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 .
Drawings
The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d).
Specification
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
Content of Specification
(a) TITLE OF THE INVENTION: See 37 CFR 1.72(a) and MPEP § 606. The title of the invention should be placed at the top of the first page of the specification unless the title is provided in an application data sheet. The title of the invention should be brief but technically accurate and descriptive, preferably from two to seven words. It may not contain more than 500 characters.
(b) CROSS-REFERENCES TO RELATED APPLICATIONS: See 37 CFR 1.78 and MPEP § 211 et seq.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT: See MPEP § 310.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT. See 37 CFR 1.71(g).
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM: The specification is required to include an incorporation-by-reference of electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application. See 37 CFR 1.77(b)(5) and MPEP § 608.05. See also the Legal Framework for Patent Electronic System posted on the USPTO website (https://www.uspto.gov/sites/default/files/documents/2019LegalFrameworkPES.pdf) and MPEP § 502.05
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR. See 35 U.S.C. 102(b) and 37 CFR 1.77.
(g) BACKGROUND OF THE INVENTION: See MPEP § 608.01(c). The specification should set forth the Background of the Invention in two parts:
(1) Field of the Invention: A statement of the field of art to which the invention pertains. This statement may include a paraphrasing of the applicable U.S. patent classification definitions of the subject matter of the claimed invention. This item may also be titled “Technical Field.”
(2) Description of the Related Art including information disclosed under 37 CFR 1.97 and 37 CFR 1.98: A description of the related art known to the applicant and including, if applicable, references to specific related art and problems involved in the prior art which are solved by the applicant’s invention. This item may also be titled “Background Art.”
(h) BRIEF SUMMARY OF THE INVENTION: See MPEP § 608.01(d). A brief summary or general statement of the invention as set forth in 37 CFR 1.73. The summary is separate and distinct from the abstract and is directed toward the invention rather than the disclosure as a whole. The summary may point out the advantages of the invention or how it solves problems previously existent in the prior art (and preferably indicated in the Background of the Invention). In chemical cases it should point out in general terms the utility of the invention. If possible, the nature and gist of the invention or the inventive concept should be set forth. Objects of the invention should be treated briefly and only to the extent that they contribute to an understanding of the invention.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S): See MPEP § 608.01(f). A reference to and brief description of the drawing(s) as set forth in 37 CFR 1.74.
(j) DETAILED DESCRIPTION OF THE INVENTION: See MPEP § 608.01(g). A description of the preferred embodiment(s) of the invention as required in 37 CFR 1.71. The description should be as short and specific as is necessary to describe the invention adequately and accurately. Where elements or groups of elements, compounds, and processes, which are conventional and generally widely known in the field of the invention described, and their exact nature or type is not necessary for an understanding and use of the invention by a person skilled in the art, they should not be described in detail. However, where particularly complicated subject matter is involved or where the elements, compounds, or processes may not be commonly or widely known in the field, the specification should refer to another patent or readily available publication which adequately describes the subject matter.
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i) - (p).
(l) ABSTRACT OF THE DISCLOSURE: See 37 CFR 1.72 (b) and MPEP § 608.01(b). The abstract is a brief narrative of the disclosure as a whole, as concise as the disclosure permits, in a single paragraph preferably not exceeding 150 words, commencing on a separate sheet following the claims. In an international application which has entered the national stage (37 CFR 1.491(b)), the applicant need not submit an abstract commencing on a separate sheet if an abstract was published with the international application under PCT Article 21. The abstract that appears on the cover page of the pamphlet published by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) is the abstract that will be used by the USPTO. See MPEP § 1893.03(e).
(m) SEQUENCE LISTING: See 37 CFR 1.821 - 1.825 and MPEP §§ 2421 - 2431. The requirement for a sequence listing applies to all sequences disclosed in a given application, whether the sequences are claimed or not. See MPEP § 2422.01.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The specification does not provide any disclosure or discussion regarding the subject matter of claims 18, 19, 20, 21 and/or 22. Specifically, the specification does not mention or describe any of the subject matter recited in these claims such as to provide antecedent basis for the claim limitations as currently recited (e.g. there is no description/discussion as to determining behavior; replacing or enhancing a vestibular organ with an accelerometer; providing the brain with motion and orientation of the body; using the accelerometer to study therapeutics designed to treat DJD associated with pain; or using the accelerometer to measure the pupil activity of the human or animal throughout the day). The examiner notes that many of the terms used in these limitations are completely absent in the specification such as to provide a clear understanding of what the applicant wishes to cover with the scope of these claims.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Currently no claims are considered to be invoking a 35 USC 112(f) interpretation.
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 13-22 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.
Regarding claim 13-22, independent claim 13 recites the measurements of weight, force and acceleration are tabulated wirelessly and the data is calculated, provided, or recorded instantaneously using a smart device; however, there is no corresponding description in the specification to disclose how the method is performed or executed such as to show possession at the time of filing. The specification gives several examples in the examples section and further describes the use of Newton’s second law of motion, but is largely silent to the algorithms and/or equipment required to perform or calculate said broad data as recited in the claim. There mere description of the general idea of several examples without any details as to how the method is performed or reduced to practice, does not provide sufficient evidence or support to show the applicant had possession of the claimed invention to monopolize the scope to the breath of the general idea recited within the claim.
Further regarding at least claims 13, 15 and 16, and those dependent thereupon, the claims recite that the calculations, providing and/or recording are performed “instantaneously”. There is no support or description in the specification as to how these calculations, providing or recordings are provided “instantaneously”. The examiner notes that instantaneous is defined as “happening immediately, without any delay”, and the examiner contends that each of these steps of calculating, providing or recording all have an inherent amount of time that is required to perform these tasks, and thus cannot be done instantaneously, at least not in the plain meaning of the term. Accordingly, the applicant has not provided sufficient evidence to show that they have possession of a method that can perform these calculations, provide or record instantaneously at the time of filing. Further see the 112(b) rejection below.
Further regarding claim 15 and 16; the claim recites that the weight, force and acceleration are calculated simultaneously and provided instantaneously, however the specification describes that some of these variables must be know in order to perform the calculations. For example, going from the description provided in the specification, the weight must be estimated or input in order to calculate a force or acceleration needed to perform a task; or the task and force must be known in order to tabulate a weight required to perform the task at that desired force. Further, the claim recites circuitry for performing this task without describing or providing any algorithm/flowchart/program to be executed to provide such information as required. Based on the description, the specification has not provided sufficient evidence to show the application had possession of method of calculating all of these variables simultaneously and provide them instantaneously.
Further regarding claim 18; the claim recites that the accelerometer is used to determine behavior and provide a proxy for movement-based energy expenditure; however, the specification does not provide any description or mention as to how the accelerometer is used to determine behavior or how it would provide a proxy for movement-based energy expenditure based on that behavior to show that the applicant had possession of the claimed limitation at the time of filing.
Further regarding claim 19; the claim recites that the accelerometer replaces or enhances the vestibular organ in the inner ear of an animal or human. The specification does not provide any description or mention of how an accelerometer is used to replace or enhance a vestibular organ to show that the applicant had possession of the claimed invention at the time of filing.
Further regarding claim 21; the specification does not provide any description or mention as to how the accelerometer is used to study therapeutics designed to treat degenerative joint disease associated with pain to show that the applicant had possession of the claim limitation at the time of filing.
Further regarding claim 22; the specification does not provide any description or mention as to how the accelerometer is used to measure the pupil activity of the human or animal to show the applicant had possession of the claim limitation at the time of filing.
Claims 13-22 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claims 13-22, the specification does not describe the subject matter in such a way that one skilled in the art could make or use the invention. Specifically, the claim recites that the measurements of weight, force and acceleration are tabulated wirelessly and the data is calculated, provided or recorded instantaneously using a smart device. The undue experimentation factors (Wands factors) were considered to determine if the specification provides sufficient description to provide one of ordinary skill in the art to make and use the claimed invention as follows:
The breadth of the claims: the scope and breadth of the claims is large as it attempts to monopolize the general idea of measuring and calculating mass, energy or force, and/or acceleration of animal human, equipment or machines needed to accomplish any feat or goal wherein weight, force and acceleration are tabulated wirelessly and the data is calculated instantaneously. This breadth of the claim is extremely large and general as it contemplates measuring and calculating mass, energy or force, and/or acceleration of essentially any tangible object and tabulating all variables needed wirelessly and instantaneously.
The nature of the invention: the nature of the invention is very general as it is contemplating the calculation of mass, energy or force, and/or acceleration of any tangible object by calculating weight, force and acceleration wirelessly and instantaneously
The state of the prior art: the applicant has provided no art and a review of the general state of the art (see examiner’s cited references provided in the PTO-892 and cited within this office action) does not appear to contemplate how to calculate all of these
The level of one of ordinary skill: the level of one of ordinary skill in the art would be able to calculate some of these variables individually given the correct information as they would be aware of Newton’s second law of motion and general physics, but it would be left without guidance as to how the measurements of weight, force and acceleration are tabulated wirelessly and provided/recorded instantaneously using a smart device (i.e. the specification does not give any details into what kind of algorithm is used to obtain or perform any of the calculations in a reproducable manner)
The level of predictability in the art: the level of predictability of the prior art is low as there are a multitude of ways to carry out the claimed recitations without much description/direction provided by the specification (i.e. there is an explicitly high number of ways that one may estimate the weight and what calculations/steps are used to perform the calculations such as machine learning, algorithms, etc… without any guidance or general description within he spec)
The amount of direction provided by the inventor: the specification provides limited guidance and/or direction to the examiner as to how the method is carried out other than it utilizes an accelerometer and newton’s second law of motion. There specification provides limited and simplified examples of how the invention would work, but provides not guidance as to how one would make or use the invention with any kind of reproducibility. Further, there is little direction as to how the mass, energy or force, and/or acceleration required to accomplish a feat or goal is limited but the possibilities are endless/infinite (i.e. there is no guidance as to how one selects a feat or goal and then how that is modeled for in order to calculate the corresponding mass, energy or force, and/or acceleration which would be required to achieve such a calculation). Essentially the claim contemplates calculating the mass, force or energy, and/or acceleration required to perform any feat or goal without providing any description as to the calculations required to determine those values other than the basis of Newton’s second law of motion.
The existence of working examples: while the specification does provide some limited examples, the examples provided do not support and or describe the ability to make or use an invention within the scope of the claim. Specification the claim includes a scope where the weight, force and acceleration are tabulated wirelessly but provides not examples, description or algorithm to show how a program/algorithm would calculate each of these variables wirelessly and calculate an output instantaneously
The quantity of experimentation needed to make or use the invention based on the content of the disclosure: the quantity of experimentation needed to make used the invention based on the content of the disclosure is endless as the general invention concept attempting to be claimed in large and nebulous such that there is a near infinite number of ways to provide the claimed invention
Therefore, the examiner concludes, based on a consideration of the Wands factors, that the claims would require undue experimentation to make and use and reduce to practice the claimed invention.
The enablement issue is further exemplified in dependent claims 18, 19, 21 and 22 which recite further claim limitations which are not even described in the specification such as to provide any direction as to how one of ordinary skill in the art would make or use the claimed limitations. When reviewing the applicant’s disclosure, there is no discussion or description when considering the Wands factors to make or use the invention such as: how the accelerometer determines behavior (claim 18); how an accelerometer replaces or enhances the vestibular organ in the inner ear of an animal (claim 19); how the accelerometer is used to study therapeutics designed to treat DJD (claim 21); and/or how the accelerometer is used to measure pupil activity of the human throughout the day (claim 22). Each of these claim limitations would require specific and detailed explanation to provide one of ordinary skill with the ability to make and use an invention that performs these claim limitations, however there is no direction or description in the specification whatsoever as to how these claim limitations are performed and/or carried out, let alone to make and use an invention which performs these.
The claim limitations of claims 13-22 amount to a general idea without sufficient description as to how that idea would be performed and/or carried out such that when considering the Wands factors, one of ordinary skill in the art would be able to make and use the claimed invention; and thus fail to meet the enablement requirement of 35 USC 112(a).
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 13-22 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.
Regarding claims 13-22; the scope of independent claim 13 is unclear as one of ordinary skill in the art at the time of the invention cannot determine the metes and bounds of the claim. Specifically claim 13 does not include a transitional phrase and is written in the passive tense such that it is unclear as to the steps required. Further it is unclear what “data” is calculated, provided and recorded instantaneously using a smart device. For the purpose of advancing prosecution for the basis of prior art and practice compact prosecution, the examiner will interpret claim 13 as follows:
Examiner’s Interpretation of Claim 13 for basis of applying prior art:
A method for measuring and calculating an individual animal, human, equipment, or machine’s mass, energy or force, and/or acceleration to accomplish a feat or goal comprising:
tabulating the measurements of weight, force and acceleration of the individual animal, human, equipment, or machine wirelessly; and
calculating, providing, or recording the mass, energy or force, and/or acceleration required by the individual animal, human, equipment or machine to accomplish the feat or goal.
Further regarding at least claims 13, 15 and 16; it is unclear as to what breadth/scope the term “instantaneously” carries in the context of the claim. The specification does not provide any relevant discussion as to what constitutes instantaneous, and as outlined in the 112(a) rejection above, there is an inherent time associated with calculating, providing and recording using a smart phone or performing steps, and as such, it is unclear as to when something is considered to be “instantaneous” in view of the specification. For the purpose of advancing prosecution, the examiner will interpret the claims as if they do not recite “instantaneous” or “instantaneously”.
Further regarding claim 14 and 16; it is unclear if “a task or goal” recited in line 2 of claim 14 and “accomplish a certain task or attain a goal” in line 3 of claim 16 is the same or a different from the “a feat or goal” as recited in claim 13. For the purpose of advancing prosecution, the examiner will interpret “a task or goal” in claim 14 and “accomplish a certain task or to attain a goal” of claim 16 to be referring to the same “a feat or goal” which was recited in independent claim 13.
Further regarding claim 18; it is unclear in view of the specification as to the scope of the limitation “the accelerometer is used to determine a behavior and provide a proxy for movement-based energy expenditure.” The specification does not describe the accelerometer as determining a behavior or providing a proxy for movement-based energy expenditure such that it is unclear as to what is required by the claim. For the purpose of advancing prosecution the examiner will interpret claim 18 as: “The method of claim 17; further comprising: using the accelerometer to determine an action performed by the user and a movement-based energy expenditure associated with the action performed by the user”
Further regarding claim 21; it is unclear as to what the scope of the claim limitation “the accelerometer is used to study therapeutics designed to treat degenerative joint disease (DJD) associated with pain in an animal or human” in light of the specification. Said another way, what is required in the prior art to meet the limitation of “the accelerometer is used to study therapeutics designed to treat degenerative joint disease (DJD) associated with pain in an animal or human”. The specification doesn’t provide any description or discussion as to what or how the accelerometer would be used in studying DJD, and thus the scope of the claim is unclear and indefinite. For the purpose of advancing prosecution, the examiner will interpret the claim as “wherein the accelerometer outputs acceleration data for further use”.
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 13-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claims 13-22, independent claim 13 is the exemplary claim and is directed to a process (Step 1: Yes). The claim is directed to a judicial exception regarding an abstract idea (Step 2A, Prong 1: Yes). The abstract idea is bolded and italicized in the recreated claim below:
Claim 13:
A method to measure and calculate an individual animal, human, equipment, or machine's mass, energy or force, and/or acceleration to accomplish a feat or goal wherein the measurements of weight, force and acceleration are tabulated wirelessly, and wherein data is calculated, provided, or recorded instantaneously using a smart device.
The independent claim encompasses an abstract idea drawn to mental processes that can be done in the human mind and/or by hand using pen and paper; and mathematical concepts such a mathematical relationships, mathematical formulas or equations and/or mathematical calculations. In the instant case, the steps of calculating mass, energy or force, and/or acceleration, tabulating weight, force and acceleration, and calculating, providing or recording instantaneously are drawn to mental processes and mathematical concepts. Here the mental process equates to observing and determining weight, force and acceleration of a individual animal, human, equipment, or machine and determining/calculating the mass, energy or force, and/or acceleration required to accomplish a feat or goal based on the determined weight, force and acceleration of an individual animal, human, equipment, or machine. The mathematical concept is based on the mathematical relationship/formulas/equations of Newton’s second law of motion, that force = mass x acceleration. In other words, the mental process includes observation, evaluation, judgement, opinion and then calculation.
Further, the claims to not recite additional elements that integrate the judicial exception into a practical application (Step 2A, Prong 2: No). The claims fail to recite additional elements or combination of additional element to apply, rely on, or use the judicial exception in a manner that imposes meaningful limitations on the judicial exception. In the instant claims, the identified additional elements (limitations which are not bolded and italicized) do not integrate the judicial exception into a practical application as “using a smart device” amounts to merely applying the judicial exception by including the instruction to implement the abstract idea on a computer, or merely using a computer as a tool to perform the abstract idea (here “using a smart device” is recited at a high level of generality and provide no detail on how the smart device implements the abstract idea); and generally attempting to link the use of the judicial exception to a particular technological environment or field of use (tying it to a smart device). Furthermore, the additional elements, when considered individually and as a whole, with the abstract idea do not result in an improvement in the functioning of the computer or improvement in technology or technological field; do not apply the judicial exception to effect a particular treatment or prophylaxis; do not implement the judicial exception in conjunction with a particular machine or manufacture with is integral to the claim; do not affect the transformation or reduction of a particular article to a different state; and do not apply the judicial exception in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is nothing more than a drafting effort designed to monopolize the exception.
Finally, the claims as a whole do not include additional elements that are sufficient to amount to significantly more than the judicial exception (Step 2B: No). The additional element of “a smart device” in claim 13 does not amount to or contribute to the inventive concept recited in the abstract idea. The additional element, considered individually and as a whole, amount to merely implementing the abstract idea on a computer by reciting “use a smart device” which is recited at a high level of generality and does not attempt to meaningfully limit the abstract idea. Again, the recitation of “using a smart device” simply attempts to tie the abstract idea to an additional element recited at a high level of generality by using the concept of “apply it”. When considered as a whole, implementing the abstract idea, as outlined above, on a smart device does not amount to significantly more than the abstract idea as use of smart devices (i.e. any CPU) is well known, conventional and pervasive throughout diagnostics.
Accordingly, claims 13 is rejected as non-statutory as being directed to a judicial exception (abstract idea, mathematical concepts) without significantly more.
Dependnet claims 14-22 do not recite any further additional elements that implement the abstract idea into a practical application or amount to significantly more than the abstract idea as they merely provide further abstract idea steps (claims 14 and 15); or recite conventional, well known, routine and understood additional elements of an accelerometer and electronic circuitry with data storage at a high level of generality for mere data gathering or implementing of the abstract idea on a computer in the same manner as outlined for claim 13 above (claims 16-22).
Therefore, claims 14-22 are rejected as non-statutory as being directed to a judicial exception (abstract idea) without significantly more.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 13-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bonomi et al (US 2018/0368737 A1), as best understood..
Examiner’s Note: The claims are being rejected over prior art as best understood in view of the 35 USC 112 rejections described in the rejections above. Specifically, the examiner is relying upon the examiner’s interpretation of claims 13-22 as outlined in the rejections above for the purpose of applying prior art based on the understanding of the currently recited claims in view of the limited specification and disclosure.
Regarding claims 13-22; Bonomi discloses a method for measuring and calculating an individual animal, human, equipment, or machine’s mass, energy or force, and/or acceleration to accomplish a feat or goal (determines energy expenditure required to complete an activity; paragraph [0065]) comprising:
tabulating the measurements of weight, force and acceleration of the individual animal, human, equipment, or machine wirelessly (determines weight, force and acceleration via input of the weight and use of the accelerometer to determine force and acceleration; paragraph [0065]; claims 1 and 3; figures 1, 2, 5); and
calculating, providing, or recording the mass, energy or force, and/or acceleration required by the individual animal, human, equipment or machine to accomplish the feat or goal (determines energy expenditure related to an activity based on the mass, energy or force, and acceleration; paragraph [0065], claims 1 and 3; figures 1, 2, 5).
Further regarding claim 14; Bonomi discloses the weight is imputed to calculate force or energy and acceleration needed to accomplish a task or goal (discloses determining weight for input in determining energy expenditure; paragraphs [0043], [0046], [0055], [0064]-[0065], claims 1 and 3; figures 1, 2, 5).
Further regarding claim 15; Bonomi discloses the weight, force, and acceleration are calculated simultaneously and provided instantaneously (discloses determining weight for input in determining energy expenditure; paragraphs [0043], [0046], [0055], [0064]-[0065], claims 1 and 3; figures 1, 2, 5).
Further regarding claim 16; Bonomi discloses utilizes an accelerometer (sensor element 24 can be an accelerometer), weight input (receives or determines a weight of user) and electronic circuitry with data storage capability (computer and memory; figure 2) to perform instantaneous measurements of force or energy, acceleration, and weight to accomplish a certain task or to attain a goal (discloses determining energy expenditure which utilizes the weight and force in order to determine energy expenditure; paragraphs [0043], [0046], [0055], [0064]-[0065], claims 1 and 3; figures 1, 2, 5).
Further regarding claim 17; Bonomi discloses the accelerometer can be inserted or transplanted into a machine, a human or an animal's body (wherein the examiner notes that the device is capable of being inserted into a human or machine, which meets the broadest reasonable interpretation of the claim; paragraphs [0043], [0046], [0055], [0064]-[0065], claims 1 and 3; figures 1, 2, 5).
Further regarding claim 18; Bonomi discloses the accelerometer is used to determine behavior and provide a proxy for movement-based energy expenditure (discloses determining an activity/behavior corresponding to measured acceleration sensor data ; paragraphs [0064]-[0070]; figures 4 and 5).
Further regarding claim 19; Bonomi discloses accelerometer replaces or enhances the vestibular organ in the inner ear of an animal or human (wherein the examiner contends that the accelerometer provides data to the user based on the detected behavior which can enhance the user’s vestibular organ in the inner ear by providing them with additional information, thus meeting the BRI of the claim limitation).
Further regarding claim 20; Bonomi discloses the accelerometer provides the human or animal brain with information on the motion and orientation of the body (wherein the accelerometer provides the user’s brain with information on the motion and orientation of the body by defining the behavior via the display output; paragraphs [0043], [0046], [0055], [0064]-[0065], claims 1 and 3; figures 1, 2, 5).
Further regarding claim 21; Bonomi discloses the accelerometer is used to study therapeutics designed to treat degenerative joint disease (DJD) associated with pain in an animal or human (wherein the examiner notes that the output data is capable of being used in research of therapeutics; paragraphs [0043], [0046], [0055], [0064]-[0065], claims 1 and 3; figures 1, 2, 5).
Further regarding claim 22; Bonomi discloses the accelerometer is used to measure the pupil activity of the human or animal throughout the day (wherein the examiner notes that the accelerometers can be placed over the body and would record any accelerations experiences by the body, including those associated with eye activity during the day).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2012/0084053 A1 to Yuen et al; discloses a portable monitoring device and method of operating.
US 2021/0113099 A1 to Rogers et al; discloses wireless medical sensors and methods.
US 8,961,414 B2 to Teller et al; discloses an apparatus for monitoring health, wellness and fitness.
US 11,243,093 B2 to Burton et al; discloses methods, systems and devices for generating real-time activity data updates to display devices.
WO 2025/145232 A1 to Silbery et al; discloses a portable monitoring device, associated system and method.
EP 3387989 A1 to Tiemann; discloses a method and apparatus for monitoring a subject.
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/ADAM J EISEMAN/ Primary Examiner, Art Unit 3791