DETAILED ACTION
This office action is based on the claim set filed on 09/17/2025.
Claims 1 and 6 have been amended.
Claims 1-3, 6, 8, and 10-13 are currently pending and have been examined.
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.
Claim 1-3, 6, 8, and 10-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claims 1-3 and 10-11 are drawn to an apparatus/system, Claim 6 and 12 are directed to a method, and Claim 8 and 13 are drawn to an art of manufacturer, and each of which is within the four statutory categories (i.e., a machine and a process). Claims 1-3, 6, 8, and 10-13 are further directed to an abstract idea on the grounds set out in detail below.
Under Step 2A, Prong 1, the steps of the claim for the invention represents an abstract idea of a series of steps that recite a process for monitoring and predicting behavior of a human. Collecting a user characteristics data to estimate behavior relationship with characteristics and predict the user future behavior are steps that could have been performed by a human mind but for the fact that the claims recite a general-purpose computer processor to implement the abstract idea for which both the instant claims and the abstract idea are defined as Metal Process that can be performed using human mind with the aid of pencil and paper.
Independent Claim 1 recites the steps of:
“a health-oriented behavior estimation model storage unit that stores a health-oriented behavior estimation model learned by performing machine learning based on a health-oriented behavior tendency and a human characteristic scale
output a health-oriented behavior tendency of a prediction object by using the health-oriented behavior estimation model based on a plurality of human characteristic scales based on human characteristic data indicating human characteristics of the prediction object”.
Independent Claim 6 recites similar steps as in Claim 1.
These limitations, as drafted, given the broadest reasonable interpretation cover performance of the limitations by a human mind with aid of pen and paper reciting an abstract idea for Mental Process but for the recitation of generic computer components. For example, the limitations encompass a user the ability to estimate behavior tendency and a human characteristic scale for a user characterizes or attributes data that includes self-reporting such as age, gender, responses, etc., and estimate responses in a scale value to correlate the characteristics with behavior and output future behavior likelihood, which are steps that that could have been performed by a human to implement the abstract idea and are steps reciting mental process that could have been performed using a human mind with aid of pen and paper, but other than the mere nominal recitation of "processor, memory, machine learning", to implement the abstract idea for performing the steps of observing, evaluating, judgment and opinion which can be performed using a human mind with the aid of pencil and paper, see MPEP § 2106.04(a)(2)(III). Accordingly, the claim limitations (in BOLD) recite an abstract idea. Any limitations not identified above as part of the Mental Process are deemed "additional elements," and will be discussed in further detail below.
Under Step 2A, Prong 2, this judicial exception is not integrated into a practical application because the remaining elements amount to no more than general purpose computer components programmed to perform the abstract ideas, linking the abstract idea to a particular technological environment. In particular, the claims recite the additional elements such as “processor, memory, non-transitory computer readable recording medium, machine learning” that iteratively takes input data and analyzes said data to determine an output to performing generic computer functions, e.g., storing, for predicting a behavior such that it amounts no more than adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, see MPEP 2106.05(f), generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05(h), and a mere data gathering process that does not add a meaningful limitation to the above abstract idea, see MPEP 2106.04(d). As set forth in the 2019 Eligibility Guidance, 84 Fed. Reg. at 55 "merely include[ing] instructions to implement an abstract idea on a computer" is an example of when an abstract idea has not been integrated into a practical application. Accordingly, looking at the claim as a whole, individually and in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Under step 2B, the claims do not include additional elements that are sufficient to amount to "significantly more" than the judicial exception because as mentioned above, the additional elements amount to no more than generic computing components, recited at a high level of generality, do not present improvements to another technology or technical field, nor do they affect an improvement to the functioning of the computer itself, that amount to no more than mere instruction to perform the abstract idea such that it amounts no more than adding the words "apply it" (or an equivalent) to apply the exception using generic computer component, see MPEP 2106.05(f). There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation and mere instructions to apply an exception using a generic computer component cannot provide an inventive concept, See Alice, 573 U.S. at 223 ("mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention."). The claims are not patent eligible.
Dependent Claims 2-3 and 10-13 include all of the limitations of claim(s) 1, 6, and 8, and therefore likewise incorporate the above-described abstract idea. While the depending claims add additional limitations, such as
As for claims 2 and 10-13, the claim(s) recite limitations that are under the broadest reasonable interpretation, further define the abstract idea noted in the independent claim(s) that covers performance by a human mind with the aid of pen and paper, reciting an abstract idea for Mental Process along with mathematical calculations and relationships that constitute Mathematical Concepts but for the recitation of generic computer components. For example, calculating values, calculating characteristics, is/are Mathematical Concepts. The claims recite additional elements “processor” that implement the identified abstract idea. These hardware components are recited at a high level of generality to perform the steps that amounts to no more than the words "apply it" with a computer because it appears to intend to do so, which would still amount to mere instructions to apply the exception using generic computer components. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Additionally, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements amount to more than mere instruction to apply the exception using generic computer component and have been re-evaluated under the “significantly more” analysis. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept ("significantly more").
As for claims 3, the claim(s) recite limitations that are under the broadest reasonable interpretation, further define the abstract idea noted in the independent claim(s) that covers performance by a human mind with the aid of pen and paper, reciting an abstract idea for Mental Process but for the recitation of generic computer components. The claims recite additional elements “processor” that implement the identified abstract idea. These hardware components are recited at a high level of generality to perform the steps that amounts to no more than the words "apply it" with a computer because it appears to intend to do so, which would still amount to mere instructions to apply the exception using generic computer components. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Additionally, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements amount to more than mere instruction to apply the exception using generic computer component and have been re-evaluated under the “significantly more” analysis. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept ("significantly more").
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 6, 8, 10 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Cooke et al. (US 2016/0063144 A1- “Cooke”) in view of Sato et al. (Google machine translation “WO2021044514A1”- “Sato”) in view of Tanaka et al. (US 2021/0257072 A1 “Tanaka”)
Regarding Claim 1 (Currently Amended), Cooke teaches a prediction apparatus comprising:
a health-oriented behavior estimation model storage unit that stores a health-oriented behavior estimation model learned by performing machine learning based on a health-oriented behavior tendency and a human characteristic scale Cooke discloses a mathematical/statistical modeling module used to estimate and provide behavioral assessment using individuals’ attributes where the model is stochastic, providing not only what the predicted behavior might be but how likely or the probabilities that certain behaviors will occur based on the individual attributes and input independent variables (Cooke: [0075], [0101], [0107-0108], [0116-0117], [0126], [0129], [0136])
output a health-oriented behavior tendency of a prediction object by using the health-oriented behavior estimation model based on a plurality of human characteristic scales based on human characteristic data indicating human characteristics of the prediction object Cooke discloses evaluating and predicting a human behavior based on set of independent variables such that it reflects relationship between variables deriving behavior probability of the person and index [tendency] by measuring the variables as input and predict and outputs how likely or the probabilities that certain behaviors will occur [tendency] (Cooke: [0014], [0112], [0117-0120], [0130], [0134], [0136], [0148], [0152], [0200, 0202]).
Cooke discloses produce numerical values that are used to derive mathematical equation for measuring behavior probability index of a person ([0111-0112], [0134]), however, Cooke does not expressly discloses using scales and performing machine learning.
Sato discloses contribution estimation device that reflects the characteristics (degree of influence on the objective variable) of changes of each factor based on a scale type and calculate quantitative data (Sato: [p. 3]).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have Cooke mathematical model to incorporate calculating data using scale values, as taught by Sato, helps improving the accuracy of the analysis (Sato: [p. 3]).
Tanaka discloses a learning unit that learns a prediction model for predicting a future examination value of a designated target person where the learning unit generate and learn the predication model utilizing artificial intelligence (AI)/ machine learning (Tanaka: [0036-0039]).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have Cooke mathematical model for calculating a person attributes and behavior values to incorporate learning parameters to perform future prediction using machine learning, as taught by Tanaka, which may increase a person in a participation ratio in health guidance (Tanaka: [0097]).
Regarding Claim 2 (Previously Presented), the combination of Cooke, Sato, and Tanaka teaches the prediction apparatus according to claim 1, wherein the program instructions further cause the processor to convert the human characteristic data into a predetermined format in accordance with a nature of a scale of an answer value to a question item included in the human characteristic data, wherein the processor calculates the plurality of human characteristic scales based on the human characteristic data converted into the format Cooke discloses processing the collected raw data formats to include survey and/or self-reported data and transforming the collected data formats into a number values where questionnaires and/or surveys are scored and transformed into a numerical format (Cooke: [0073], [0088], [0101], [0110-0111]).
Regarding Claim 3 (Previously Presented), the combination of Cooke, Sato, and Tanaka teaches the prediction apparatus according to claim 2, wherein the processor converts a format of the human characteristic data according to any one of a nominal scale, an ordinal scale, an interval scale, and a ratio scale as the scale of the answer value Sato discloses converting or response data according to rating scales to include nominal scale, interval scale, ordinal scale, etc. (Sato: [p. 30).
The motivations to combine the above-mentioned references are discussed in the rejection of claim 1, and incorporated herein.
Regarding Claim 4 (withdrawn).
Regarding Claim 5 (withdrawn).
Regarding Claim 6 (Currently Amended), Cooke teaches a prediction method comprising:
the claims recite substantially similar limitations to claim 1, as such, are rejected for similar reasons as given above.
Regarding Claim 7 (Withdrawn).
Regarding Claim 8 (Previously Presented), Cooke teaches a non-transitory computer-readable recording medium having stored therein a program for causing a computer to execute the prediction method according to claim 6
the claims recite substantially similar limitations to claim 6, as such, are rejected for similar reasons as given above.
Regarding Claim 9 (Withdrawn).
Regarding Claim 10 (Previously Presented), the combination of Cooke, Sato, and Tanaka teaches the prediction apparatus according to claim 1, wherein the program instructions further cause the processor to:
calculate a value indicating a health-oriented behavior tendency of a learning object based on health target data and health behavior data of the learning object Cooke discloses a mathematical equation for calculating answer and determined behavior score value (Cooke: [0135-0136])
calculate a plurality of human characteristic scales based on human characteristic data indicating human characteristics of the learning object; Cooke discloses collecting and scoring raw data such as questionnaires and/or surveys which then produce numerical values that are used to derive mathematical equation [calculate] for measuring index of a person (Cooke: [0111-0112], [0134], [0149], [0198]). Sato discloses data input scales (Sato: [p. 3]).
learn a parameter of the health-oriented behavior estimation model based on the plurality of human characteristic scales and the value indicating the health-oriented behavior tendency Tanaka discloses a learning unit that learns a prediction model for predicting a future examination value of a designated target person to include attributes, tendency of past examination values, and lifestyle habits, or a combination thereof (Tanaka: [0037], [0044]).
The motivations to combine the above-mentioned references are discussed in the rejection of claim 1, and incorporated herein.
Regarding Claims 12-13 (Previously Presented), the claims recite substantially similar limitations to claim 10, as such, are rejected for similar reasons as given above.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Cooke et al. (US 2016/0063144 A1- “Cooke”) in view of Sato et al. (Google machine translation “WO2021044514A1”- “Sato”) in view of Tanaka et al. (US 2021/0257072 A1 “Tanaka”) in view of HIDEKI et al. (Google Machine translation JP2016085703A “Hideki”)
Regarding Claim 11 (Previously Presented), the combination of Cooke, Sato, and Tanaka teaches the prediction apparatus according to claim 10, wherein the program instructions further cause the processor to calculate values indicating a plurality of health- oriented behavior tendencies including a degree of retention indicating a degree to which a state close to a target value is maintained during a target period
However, the combination of Cooke, Sato, and Tanaka does not expressly teach degree of retention indicating behavior state to target level during a set period of time.
Hideki teaches inputting a behavior motivation state to the subject terminal and detecting whether or not the behavior data of the target person has continued or relapsed [retained] for more than half a year [target period] except for temporary suspension of behavior in light of the behavior target data (Hideki: [p. 4, D5-D6]).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have Cooke mathematical model for calculating a person attributes and behavior values to incorporate monitoring continuation or relapse of behavior during a target period of time, as taught by Hideki, which may help monitoring behavior to improve the efficiency and to suppress the occurrence of relapse aiming at preventing lifestyle-related diseases (Hideki: [p. 3], [p. 9, C]).
Response to Amendment
Applicant's arguments filed 09/17/2025 have been fully considered by the Examiner and addressed as the following:
In the remarks, Applicant argues in substance that:
Applicant's arguments with respect to the 35 U.S.C. § 101 rejection on page 1.
On page 1 of the remarks, the Applicant argues “Claims 1 and 6 are amended to delete the limitations identified by the examiner as being directed to as abstract idea. Thus, claims 1 and 6 are not directed to an abstract idea. Therefore, claims 1 and 6 are patent eligible.”, Examiner respectfully disagree. The claims are given their broadest reasonable interpretation for the purpose of determining whether they encompass a judicial exception. The claim limitations, given their broadest reasonable interpretation, recite steps, i.e., estimating, predicating and outputting a health-oriented behavior tendency based on a plurality of human characteristic scales based on human characteristic data, which have been analyzed under Step 2A, Prong One reciting a process for obtaining/collecting, determining, comparing (analyzing) and associating which are steps of observing, evaluating, judgment, and opinion that are citing a process for which can be performed using a human mind with the aid of pencil and paper, see MPEP § 2106.04(a)(2)(III), but for the fact that the claims recite a general-purpose computer processor to implement the abstract idea for which both the instant claims and the abstract idea are defined as Mental Process. As mentioned above, the steps recited in independent claims, when viewed as a whole, recite a Mental process and the recitation of machine learning model have been analyzed under Step 2A, Prong Two as an additional element cited as a tool (e.g., machine learning) for implementing claim steps that amounts to no more than mere instructions to implement “apply” the exception using a generic computer component and no more than adding the words "apply it" (or an equivalent) with the judicial exception.
Therefore, the Examiner has addressed the Applicant argument(s) and found this argument is not found to be persuasive. Hence, Examiner remains the 101 rejections of claims which have been updated to address Applicant's amendments.
Applicant's arguments with respect to the 35 U.S.C. § 103 rejection on page 1-4.
On page 2 of the remarks, the Applicant argues “The Applicant respectfully submits that Cooke is not an analogous art to the claimed invention. First, Cooke is not from the same field of endeavor as the claimed invention ... Second, Cooke is not reasonably pertinent to the problem faced by the inventor... Therefore, Cooke is not a proper reference to be used for the rejection under 35 U.S.C.103”, Examiner respectfully disagree. The reference Cooke invention is teaching modeling of human behavior where in Cooke, techniques used to estimate and evaluate fear, which is known to be associated with depression, psychosis, and attempting suicide and linked to poor physical health, using psychophysiological process which identifies the relationship between psychological processes and the body's physiological responses where metrics are used such as breathing and heart rate, blood pressure, skin temperature, etc. to derive fear index. Therefore, Cooke is in the field of endeavor describing estimating fear index and behavior of the human in relation to fear. In addition, while the problem of faced by the inventor is for predicting a health-oriented behavior tendency of a prediction object, Cooke teaches forecasting a human behavior to fear and pattern of action or reaction using characteristic of an individual that is reflecting the human to behave in certain ways. Therefore, Cooke address similar problem.
On page 2-3 of the remarks, the Applicant argues “As is described above, Cooke discloses that behavioral assessments are avoidance, vocalizations, and communications with respect to fear, which are not related to a health-oriented behavior. Additionally, Cooke does not disclose a machine learning model”, Examiner respectfully disagree. First, in Cooke [0101] argued by the Applicant, Cooke describes using a human characteristics or attributes to measure a health-related issue “fear” and reflection on the human behavior and not only the section selected by the Applicant. Second, the feature “machine learning” is a newly added feature that was not considered in the search and examining consideration of the prior office action(s). Nonetheless, Examiner finds the reference Tanaka used in corporation of the primary reference in the rejection of claim 10 discloses the newly added feature.
On page 3 of the remarks, the Applicant argues “Among other things, a prima facie case of obviousness must establish that the asserted combination of references teaches or suggests each and every element of the claimed invention. In view of the distinction of claim 1 noted above, at least one claimed element is not present in the asserted combination of Cooke and Sato”, Examiner finds that the argument is directed to a new feature and accordingly, Examiner finds the reference “Tanaka” disclosing the learning module, in claim 10, teaching the amended feature as such the teachings of the references are sufficient to render the claims prima facie obvious.
On page 3-4 of the remarks, the Applicant argues “the teachings of Tanaka are silent with regard to the feature "a health- oriented behavior estimation model learned by performing machine learning based on a health-oriented behavior tendency and a human characteristic scale" as recited in amended claims 1 and 6”, Examiner respectfully disagree. The reference Tanaka teaching a learning module to predict a subject behavior using the subject variables that includes health and lifestyle habits and where the learning module utilize machine learning.
On page 4 of the remarks, the Applicant argues “the teachings of Hideki are silent with regard to the feature "a health-oriented behavior estimation model learned by performing machine learning based on a health-oriented behavior tendency and a human characteristic scale" as recited in amended claim 1. For at least this reason, the Applicant submits that Hideki fails to remedy the deficiency in the teachings of Cooke and Sato”, Examiner respectfully disagree to this argument. Examiner asserts that the reference Hideki was introduced to teach the feature in claim 11 “degree of retention indicating a degree to which a state close to a target value...”. However, the amended feature argued by the Applicant is tout obvious in the reference Tanaka teaching a learning module to predict a subject behavior where the learning module utilize machine learning.
Examiner note that in response to applicant's arguments against the references individually, one cannot show nonobviousness by arguing references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413,208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Therefore, Examiner finds that the Applicant argument against the references is unpersuasive.
Prior Art Cited but not Applied
The following document(s) were found relevant to the disclosure but not applied:
US 2023/0027710 “Nakagawa” discloses evaluating behaviors of subjects to predict current or future on set of a health condition.
JP2017006745 “YASUHISA” discloses analysis of health information of a user to estimate a future health risk of the user.
The references are relevant since it discloses collecting a user characteristics or attributes data and predict his/her behavior and scoring the collected data using different scaling.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAAELDIN ELSHAER whose telephone number is (571)272-8284. The examiner can normally be reached M-Th 8:30-5:30.
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/ALAAELDIN M. ELSHAER/Primary Examiner, Art Unit 3687
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