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 7/9/26 are hereby entered.
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, 5-11, and 13-18 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, 5-11, and 13-18 are directed to an abstract idea without significantly more. The claims recite a mental process that can be performed by a human being.
In regard to Claims 1, 11, and 18, 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in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential);, in terms of the Applicant claiming:
[a] method […] for reading a putting green, comprising:
performing auto-leveling of the mobile device, wherein the auto-leveling […] comprises a pitch adjustment and a roll adjustment caused by the mobile device case configuration or the one more cameras protruding from the mobile device;
[…];
[receiving] a first set of accelerometer data […];
[…];
[receiving] a second set of accelerometer data […];
[…];
[receiving] a third set of accelerometer data […];
[…];
[receiving] a fourth set of accelerometer data of the mobile device;
converting the first, second, third and fourth sets of accelerometer data to pitch calibrations and roll calibrations;
computing an average for the pitch and roll calibrations; and saving the result […].
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.
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., embodying some or all of Applicant’s abstract idea as computer instructions that are executed on a computing device; a mobile device comprising a camera that protrudes from the device, an accelerometer, a memory, and a processor; placing a mobile device on a surface, and/or rotating the mobile device in space, 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., embodying some or all of Applicant’s abstract idea as computer instructions that are executed on a computing device; a mobile device comprising a camera that protrudes from the device, an accelerometer, a memory, and a processor; placing a mobile device on a surface, and/or rotating the mobile device in space, 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 and text regarding same in Applicant’s PGPUB; see, e.g., p100 in regard to placing a mobile device on a surface; and/or see, e.g., F5C in regard to rotating the mobile device in space.
Response to Arguments
Applicant argues on page 7 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s arguments are not persuasive. The “auto-leveling” involves collecting data regarding the dimensions of the phone camera’s protrusion relative to its case and analyzing that data by making a mathematical adjustment to the pitch and roll of the camera body, and is thereby abstract as a mental process. Placing the device on a surface and rotating the device are not identified in the 101 rejection as being part of the alleged abstract idea that can be performed mentally. And collecting data is a mental process. See the CAFC’s opinions in, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician (non-precedential) in this regard. The 101 rejection does not allege that the accelerometers themselves, in other words, are part of the alleged abstract idea that can be performed as a mental process.
Applicant’s claimed invention is not analogous to McRO. Contrary to Applicant’s argument, the CAFC did not hold in McRO that patent eligible subject matter was necessarily claimed under the Mayo test by merely claiming a specific set of rules. In fact, the CAFC held that the specific set of rules that were claimed in McRO claimed patent eligible subject matter because they resulted in an improvement to physical display by, e.g., making the computer animation of human facial motions more realistic:
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SAP America v. Investpic, slip. op., page 9.
Applicant does not claim any improvement to the realism of a computer display and is not, therefore, analogous to McRO.
Applicant’s claimed invention is not analogous to Thales. The CAFC held in Thales that the subject matter claimed therein was patent eligible because it resulted in the improved precision/accuracy of the claimed sensors:
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Id, slip. op., page 11.
Applicant’s claimed invention, however, does not result in the improved precising and/or accuracy of Applicant’s claimed sensors and is not, therefore, analogous to Thales.
Applicant’s claimed invention is not analogous to Diehr because Applicant’s invention does not result in the permanent transformation of any article.
Applicant argues on page 10 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s arguments are not persuasive because Applicant does not claim any “technological improvement” to its claimed device and/or sensors. Applicant’s claimed invention, in other words, does not result in its claimed mobile device and/or sensors being able to, e.g., run faster, operate more precisely , use less power, and/or be manufactured more cheaply. Applicant’s invention is instead directed to calculating a number, namely, the slope of a putting green. Such an improved use of math, however, does not render patent eligible under the Mayo test:
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In re: the Board of Trustees of the Leland Stanford Junior University (2020-10112; 3/11/21), slip. op., page 10.
What is more, the fact that Applicant claims the physical manipulation of the mobile device (laying it flat, rotating it) itself as part of its invention does not add “significantly more” to its abstract idea as it is merely extra-solution activity. See, e.g., the CAFC’s various decisions regarding the physical manipulation of tangible objects that did not result in patent eligible subject matter being claimed: In re: Marco Guldenaar (rolling dice), In re Smith (dealing cards), In re Rudy (fishing), and In re: Holly Brown, et al (non-precedential, cutting hair).
Applicant further argues on page 10 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s arguments are not persuasive because Applicant is incorrect that a Berkheimer finding cannot be made by citing to the applicant’s own specification. See MPEP 2106.07(a)(III)(A) (emphasis added):
Examiners should not assert that an additional element (or combination of elements) is well-understood, routine, or conventional unless the examiner finds, and expressly supports the rejection in writing with one or more of the following:
(A) A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s). A specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional elements as well-understood or routine or conventional (or an equivalent term), as a commercially available product, or 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). A finding that an element is well-understood, routine, conventional cannot be based only on the fact that the specification is silent with respect to describing such element. [AltContent: rect]
Applicant further argues on page 10 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s arguments are not persuasive because the “claimed calibration method itself” (emphasis omitted) is identified in the 101 rejection made supra as being the abstract idea, in terms of collecting data regarding the dimensions of the phone case and its camera and calculating a pitch and roll calibration factor based on those dimension; collecting accelerometer data, converting the accelerometer data based on the pitch and roll calculation; computing an average of the pitch and roll; and saving the result. And Berkheimer findings are only made for elements claimed in addition to (and not part of) the alleged abstract idea. See MPEP 2106.05(d)(I)(2): “A factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity. Berkheimer v. HP, Inc.” (emphasis omitted).
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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