DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Per step 1 of the Subject Matter Eligibility Test (See MPEP 2106), claim 1 is directed to an apparatus, which falls within a statutory category (See MPEP 2106.03).
Per step 2A, prong 1, claim 1 recites based on motion data obtained from a sensor worn by a user, detecting arm swing peaks and bounce peaks in the motion data; and calculating a step frequency of the user during a time period based on at least one of the arm swing peaks or the bounce peaks in the motion data. Detecting arm swing peaks and bounce peaks may be accomplished by a human observing the data to see peaks, which is a mental process, or by comparing the data to established thresholds (See MPEP 2106.04(a)(2), subsection III), which is a mathematical process (See MPEP 2106.04(a)(2), subsection I). Calculating a step frequency is also a mathematical process. Therefore, claim 1 recites an abstract idea that falls into the mathematical concepts grouping and the mental processes grouping.
The additional elements are a housing configured to be worn on an appendage of a user, comprising: a processor; a sensor configured to capture motion data of the user; and a non-transitory computer-readable medium.
Per step 2A, prong 2, The abstract idea is not integrated into a practical application. The housing is specified at a high level of generality and does not amount to more than a mere general linking of the abstract idea to a field of use (See MPEP 2106.05(h)). The processor and the non-transitory computer-readable medium are generic computer components and amount to instructions to implement the abstract idea on a computer, which doesn’t amount to more than instructions to apply the exception (See MPEP 2106.05(f)). The sensor recitation is mere data gathering in conjunction with the abstract idea which is insignificant extra-solution activity (See 2106.05(g)). When considered in combination, the additional elements are elements of the “unitary apparatus” and do not amount to more than mere than generally linking the abstract idea to a field of use because it is specified at a high level of generality (See MPEP 2106.05(h)). Due to the lack of details claim 1 fails to rise to the level of a “particular machine”, e.g. see MPEP 2106.05(b): noting that “The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines,” is a factor when evaluating whether the claim rises to the level of a “particular machine.”
Per step 2B, claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception for the same reasons. Further, with regard to the recitation of the sensor, the courts have recognized that data gathering in various manners is well-understood, routine and conventional (See MPEP 2106.05(d), subsection II).
Claims 2-8 depend from claim 1. Claims 2-8 recite further details of the abstract idea and do not recite any further additional elements. Therefore claims 2-8 are rejected for the same reason.
Claim 9 depends from claim 1. Claim 9 recites further details of the abstract idea. Claim 9 also recites a further additional element in the claim limitation for displaying the accumulated energy expenditure value on the display of the unitary apparatus. The displaying step is simply outputting the result of the abstract idea and is insignificant extra solution activity. Considered in combination with the other additional elements, the additional elements are elements of the “unitary apparatus” and do not amount to more than mere than generally linking the abstract idea to a field of use because it is specified at a high level of generality. Therefore, claim 9 is rejected for the same reason.
Per step 1 of the Subject Matter Eligibility Test (See MPEP 2106), claim 10 is directed to an non-transitory computer readable medium, which is a product and falls within a statutory category (See MPEP 2106.03).
Per step 1 of the Subject Matter Eligibility Test (See MPEP 2106), claim 16 is directed to a method, which is a process and falls within a statutory category (See MPEP 2106.03).
Per step 2A, prong 1, claim 10, and similarly claim 16, recites based on motion data obtained from a sensor worn by a user, detecting appendage swing instances and bounce instances in the motion data from the sensor worn on the appendage; and calculating a step frequency of the user during a time period based on at least one of the appendage swing instances or the bounce instances in the motion data. As discussed above with regard to claim 1, these limitations recite activity that falls within the mathematical processes grouping and the mental processes grouping.
Claims 10 and 16 do not recite any additional elements.
Per step 2A, prong 2, since claims 10 and 16 do not recite any additional elements the claims are not integrated into a practical application.
Per step 2B, since claims 10 and 16 do not recite any additional elements, the claims do not recite any additional elements that are significantly more than the abstract idea.
Claims 11 depends from claim 10. Claims 17 depends from claim 16. Claims 11 and 17 only recite further details of the abstract idea and do not recite any further additional elements. Therefore, claims 11 and 17 are rejected for the same reason.
Claim 12 depends from claim 11, and claim 18 depends from claim 17. Claims 12 and 18 recite further details of the abstract idea. Claims 12 and 18 both also recite a further additional element for displaying the accumulated energy expenditure value on a display of a device configured to be worn by the user during collection of the motion data. The displaying step is simply outputting the result of the abstract idea and is insignificant extra solution activity. The displaying step is recited at a high level of generality and does not integrate the abstract idea into a practical application and is not significantly more than the abstract idea.
Claims 13-15 depend from claim 12. Claims 19 and 20 depend from claim 18. Claims 13-15, 19 and 20 only recite further details of the abstract idea and do not recite any further additional elements. Therefore claims 13-15, 19 and 20 are rejected for the same reason. The additional elements are a housing configured to be worn on an appendage of a user, comprising: a processor; a sensor configured to capture motion data of the user; and a non-transitory computer-readable medium. The additional elements do not provide any improvement do not provide any improvement to the technology. And when considered individually and in combination with other claim features
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6-11 and 15-20 of U.S. Patent No. 9,747,411. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of claim 1-20 of the present application are taught in the ‘411 patent. Claims 1-9 of the present application correspond to claims 1, 2, 4, and 6-11, respectively of the ‘411 patent. Claims 10-15, correspond to claims 15-20, respectively of the ‘411 patent. Claims 16-20 correspond to claims 15-19, respectively of the ‘411 patent.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6-10, 12 and 15-20 of U.S. Patent No. 9,996,660. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of claim 1-20 of the present application are taught in the ‘660 patent. Claims 1-9 of the present application correspond to claims 1, 2, 4, 6-10 and 12, respectively of the ‘660 patent. Claims 10-15, correspond to claims 15-20, respectively of the ‘660 patent. Claims 16-20 correspond to claims 15-19, respectively of the ‘660 patent.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim1, 2, 4, 6-10, 12 and 15-20 of U.S. Patent No. 10,734,094. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of claim 1-20 of the present application are taught in the ‘094 patent. Claims 1-9 of the present application correspond to claims 1, 2, 4, 6-10 and 12, respectively of the ‘094 patent. Claims 10-15, correspond to claims 15-20, respectively of the ‘094 patent. Claims 16-20 correspond to claims 15-19, respectively of the ‘094 patent.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6-10, 12 and 15-20 of U.S. Patent No. 11,081,207. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of claim 1-20 of the present application are taught in the ‘207 patent. Claims 1-9 of the present application correspond to claims 1, 2, 4, 6-10 and 12, respectively of the ‘207 patent. Claims 10-15, correspond to claims 15-20, respectively of the ‘207 patent. Claims 16-20 correspond to claims 15-19, respectively of the ‘207 patent.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6-10, 12 and 15-20 of U.S. Patent No. 11,990,220. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of claim 1-20 of the present application are taught in the ‘220 patent. Claims 1-9 of the present application correspond to claims 1, 2, 4, 6-10 and 12, respectively of the ‘220 patent. Claims 10-15, correspond to claims 15-20, respectively of the ‘220 patent. Claims 16-20 correspond to claims 15-19, respectively of the ‘220 patent.
Applicant’s arguments, see page 16, filed 5 June 2026, with respect to claims 1-10, 13-16, 19 and 20 have been fully considered and are persuasive. The rejection of claims 1-10, 13-16, 19 and 20 under 35 U.S.C. 102 has been withdrawn.
Response to Arguments
Applicant's arguments filed 5 June 2026 have been fully considered but they are not persuasive.
Applicant states that the claims recite a specific technical solution, not an abstract idea, and that the human mind is not equipped to detect arm swing peaks and bounce peaks in continuous streams of accelerometer motion data from a wearable sensor and use those peaks to calculate step frequency. Peaks in data may be identified by simply observing whether the data exceeds a threshold (Specification par. 85), which a human can do by observing the data.
Applicant states that the claims are directed to an improvement in wearable sensor technology and that the claims integrate any such exception into a practical application. Referring to paragraphs 4 and 89 of the specification, Applicant states that features cited in the claims represent a specific technical improvement in wearable motion sensing technology-the ability to adapt peak detection methodology based on actual motion characteristics in the motion data obtained from a specific user, thereby addressing the prior art’s “failure to account for deviations between different users.” However, a claim reciting a judicial exception is not directed to the judicial exception if it also recites additional elements demonstrating that the claim as a whole integrates the exception into a practical application (MPEP 2106.04(d)(1)). Further, it is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements (See MPEP 2106.05(a)). The features described above, when found in the claims are part of the abstract idea. The additional elements are a housing configured to be worn on an appendage of a user, comprising: a processor; a sensor configured to capture motion data of the user; and a non-transitory computer-readable medium. The additional elements do not reflect any improvement to the technology when considered individually or in combination with other claim features.
Applicant states that the combination of elements provides an unconventional technical approach. Applicant states that the specific combination of : (1) a housing worn on an appendage, (2) a sensor capturing motion data, (3) detecting both arm swing peaks and bounce peaks, and (4) calculating step frequency based on at least one of these peaks represents an unconventional approach. While the housing and the sensor are additional elements, when considered individually and in combination, the housing is specified at a high level of generality and does not amount to more than a mere general linking of the abstract idea to a field of use (See MPEP 2106.05(h)). And when considered individually and in combination, the sensor is mere data gathering in conjunction with the abstract idea which is insignificant extra-solution activity (See 2106.05(g)).
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 MANUEL L BARBEE whose telephone number is (571)272-2212. The examiner can normally be reached M-F: 9-5:30..
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/MANUEL L BARBEE/Primary Examiner, Art Unit 2857
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