. In fact, it is unclear which measurement of accelerometer is considered or pertains to data regarding proximity of the runner’s foot to the three markers. In other words, it is unclear how the accelerometer or the processor using accelerometer data can determine that the runner’s foot is proximate to any of the three markers. With respect to applicant’s assertion that Figures 25 and 26 show data collected from the runner’s foot strikes on the markers, (which are set at a consistent distance apart), the Examiner would like to mention that none of these figures and their pertinent paragraphs or other paragraphs of the specification describe the accelerometer providing data shown in Figs. 25 and 26 (only) when it determines that the runner’s foot is proximate to the markers. As stated previously, the first paragraph of 35 U.S.C. 112(a) recites: “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”. With respect to this limitation of claim 9, the specification lacks a written description in such full, clear, concise and exact terms as to enable one of ordinary skill in the art to make and use the same. As such, this limitation is still considered New Matter.
Claim 27:
In response to applicant’s similar arguments regarding claim 27 and citing the same portions of the specification cited above, as the portions that provide support for the limitation “wherein distance from each light is determined by the monitoring device attached to the runner’s show, wherein information from the monitoring device is communicated to the at least one processor”, the Examiner respectfully disagrees and would like to refer the applicant to the above provided explanation.
In response to applicant’s further arguments regarding claim 27 stating:
“In addition, paragraph 0106 states, "A person can use light strip 42 instead of physical markers to indicate where a runner should step to have a certain step length. To do this, microprocessor 46 may be programmed to make one or more light 44 on light strip 42 illuminate that corresponds to where markers 36 would be. Then, light strip 42 is placed along a path that a runner will use to practice running at his or her earlier-determined step length. For example, light strip 42 could be placed in between two lanes on a track to run down the length of the track. Then, a runner can run at the desired step length by stepping near the light 44 that is lit on light strip 42 while running. Running consistently at the desired step length incorporates that step length into the muscle memory of a runner. Once incorporated, the runner will run faster using less energy." This paragraph, combined with the paragraphs cited for claim 9 clearly show the element of claim 27 questioned by the Examiner, and therefore meets the written description requirement. One of ordinary skill in the art would know that the inventor possessed the necessary information to describe the distance from each light being measured by the monitoring device (through the accelerometer, pressure sensors, and processor).
Claim 28 depends from claim 27, and therefore also complies with the written description requirement”,
the examiner respectfully disagrees and would like to mention that nowhere in this paragraph support is provided regarding the monitoring device determining the distance (of the runner’s foot) from each light. In fact, as stated in ¶ [0088] of the specification, based on information showing the runner’s step length (step L) distribution for his fastest lap (Fig. 18), the runner’s coach is able to determine the best step length for the user and based on that information, markers are set with specific intervals, and after several practice runs, using the markers, the runner ran wearing the monitoring device. Furthermore, applicant in ¶ [0106] of the specification states:
“A person can use light strip 42 instead of physical markers to indicate where a runner should step to have a certain step length. To do this, microprocessor 46 may be programmed to make one or more light 44 on light strip 42 illuminate that corresponds to where markers 36 would be. Then, light strip 42 is placed along a path that a runner will use to practice running at his or her earlier-determined step length. For example, light strip 42 could be placed in between two lanes on a track to run down the length of the track. Then, a runner can run at the desired step length by stepping near the light 44 that is lit on light strip 42 while running. Running consistently at the desired step length incorporates that step length into the muscle memory of a runner. Once incorporated, the runner will run faster using less energy”,
and in ¶ [0107] recites:
“Using the Arduino microcontroller, runners set the light interval to match their desired step length. Adafruit open-source code has been modified and uploaded to Arduino for this purpose. Runners set their desired light interval via their phone or laptop. As shown in FIGURE 44, the LEDs turn on at intervals matching the input step length. Runners then use the bright LEDs as markers for their Interval Step Training”.
As such, the distance between each light of the light strip that is turned on, which represents the desired step length, can be programmed by the runner or coach using a conventional computer (see ¶ [0105] of the specification), a phone or a laptop. Furthermore, the specification lacks any description or support for the monitoring device determining the distance of the runner’s foot from each light of the markers. Furthermore, there is no support regarding the monitoring device which comprises at least one processor, communicating information from itself to itself. In fact, it is unclear how the monitoring device comprising at least one processor, communicates information from itself to the at least one processor of itself. As such, these claim limitations are still considered New Matter.
Claim 30:
In response to applicant’s arguments regarding claim 30, similar to those of claim 9 above, reciting similar subject matter, the Examiner respectfully disagrees and would like to refer the applicant to the explanation provided above for claim 9.
Claim 31:
In response to applicant’s arguments regarding claim 31, stating:
“The Examiner alleges that "wherein when the runner's foot lands near each of the at least three locations a sound, light, and/or vibration is emitted that corresponds to when the runner should step on or near one of the at least three locations" is new matter and fails to comply with the written description requirement. The Examiner states that only paragraph 0123 recites this language. However, that is incorrect. Paragraph 0086 states, "FIGURE 12 additionally shows markers 36 at a consistent distance apart that was comfortable for the runner. The markers indicate where the runner should place their feet when running for a consistent step length. Step length can be indicated by physical markers or by sound, vibration, or any other sensory stimuli." Again, this element is clearly shown in the specification and meets the written description requirement.”,
the Examiner respectfully disagrees and would like to mention the followings. Claim 31 recites: “wherein when the runner's foot lands near each of the at least three locations a sound, light, and/or vibration is emitted that corresponds to when the runner should step on or near one of the at least three locations, wherein emitting the sound, light, and/or vibration further comprises emitting at least a first sound, light, and/or vibration, a second sound, light, and/or vibration, and a third sound, light, and/or vibration, wherein the first sound, light, and/or vibration designates that the runner should take shorter steps, the second sound, light, and/or vibration designates that the runner should take longer steps, and the third sound, light, and/or vibration designates a correct step”, and ¶ [0086] of the specification recites: “FIGURE 12 additionally shows markers 36 at a consistent distance apart that was comfortable for the runner. The markers indicate where the runner should place their feet when running for a consistent step length. Step length can be indicated by physical markers or by sound, vibration, or any other sensory stimuli. Following the training method disclosed in the present teaching the runner practiced running the track and landing on the solid black marks 36 with each step to train the muscle memory of building a consistent step length. FIGURE 15 shows the step length for the runner while running using the markers became much more consistent. FIGURE 16 shows that the energy consumption during the run with the marks was reduced by as much as 82%. In order to run at higher speed with lower energy, the training with the marks can be practiced with a metronome or similar device to instruct the runner to strike the marks at a higher cadence. This allows the runner to run faster at lower energy”.
The specification in ¶ [0086], provides support for the markers placed at consistent distance apart to indicate where the runner should place their feet when running for a consistent step length. In other words, based on sound, light or other sensory stimuli from the markers, the runner knows where they should place their feet. However, nowhere in this paragraph, has the applicant provided any support regarding these sensory stimuli being provided when the runner lands on or near each of the markers. Based on ¶ [0086] and other parts of the specification, it appears that the markers are provided in order indicate to the runner where he/she has to place his/her feet to achieve the desired step length. In other words, the markers already emit a sensory stimuli to inform the runner of the location where they should place their feet. Nowhere in the specification a description is provided regarding the sensory stimuli being provided by the markers once the runner lands on or near those markers. In fact the limitations of this claim, as currently presented, are unclear since the first part of the limitation requires the sensory stimuli (sound, light, vibration) being emitted by the marker when the runner lands on or near the marker, while the second part of this limitation requires the sensory stimuli being emitted by the markers in order to indicate to the runner when the runner should step on or near the markers, which implies such stimuli being emitted before the runner lands on or near the marker. As such, this limitation of claim 30 is still considered New Matter.
Response to Arguments regarding rejections under 35 U.S.C. § 112(b)
Claim 9:
In response to applicant’s arguments regarding claim 9 stating that ¶ [0007] explains how the accelerometer provides/detects data regarding proximity of the runner’s foot to each of the at least three markers and that this paragraphs describes how the accelerometer obtains data, which is connected to the processor, which processes the steps of the runner’s foot, and the markers (as shown in Figures 24-26) are used for proximity, the Examiner respectfully disagrees and would like to mention the followings. As shown above, ¶ [0007] lacks any description regarding the accelerometer providing data regarding proximity of the runner’s foot to each of the at least three markers. Figures 24-26 and their pertinent paragraphs lack such description as well. As mentioned before, it is unclear how the accelerometer or which measurement from the accelerometer is considered data regarding the proximity of the runner’s foot to each of the at least three markers. This limitation implies that the proximity of the runner’s foot to each of the at least three markers is somehow recognized and determined by the accelerometer. In other words, the accelerometer can sense data that is specific to when the runner’s foot is proximate to each of the markers and such data cannot be sensed when the runner’s foot is not proximate to each of the markers, and the specification lacks providing any description regarding how the accelerometer recognizes the proximity of the runner’s foot to each of the at least three markers or what specific data representing the proximity of the runner’s foot to each of the markers, is sensed by the accelerometer when the runner’s foot is proximate each of the at least three markers. As such, Claim 9 stands rejected under 35 U.S.C. § 112(b).
Claim 26:
In response to applicant’s arguments regarding claim 26 stating claim 26 has been amended to refer to the first step for (Vi), the Examiner would like to mention that such amended has not been made and therefore, this claim stands rejected under 35 U.S.C. § 112(b).
Claim 27:
In response to applicant’s arguments regarding claim 27, the Examiner would like to mention that the amendments made to claim 27, only overcome parts of the 112(b) rejection of this claim. However, claim 27 stands rejected under 35 U.S.C. § 112(b), because claim 27 recites: “wherein information from the monitoring device is communicated to the at least one processor”, and it is unclear how information from the monitoring device that comprises the at least one processor is communicated to the at least one processor. In other words, it is unclear how information from the monitoring device having the at least one processor is communicated from itself to itself.
Claim 30:
Applicant’s arguments regarding claim 30, similar to those of claim 9, are moot in view of the above provided explanation provided for claim 9 above.
Response to Arguments regarding rejections under 35 U.S.C. § 101
In response to applicant’s arguments stating that claim 9 recites a monitoring device comprising at least one accelerometer, at least one power source, at least one processor, at least one conducting wire, wherein the at least one conducting wire is connected to the accelerometer, wherein the at least one processor receives data from the at last one accelerometer, which the Examiner admits are not an abstract idea but are additional elements that do not improve the functionality of the computer or technology field, and that ¶ [0007]-[0009] of the specification combined with the description of the equipment necessary for the implementation of the invention similar to the situation in US Synthetic Cop v. ITC, where the Federal Circuit Court stated, “As described above, the specification of the ‘502 patent expressly provides the correlation between the claimed magnetic properties and the physical characteristics of the PDC composition.” And as in US Synthetic Cop v. ITC, the “described correlations are concrete and meaningful, rather than something that merely speculative”, therefore, Applicant believe that Step ON is the only analysis needed in the Section 101 analysis, the Examiner respectfully disagrees and would like to mention the followings. Many of the subject matter recited in ¶ [0007]-[0009] are not recited in the claims (i.e., pressure sensors being in the insole of the shoe and determining many of the data). Also, Step 1 of the analysis does not define or determine subject matter eligibility. In fact, Step 1 asks whether the claim is directed towards a process, machine, manufacture or composition of matter. If the answer to this question is “NO”, then the claim is ineligible. If the answer to this question is “YES”, then further analysis through Steps 2A and Steps 2B are required to be performed to determine subject matter eligibility of the claim. With respect to the current claims, since the answer to question of Step One is “YES”, further analysis under Steps 2A and 2B was performed. As stated above, Step 2A, Prong 1, clearly maps out the abstract idea and identifies the additional elements. Please note that various paragraphs of the specification, including ¶ [0007]-[0009], show that the monitoring device comprising: at least one accelerometer, at least one power source, at least one processor and at least one conducting wire connecting the accelerometer to the power source, is recited in high level of generality. The various components of the monitoring device are considered generic computer components (i.e., a processor) and conventional sensors/components (i.e., an accelerometer, a power source, a wire) that are used to perform functions that the generic computer components and conventional sensors/components perform, which is measuring data and performing calculations (using mathematical formulas or relations) to provide various results. These cited additional elements do not improve the functionality of the monitoring device itself or any other technology or technology field. Other additional elements including a treadmill, a metronome, lights as markers, also fall into the same category and are conventional devices that do not provide any improvement to any technology or technology field.
In response to applicant’s arguments regarding Step 2A stating that the amount of data being generated by the accelerometer, and processed by the processor, is not something that could be done in the human mind, and therefore, is not a mental process under 101, the Examiner would like to mention that the 101 analysis is performed on the claims and their limitations, and not the specification. Furthermore, as shown above, the abstract idea in each of the claims are identified and the reason they are considered abstract, and how they are considered to be performed by the human mind and/or via pen and paper, if they are identified as mental processes, is also provided. Please note that the claims lack any recitation regarding the specific function of the accelerometer and the specific parameter/data it measures. Nowhere in the 101 analysis has the Examiner stated anything regarding the amount of data being generated by the accelerometer is a mental process. As stated before, the accelerometer alone or in combination with other elements, generally links the use of the abstract idea to a particular technological environment or field of use. The accelerometer has been recited with a high level of generality. In other words, neither the specification nor the claims recite a particular accelerometer having specific structure(s) and features to measure specific parameters/data.
In response to applicant’s arguments stating that even if the analysis were to go to Step 2B and the intention were to be considered an abstract idea, the claims recite additional elements that amount to significantly more than the judicial exception, the Examiner respectfully disagrees. Applicant has failed to provide any explanation as to how the additional elements amount to significantly more than the judicial exception. The identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. These additional elements do not serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Applicant’s specification does not describe any special programming or algorithms required for the processor or mobile device to perform various claimed steps.
In response to applicant’s arguments stating that the currently presented claims are similar to the claims of “Example 4. Global Positioning System”, as they both involve calculation and interpretation of positional and time related data and these calculations and estimations are utilized to inform the user through illustrative means on the devices’ visual component, the Examiner respectfully disagrees and would like to mention the followings. The claims of “Example 4. Global Positioning System” are completely different from those of current application. The claims of current application require the processor of the monitoring device, using data from the accelerometer, to determine and calculate various parameters regarding a runner’s performance and three markers/lights placed apart from each other are provided to the runner, whereby the markers indicate where the runner’s foot should be placed in order to train the runner to take desired step length to lower their energy expended. However, the claims of “Example 4. Global Positioning System” require the mobile device to include a GPS receiver and a microprocessor programmed to receive PN codes sent by a plurality of GPS satellites and calculate pseudo-ranges and transmit such. Receiving PN codes from a plurality of GPS satellite cannot be performed by a human mind (regardless of the amount of time it takes). As such, for at least this reason, the claims of the current application are different from that of “Example 4. Global Positioning System”.
In response to applicant’s arguments regarding claims of the current application being similar to that of Example 2. Robotic Arm Assembly, the Examiner respectfully disagrees and would like to mention that unlike the robotic arm, the claims of the current application do not recite any limitations regarding the at least one processor/monitoring device controlling any other device including the markers/the lights to illuminate based on determining a desired step length using the accelerometer data. In Example 2. Robotic Arm Assembly, the claim requires a control system to use information from the sensors to adjust the velocity of the end effector and as such, the claim includes patent eligible subject matter. The monitoring device of the instant application, as claimed, monitors data and performs calculations on such data and provides the results. The task of determining best step length for the runner as well as placing the markers at specific distances corresponding to the best step length or programming a processor of a strip light to illuminate certain lights corresponding to the best step length are all done by a coach or the runner. Applicant in the specification states that based on various information from monitoring device, a runner’s coach can determine what the best step length for the user is, and the markers are either: 1) physically placed by a user (i.e., coach, runner) at specific distances according to the determined best step length to enable the runner recognize where to place his/her foot to achieve the best step length or 2) in case of a light strip as markers, programmed using a conventional computer, phone or laptop, to specify which lights of the light strip to turn on to designate the best step length. As such, the monitoring device provides information that a coach can use to determine the best step length for the runner. Such best step length is not being provided by the monitoring device. Furthermore, the coach then places physical markers at distances corresponding to the determined best step length on a track for the runner to use to train or programs a lighting strip to illuminate specific lights according to the determined step length. Again, the monitoring device does not control the placement of the physical markers or control the lights of a light strip based on best step length that is determined by the monitoring device. As such, the claims of instant application are not similar to those of Example 2. Robotic Arm Assembly and stand rejected under 35 U.S.C. §101.
Conclusion
THIS ACTION IS MADE FINAL. 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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/SHILA JALALZADEH ABYANEH/ Primary Examiner, Art Unit 3784