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 .
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 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite a method and system for analyzing information. Under MPEP 2106.04(a)(2)(lIl), concepts relating to mental processes are drawn to abstract ideas. This judicial exception is not integrated into a practical application because the provision of generic computer components does not add a meaningful limitation to the abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception under the factors set forth in MPEP 2106. Such factors include:
• Improvements to another technology or technical field;
• Improvements to the functioning of the computer itself;
• Applying the judicial exception with, or by use of, a particular machine;
• Transformation or reduction of a particular article to a different state of being;
• Adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application; or
• Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
Further guidance is provided by Alice Corp. v. CLS Bank Int'l, 110 USPQ2d 1976 (U.S. 2014). Alice held that a method of mitigating settlement risk was drawn to an abstract idea. Alice further held that the performance of the method performed on a computer did not amount to “significantly more” than the abstract idea, and thus the claimed invention was drawn to a patent-ineligible abstract idea:
These cases demonstrate that the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Mayo, supra, at_(slip op., at 3). Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Bilski, supra, at 610-611. Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent's recitation of a computer amounts to a mere instruction to “implement]” an abstract idea “on ... a computer,” Mayo, supra, at_(slip op., at 16), that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our §101 jurisprudence. Given the ubiquity of computers, see 717 F.3d, at 1286 (Lourie, J., concurring), wholly generic computer implementation is not generally the sort of “additional feature]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Mayo, 566 U.S., at_(slip op., at 8-9).
Id at pp 1983-1984. Alice further held that apparatus claims drawn to a computer system were subject to the same analysis as the method claims, and were also not patentable subject matter:
Petitioner's claims to a computer system and a computer-readable medium fail for substantially the same reasons. Petitioner conceded below that its media claims rise or fall with its method claims. En Banc Response Brief for Defendant-Appellant in No. 11 -1301 (CA Fed.) p. 50, n. 3. As to its system claims, petitioner emphasizes that those claims recite “specific hardware” configured to perform “specific computerized functions.” Brief for Petitioner 53. But what petitioner characterizes as specific hardware— a “data processing system” with a “communications controller” and “data storage unit,” for example, see App. 954, 958, 1257—is purely functional and generic. Nearly every computer will include a “communications controller” and “data storage unit” capable of performing the basic calculation, storage, and transmission functions required by the method bclaims. See 717 F.3d, at 1290 (Lourie, J., concurring). As a result, none of the hardware recited by the system claims “offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment,’ that is, implementation via computers.” Id., at 1291 (quoting Bilski, 561 U.S., at 610-611).
Id. at pp 1984-1985. Turning to the claimed invention, a method and system for receiving and analyzing information, and displaying the results of the analysis, is directed to an abstract idea. See MPEP 2106.04(a)(2)(ll)(D) and Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1351 -52, 119 USPQ2d 1739, 1740 (Fed. Cir. 2016). Each of the recited steps – receiving physiological data of a user, generating physiological profiles, receiving a plurality of projections from a virtual model, generating a plurality of weighted values, ranking a set of suggested activities, and generating an output including a predetermined number of suggested activities – is a mental process pertaining to receiving and analyzing information. The method is performed by a generic computing device which under Alice is not sufficient to impart patentability to the system or method.
Consideration of the factors listed above pertaining to what is significantly more than the judicial exception, as viewed in light of the holding in Alice, weighs against patentability. While the method includes the use of a computer, the method does not involve an improvement in the function of a computer or other technology. Rather, generic computer components are used in their usual and customary way to perform the method. Mere automation of mental processes to improve efficiency is not sufficient to show an improvement in computer functionality. See Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017), as cited in MPEP 2106.05(a)(I), and Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015), as cited in MPEP 2106.05(f).
The claimed method does not require the use of a particular machine, as a generic computer system is not a “particular machine” under Alice, nor does it result in the transformation of a physical article. Rather, the result of the claimed method is a determination as to whether a calculated metric is outside a given set of ranges, which itself is an abstract concept.
Dependent claims 2-10 and 12-21 also fail to recite limitations which would overcome the rejection. These claims are generally directed to the types of information being received and analyzed as part of the method. Again, generic computer components are being used in their routine and conventional way. Because the claimed invention does not involve significantly more than the abstract concept of analyzing information, the claims are rejected under 35 USC 101.
Response to Arguments
Applicant's arguments filed May 14, 2026 have been fully considered but they are not persuasive.
With respect to the arguments pertaining to Step 2A First Prong, it remains the examiner’s position that the underlying method is capable of being practically performed in the human mind. Each of the steps recited in claim 1 – receiving various data for a person with diabetes, generating a plurality of profiles based on the data, generating a plurality of projections providing an estimated change in a physiological characteristic during a predetermined time period, generating a plurality of weighted values based on received information pertaining to a cohort of people with diabetes having similar preferences, ranking activities based on an estimated change in a physiological characteristic, and listing a predetermined number of suggested activities – is capable of being performed by a human being using no more than pen and paper. As noted above, while a processor is capable of performing these tasks more quickly than a human being, mere automation of mental processes to improve speed or efficiency is not sufficient to show an improvement in computer functionality. None of the recited steps is inextricably tied to a technology such that performance of the method produces an improvement in the technology. Rather, each step in the method consists of analyzing received data, and generating an output based on the analysis. Under the holding in Electric Power Group, such methods recited abstract mental processes performed by a general-purpose computer system. Note that claim 3 of Subject Matter Eligibility Example 37, which recites a method of ranking icons comprising steps of determining an amount of use of each icon and ranking the icons based on the analysis of the amount of use, does not recite patent-eligible subject matter. As noted in the Example, “other than reciting ‘by a processor,’ nothing in the claim precludes the determining step from practically being performed in the human mind.”. It remains the examiner’s position that claim 1 is analogous to claim 3 of Example 37, in that both claims recited purely mental processes performed by a generic computer system.
With respect to the arguments pertaining to Step 2A Second Prong, it also remains the examiner’s position that the generation and output of a ranked list of suggested activities based on analysis of received information does not constitute a practical application. Turning back to Subject Matter Eligibility Example 37, claim 1 of the Example recites a step of automatically moving icons on a GUI in accordance with a determined amount of use. This step in particular is not capable of being performed in the human mind, as a human being using pen and paper cannot rearrange icons on a GUI. Claim 1 of Example 37 provides an improvement in technology, as the user interface itself is improved. Similarly, claim 2 of Example 37 recites “a processor that tracks how much memory has been allocated to each application associated with each icon over a predetermined period of time”. This step is also not capable of being performed in the human mind, as tracking memory associated with each icon requires the use of a processor capable of tracking such information. Conversely, the method of claim 1 of the present application is not inextricably tied to the computer system such that the use of a processor performing a specific task related to the computer system itself is required. The ultimate result of the claimed method is a list of suggested activities, which is capable of being created by a human being using pen and paper.
With respect to the arguments pertaining to Step 2B, each of the holdings cited in MPEP 2106.05(d) pertaining to “well-understood, routine, and conventional activities” is directed to determining whether certain *technological* elements of a claimed invention are well-understood, routine, and conventional. For example, DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 113 USPQ2d 1097 (Fed. Cir. 2014) held that the claimed invention amounted to significantly more than the abstract idea because it recited limitations that “modified conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage, which differed from the conventional operation of Internet hyperlink protocol”. While the claimed method may recite an improved method of analysis to create a list of suggested activities for a person with diabetes, the method does not constitute an improvement in the computer system used to perform the analysis in such a way as to recite significantly more than the judicial exception under MPEP 2106.05(d). As a result, the claims remain rejected under 35 USC 101 as reciting unpatentable subject matter.
Applicant’s arguments with respect to the rejections under 35 USC 103 are persuasive. Those rejections have been withdrawn.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KURT FERNSTROM whose telephone number is (571)272-4422. The examiner can normally be reached M-F 10-6.
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/KURT FERNSTROM/Primary Examiner, Art Unit 3715 August 14, 2026
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