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 .
Applicant’s amendments dated 4/14/26 are hereby entered.
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 1-20 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.
Claims 1 and 15-16 include the limitations of “iteratively calculating an initial velocity of a putt at the processor”. Applicant’s specification, however, does not contain sufficient detail in regard to how to make this calculation and thereby fails to “explain how the claimed function is achieved to demonstrate that the applicant had possession of it.” See USPTO, “Examining Computer-Implemented Functional Claim Limitations for
Compliance With 35 U.S.C. 112”, Federal Register; Vol. 84, No. 4; Monday, January 7, 2019; page 62.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 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.
Claims 1-20 are directed to an abstract idea without significantly more. The claims recite a mental process that can be performed by a human being, a method of organizing human activity, and/or mathematical concepts.
In regard to Claims 1 and 15-16 the following limitations can be performed as a mental process by a human being in terms of claiming collecting data, analyzing that data, and providing outputs based on that analysis which has been held by the CAFC to be an abstract idea in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); recite a method of organizing human activity in terms of claiming the teaching/training/evaluation of a human subject’s which has been identified by MPEP 2106.04(a)(2)(II) as being a method of organizing human activity; and/or claim mathematical concepts as outlined at MPEP 2106.04(a)(2)(I), in terms of the Applicant claiming:
[a] method of calculating an optimal putting line and putting stroke on a golf putting green, comprising […]:
[…] receiving user input data […], wherein the user input data comprises at least a putt distance, a green friction and a targeted distance past a cup;
calculating a magnitude of break of the putting green […], wherein the magnitude of break comprises an averaged pitch and roll calculation of the putting green;
[…] calculating an initial velocity of a putt […]; combining the user input data, the magnitude of break and the initial velocity […] to create green reading data; and
using the green reading data to create user output data that is displayed to a user […], wherein the user output data comprises the optimal putting line for a user on the golf putting green and the optimal putting stroke, wherein the optimal putting stroke comprises the iteratively calculated initial velocity.
In regard to the dependent claims, they also claim an abstract idea to the extent that they merely claim further limitations that likewise could be performed as a mental process by a human being, a method of organizing human activity, and/or claim mathematical concepts.
Furthermore, this judicial exception is not integrated into a practical application because to the extent that additional elements are claimed either alone or in combination such as, e.g., a processor, a user interface, a mobile device, a camera, LIDAR, GPS, accelerometer, inclinometer, gyroscope, magnetometer, and/or embodying Applicant’s abstract idea as computer code stored on a non-transitory computer readable medium that is executed by a processor, these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., data gathering), to embody the abstract idea on a general purpose computer, and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use. In this regard, see MPEP 2106.04(d)(I) in regard to “courts have also identified limitations that did not integrate a judicial exception into a practical application…”
Furthermore, the claims do not include additional elements that taken individually, and also taken as an ordered combination, are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g., a processor, a user interface, a mobile device, a camera, LIDAR, GPS, accelerometer, inclinometer, gyroscope, magnetometer, and/or embodying Applicant’s abstract idea as computer code stored on a non-transitory computer readable medium that is executed by a processor, these are well-understood, routine, and conventional elements and are claimed for the well-understood, routine, and conventional functions of collecting and processing data and/or providing an analysis/outputs based on that processing. To the extent that an apparatus is claimed as an additional element said apparatus fails to qualify as a “particular machine” to the extent that it is claimed generally, merely implements the steps of Applicant’s claimed method, and is claimed merely for purposes of extra-solution activity or field of use. See MPEP 2106.05(b). As evidence that these additional elements are well-understood, routine, and conventional, Applicant’s specification discloses the support for these elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a). See, e.g., F1-2 and 12 in Applicant’s PGPUB and text regarding same.
Response to Arguments
Applicant argues in its Remarks in regard to the rejections made under 35 USC 101 that it has not claimed an abstract idea in the form of a mathematical concept. Applicant’s argument is not persuasive to the extent that Applicant’s claimed limitations include those of “iteratively calculating” and such a calculation was held in Parker v. Flook to be patent ineligible as a mathematical concept. See, e.g., MPEP 2106.04(a)(2)(I).
Applicant further argues that it has not claimed an abstract idea in the form of a mental process because its has claimed that its method is performed in “real time”. Applicant’s argument is not persuasive because the limitations of “real time” are not identified as being part of the alleged abstract idea. Also, to the extent that Applicant’s claimed embodiment of its abstract idea as computer code itself does execute in “real time”, such an efficiency gain is merely the artifact of this embodiment and not a technological improvement per se. See Bancorp Services v. Sun Life, slip. op., page 21 (“the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”)
Applicant further argues that it has not claimed an abstract idea in the form of a method of organizing human activity. Applicant’s argument is not persuasive because Applicant’s claimed invention may be fairly characterized as a method of teaching/training a human being to better play golf. See MPEP 2106.04(a)(2)(II)(“ managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions.))”
Applicant further argues that it has claimed a “practical application” and thereby claimed patent eligible subject matter under the Mayo test. Applicant’s argument is not persuasive. The Mayo test is a legal test and “practical application” is not part of the Mayo test but is, instead, a burden placed on examiners by the Office when they are making a 101 rejection employing the Mayo test. Simply invoking “practical application” but without citing specific legal authority in support of Applicant’s argument that it has claimed patent eligible subject matter under the two-part Mayo test, therefore, does not provide a proper basis or rationale as to why the 101 rejection being made is allegedly deficient. Applicant specifically argues also that because it claims a sensor (“at least one of an accelerometer, inclinometer, gyroscope, or magnetometer”) it has claimed patent eligible subject matter. Applicant’s argument is not persuasive as the CAFC has held repeatedly that the use of sensors for data gathering does not add “significantly more” to an otherwise abstract idea. See, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician (non-precedential). Applicant also argues that because it’s invention is directed to “the improvement of golf swings” it has claimed patent eligible subject matter. Such improvements to human performance, however, are not patent eligible subject matter under the Mayo test. See Trading Technologies v. IBG LLC (2017-2257; 4/18/19), page 9 (“This invention makes the trader faster and more efficient, not the computer. This is not a technical solution to a technical problem”, emphasis original).
Applicant further argues that it has claimed “significantly more” because the combination of the elements its claims in addition to its abstract ideas and the abstract ideas themselves is allegedly novel and/or non-obvious. The lack of an art rejection is immaterial under the Mayo test, however, as to whether patent eligible subject matter has been claimed:
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In re: Greenstein (2019-1117; 6/10/19; non-precedential), slip. op., pages 6-7.
Applicant further argues that because its claimed subject matter is allegedly analogous to certain claims that are part of 101 Examples provided by the Office that it has claimed patent eligible subject matter. Applicant’s argument is not persuasive because it is unclear how to apply the 101 Examples given that the Mayo test is a legal test and the Office cannot make law as part of the executive branch; the Examples by and large do not cite to relevant legal authority to provide their basis or rationale as well as some of the Examples are inapposite to precedential CAFC decisions; as well as because the Examples are not provided with specifications that would allow the BRI of the limitations in question to be determined.
For these reasons the rejections made under 35 USC 101 are maintained.
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 extension fee 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 Mike Grant whose telephone number is 571-270-1545. The Examiner can normally be reached on Monday through Friday between 8:00 a.m. and 5:00 p.m., except on the first Friday of each bi-week.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's Supervisory Primary Examiner, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL C GRANT/Primary Examiner, Art Unit 3715
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