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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 19 May 2026 has been entered.
Status of Claims
In the reply filed on 19 May 2026 no changes were made.
Claims 1-12 and 14-18 are currently pending and have been examined.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/464,491 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. For claims 1, 7, and 12, the prior-filed application does not disclose “generating a personalized recommendation based on the early-stage medical condition of the particular user”, and “transmitting information indicating the personalized recommendation to one of the client systems associated with the particular user for display of the personalized recommendation to manage the early-stage medical condition.” Examiner cannot find disclosure of generating a personalized recommendation based on the early-stage medical condition of the particular user, and transmitting information indicating the personalized recommendation to one of the client systems associated with the particular user for display of the personalized recommendation to manage the early-stage medical condition. For claims 3 & 9, the prior-filed application does not disclose “aggregating information from a plurality of personalized databases corresponding to a plurality of users.” Examiner cannot find disclosure of aggregating information from a plurality of personalized databases corresponding to a plurality of users. Accordingly, claims 1-12 and 14-18 are not entitled to the benefit of the prior application.
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 1-12 and 14-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1
The claim(s) recite(s) subject matter within a statutory category as a machine (claims 1-6), process (claims 7-11), and machine (claims 12 and 14-18).
INDEPENDENT CLAIMS
Step 2A Prong 1
Claim 1 recites steps of
at least one processor; and
at least one memory communicatively coupled to the at least one processor and comprising computer-readable instructions that upon execution by the at least one processor cause the at least one processor to perform operations comprising:
monitoring data in real-time by a plurality of client systems, each of which is associated with a particular user who has not diagnosed with a medical condition, and wherein data from each of the plurality of client systems indicate the behaviors and corresponding changes in daily activities of the particular user and biological and biochemical information of the particular user;
generating a personalized database corresponding to each particular user based on the data received from each of the plurality of client systems, wherein the personalized database comprises information indicating frequencies of a plurality types of events associated with the particular user, an environmental condition corresponding to each event, behavioral characteristics and corresponding changes of the particular user at each event, a timestamp of each event, a length of time each event, and the biological and biochemical information of the particular user;
encrypting the personalized database corresponding to each particular user to prevent unauthorized access to the information stored in the personalized database;
performing pattern recognition to detect a change in a condition of the particular user based on the personalized database using a machine learning model, wherein the
change in the condition comprises at least a change in cognitive functions of the particular user, and wherein the change in the condition is indicative of the early-stage medical condition;
generating a personalized recommendation based on the early-stage medical condition of the particular user; and
transmitting information indicating the personalized recommendation to one of the client systems associated with the particular user for display of the personalized recommendation to manage the early-stage medical condition.
Claim 7 recites similar limitations as claim 1 but for the recitation of generic computer components.
Claim 12 recites steps of
at least one processor; and
at least one memory communicatively coupled to the at least one processor and comprising computer-readable instructions that upon execution by the at least one processor cause the at least one processor to perform operations comprising:
monitoring data of a particular user in real-time by a plurality of components, wherein the plurality of components comprise at least one camera device configured to capture images and videos and perform visual recognition, the plurality of components further comprise at least one optical probe configured to inject incident light and detect biological and biochemical information of the particular user, and the data comprise information indicating behaviors and corresponding changes in daily activities of the particular user and the biological and biochemical information of the particular user;
detecting changes of the behavior of the daily activities and changes of the biological and biochemical information of the particular user over time based on the data;
generating a personalized database corresponding to the particular user based on the detected changes, wherein the personalized database comprises information indicating frequencies of a plurality types of events associated with the particular user, an environmental condition corresponding to each event, behavioral characteristics and corresponding changes of the particular user at each event, a timestamp of each event, a length of time of each event, and the biological and biochemical information of the particular user, and wherein the personalized database corresponding to the particular user is encrypted to prevent unauthorized access to the information stored in the personalized database;
determining the early-stage medical condition of the particular user based on the personalized database, wherein the early-stage medical condition is determined by utilizing a trained machine learning model;
generating a personalized recommendation based on the condition; and
presenting the personalized recommendation to the particular user for managing the early-stage medical condition.
These steps for the monitoring and evaluation of user data with respect to a condition for a personalized recommendation, as drafted, under the broadest reasonable interpretation, includes methods of organizing human activity but for recitation of generic computer components. That is, other than reciting steps as performed by a user device, nothing in the claim element the precludes the italicized portions from managing personal behavior or relationships or interactions between people by organizing the activity around managing health through data collection. This could be analogized to collecting information, analyzing it, and displaying certain results of the collection and analysis. If a claim limitation, under its broadest reasonable interpretation, covers performance as organizing human activity but for the recitation of generic computer components, then it falls within the “Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong 2
This judicial exception is not integrated into a practical application. In particular, the additional elements non-italicized portions identified above for claims 1, 7, and 12, do not integrate the abstract idea into a practical application, other than the abstract idea per se, because the additional elements amount to no more than limitations which:
amount to mere instructions to apply an exception (such as
recitation of at least one processor; at least one memory communicatively coupled to the at least one processor and comprising computer-readable instructions that upon execution by the at least one processor cause the at least one processor to perform operations; using a machine learning model; transmitting information […] for display of the personalized recommendation; and, by a plurality of components, wherein the plurality of components comprise at least one camera device configured to capture images and videos and perform visual recognition amounts to invoking computers as a tool to perform the abstract idea, see MPEP 2106.05(f))
add insignificant extra-solution activity to the abstract idea (such as recitation of the plurality of components further comprise at least one optical probe configured to inject incident light and detect biological and biochemical information amounts to mere data gathering since it does not add meaningful limitations to the detecting action performed, see MPEP 2106.05(g))
Each of the above additional elements therefore only amounts to mere instructions to implement functions within the abstract idea using generic computer components or other machines within their ordinary capacity. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. These elements are therefore not sufficient to integrate the abstract idea into a practical application. Therefore, the above claims, as a whole, are directed to an abstract idea.
Step 2B
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to discussion of integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply an exception. Additionally, the additional limitations, other than the abstract idea per se, amount to no more than limitations which:
amount to mere instructions to apply an exception in particular fields such as recitation of at least one processor; at least one memory communicatively coupled to the at least one processor and comprising computer-readable instructions that upon execution by the at least one processor cause the at least one processor to perform operations; transmitting information […] for display of the personalized recommendation; e.g., a commonplace business method or mathematical algorithm being applied on a general-purpose computer, Alice Corp. v. CLS Bank, MPEP 2106.05(f); using a machine learning model; and, by a plurality of components, wherein the plurality of components comprise at least one camera device configured to capture images and videos and perform visual recognition, e.g., requiring the use of software to tailor information and provide it to the user on a generic computer, Intellectual Ventures I LLC v. Capital One Bank., MPEP 2106.05(f)
amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields such as recitation of the plurality of components further comprise at least one optical probe configured to inject incident light and detect biological and biochemical information, [pg. 156, Col .1] “The handheld probe (Fig. 3) consists of an OCT imaging fiber with a gradient refractive index lens and prism mounted to the end using ultraviolet cured glue (detailed in Fig. 4), which allowed for the delivery and collection of light from the target tissue.” [pg. 156, Col .2] “To assist the user in positioning the probe, colored markings were made along one side of the optic fiber opposite the light exit. […] To acquire images, the scanning tip of the handheld probe was inserted into the subject’s nasal cavity and oriented toward the specific region of interest. OCT images from the various anatomic sites were then recorded to the workstation”; Mahmood et al. (In vivo optical coherence tomography of the nasal mucosa), MPEP 2106.05(d)(II)(i)
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. 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.
DEPENDENT CLAIMS
Step 2A Prong 1
Dependent claims recite additional subject matter which further narrows or defines the abstract idea embodied in the claims (such as claims 2-6, 8-11, and 14-18 reciting particular aspects of monitoring and evaluation of user data with respect to a condition for a personalized recommendation such as
[Claims 2 & 8] wherein the data from each of the plurality of client systems are detected by a plurality of components, wherein the plurality of components comprises at least one camera device configured to capture images and videos and perform visual recognition, and at least one optical probe configured to inject incident light and detect the biological and biochemical information of the particular user;
[Claims 3 and 9] aggregating information from a plurality of personalized databases corresponding to a plurality of users; and
classifying the plurality of users into a plurality of groups based on the information;
[Claims 4 and 10] defining new training data; and
training the machine learning model on the new training data to improve an accuracy of condition prediction;
[Claims 5 and 11] wherein the early-stage medical condition comprises an early-stage dementia;
[Claim 6 & 18] comparing data stored in the personalized databases corresponding to each particular user to identify a change and/or a cause of each event;
[Claim 14] uploading the data to a server system; or
uploading the personalized database to the server system;
[Claim 15] monitoring the data in real-time by a wearable device;
[Claim 16] monitoring the data by a device comprising an optical probe, wherein the device is configured to collect the biological and biochemical information based on receiving a light signal from a biological and biochemical sample of the particular user;
[Claim 17] wherein the optical probe comprises an optic fiber configured to pass deep through a nasal cavity to collect the biological and biochemical information of the particular user;
these italicized portions are methods of organizing human activity. Additionally, the training steps in claims 4 and 10 recite mathematical calculations which falls within the abstract idea of mathematical concepts, in light of the new 2024 USPTO AI Guidance. Examiner points out that the applicant’s specification [0040] and [0041] discloses that the machine learning models can include one or more regression models. These identified limitations merely describe types of data and determinations that can be performed by humans.)
Step 2A Prong 2
Dependent claims 2, 8, and 14-17 recite additional subject matter which amount to limitations consistent with the additional elements in the independent claims (the additional limitations in claims 2 & 8 (by a plurality of components, wherein the plurality of components comprises at least one camera device configured to capture images and videos and perform visual recognition), claim 14 (uploading the data to a server system; or uploading the personalized database to the server system), and claim 15 (by a wearable device) amounts to invoking computers as a tool to perform the abstract idea, see MPEP 2106.05(f); add insignificant extra-solution activity to the abstract idea such as claims 2 & 8 (at least one optical probe configured to inject incident light and detect the biological and biochemical information), claim 16 (by a device comprising an optical probe, wherein the device is configured to collect the biological and biochemical information based on receiving a light signal from a biological and biochemical sample of the particular user); and, claim 17 (wherein the optical probe comprises an optic fiber configured to pass deep through a nasal cavity to collect the biological and biochemical information of the particular user) amounts to mere data gathering and output since it does not add meaningful limitations to the collecting performed, see MPEP 2106.05(g))). 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.
Step 2B
Dependent claims 2, 8, and 14-15 recites additional subject matter which, as discussed above with respect to integration of the abstract idea into a practical application, amount to invoking computers as a tool to perform the abstract idea, e.g., a commonplace business method or mathematical algorithm being applied on a general-purpose computer, Alice Corp. v. CLS Bank, MPEP 2106.05(f). Also, see [0058], [0065]-[0066], [0071], [0074], and [0084] which provides examples of computer devices and [0135] which provides examples of various hardware devices. Dependent claims 2, 8, and 16-17 amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields, [pg. 156, Col .1] “The handheld probe (Fig. 3) consists of an OCT imaging fiber with a gradient refractive index lens and prism mounted to the end using ultraviolet cured glue (detailed in Fig. 4), which allowed for the delivery and collection of light from the target tissue.” [pg. 156, Col .2] “To assist the user in positioning the probe, colored markings were made along one side of the optic fiber opposite the light exit. […] To acquire images, the scanning tip of the handheld probe was inserted into the subject’s nasal cavity and oriented toward the specific region of interest. OCT images from the various anatomic sites were then recorded to the workstation”; Mahmood et al. (In vivo optical coherence tomography of the nasal mucosa), MPEP 2106.05(d)(II)(i). There is no indication that these additional elements improve the functioning of a computer or improves any other technology. Their collective functions merely provide generic computer implementation. Therefore, in consideration of all the facts, it is evident that the present invention is not a patent-eligible invention under USC 101.
Response to Arguments
Applicant’s arguments filed on 19 May 2026 have been considered but are not fully persuasive.
Regarding the title objection, applicant has submitted a new title that reflects the claimed invention. Therefore, the title objection has been withdrawn.
Regarding the USC 101 rejection, applicant argues on pages 9 to 11 that independent claims 1, 7, and 12 are not certain methods of organizing human activity. Applicant asserts that examiner’s analysis does not align with what the claim actually recites. Applicant states that the claims does not direct how people should behave, interact with one another, or structure their relationships; and, does not set rules for human conduct or coordinate activities among individuals, but that the claimed invention monitors data related to a user and processes the data using computer technology. Applicant asserts that simply using information about a person does not amount to managing that person’s behavior or their relationships with others. Applicant describes the invention where the claimed operations are performed by computer technology and the data (indicative of human behaviors) are data signals. Applicant states that the claimed invention analyzes collected information to detect changes that may indicate a medical condition; managing or monitoring health through automated data analysis is not the same as managing personal behavior or social interactions. Applicant asserts that the examiner’s analysis collapses the distinction between medical technology and human activity organization; further stating that if the mere analysis of heath data were enough to constitute "organizing human activity," then virtually all modem medical diagnostics would improperly fall within the abstract category of “organizing human activity." Applicant posits that the claims are directed to a technological system that detects early-stage medical conditions through secure, real-time data processing and machine-learning analysis, not to managing personal behavior, relationships, or interactions between people under Step 2A Prong 1. Even if the claims are abstract under Step 2A Prong 1, applicant asserts that under Step 2A Prong 2 the claims integrate the abstract idea into a practical application since the claimed invention applies data collection and analysis techniques in the specific context of real-time medical monitoring and early-stage medical condition detection using computer systems. Applicant asserts that the claims improve how computers are used in the healthcare technology context where the generation of an encrypted personalized database and the use of machine-learning-based pattern recognition allow the system to identify subtle changes in medical conditions in real time. It is also asserted by the applicant that the operations of the claimed invention, from data acquisition, to secure storage, to automated analysis, to actionable output demonstrates a meaningful integration of any alleged abstract idea into a practical application of improving technology for early-stage detection of medical conditions. Applicant requests withdrawal of the USC 101 rejection.
Examiner disagrees with the applicant’s arguments. Examiner asserts the claims still recite organizing human activity as it involves managing personal behavior and relationships or interactions between people. As stated previously, the applicant’s abstract claims specifically read on gathering, analyzing, and acting upon data which have historically been performed by clerical/medical staff. The claimed system clearly relates to managing health through data collection (behaviors, biochemical info, etc.), which is a method of organizing human activity or a business method. The applicant seems to take an interpretation of USC 101 that attempts to stretch the claim limitations to argue that the claims are not abstract. Examiner directs the applicant to the USPTO October 2019 Guidance (also incorporated in MPEP 2106) which states that claims can recite an abstract idea even if they are claimed as being performed on a computer. The USPTO October 2019 Guidance is clear in that the courts have found claims requiring a generic computer or nominally reciting a generic computer may still recite an abstract idea even though the limitations may not be entirely performed by humans. The recitation of real-time adds no value to the claim and is relative especially since the applicant’s specification presents no special definition of real-time that would be considered different from what one of ordinary skill in the art would know. The computer components recited in the present application are still recited at a high level of generality. Examiner points out that the computers in the claims are not used in a specific, inventive way. The claim dresses up an abstract process with generic hardware (e.g., plurality of client systems, processors, transmitting). Courts have long ruled that adding "apply it on a computer" or "encrypt the data" to an abstract idea does not make it a patentable invention (MPEP 2106). The claims are very outcome-focused and do not detail how each of the outcomes are reached. For instance, the applicant’s generic claim doesn’t delineate the steps of how each of the monitoring, generating, encrypting, and performing pattern recognition steps are specifically done; there is no clarity on the actual computer processing or how the computer is programmed to achieve the results in a non-abstract way different from how humans handle data. One of ordinary skill in the art would understand that applicant’s invention is directed to judicial exception as also confirmed by multiple subject matter experts at the USPTO. For example, the generic encryption step added by the applicant would be understood by one of ordinary skill in the art to be mean using a personal codebook or a "substitution cipher" notebook to scramble sensitive information before entering it into a spreadsheet or diary. Examiner asserts that tacking on generic language of machine learning (which the applicant did not contend they invented) without delineating the algorithmic steps explaining the “how” that is unique to the machine learning being implemented in the present invention does not automatically save the claims from USC 101. The present machine learning claimed is a black box model with no clarity on the actual computer processing or how the computer is programmed to achieve the results in a non-abstract way different from how humans analyze/process data. Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1984 (2014). See also OIP Techs. v. Amazon.com, 788 F.3d 1359, 1364, 115 USPQ2d 1090, 1093-94 (Fed. Cir. 2015) ("Just as Diehr could not save the claims in Alice, which were directed to ‘implement[ing] the abstract idea of intermediated settlement on a generic computer’, it cannot save OIP's claims directed to implementing the abstract idea of price optimization on a generic computer.") (citations omitted). If the applicant’s claims truly weren’t directed to methods of organizing human activity, then the claims wouldn’t be directed towards monitoring data related to a user and processing the data (but that is not the case presently).
With respect to Step 2A Prong 2, examiner asserts that the present specification provides a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art. The MPEP provides that improvements to the functioning of a computer or to any other technology or technical field can signal eligibility, see MPEP 2106.05(a), and provides examples of improvements to computer functionality, MPEP 2106.05(a)(I), and improvements to any other technology of technical field, MPEP 2106.05(a)(I). “In computer-related technologies, the examiner should determine whether the claim purports to improve computer capabilities or, instead, invokes computers merely as a tool”. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016). In Enfish, the court evaluated the patent eligibility of claims related to a self-referential database. Id. The court concluded the claims were not directed to an abstract idea, but rather to an improvement to computer functionality. Id. It was the specification' s discussion of the prior art and how the invention improved the way the computer stores and retrieves data in memory in combination with the specific data structure recited in the claims that demonstrated eligibility. 822 F.3d at 1339, 118 USPQ2d at 1691. The claim was not simply the addition of general-purpose computers added post-hoc to an abstract idea, but a specific implementation of a solution to a problem in the software arts. 822 F.3d at 1339, 118 USPQ2d at 1691. Unlike Enfish, the instant claimed invention appears to improve upon a judicial exception rather than a problem in the software arts. Rather than improving a computer's algorithm (i.e., solving a technically based problem), the claimed invention purports to solve the non-technological problem of difficulty in detection of early-stage medical conditions where symptoms are often ignored or attributed to other conditions and/or normal aging ([0017] of specification) by using computers to automate early-stage detection. In other words, one of the main/glaring issues with the present invention is that the problem solved by the applicant is not a technological problem. All the applicant is doing is applying known technology for their intended benefit(s) to a new data environment and calling it an improvement (see Customedia Techs., LLC v. Dish Network Corp., Case No.18-2239 (Fed. Cir. Mar. 6, 2020). Examiner points out that the applicant has clarified the record by asserting in their arguments on pages 9 to 10 that the invention performs monitoring of data related to a user and processes the said data by using computer technology; this supports the examiner’s assertion.
The examiner again asserts the following facts which the applicant has been unable to dispute:
1) the invention does NOT involve a novel algorithm or data structure that significantly improves the computer's functionality,
2) the invention does NOT involve a new hardware component or configuration that works with the computer to achieve a specific technical benefit, and
3) the computer is NOT used in a completely new way demonstrating a significant technical advancement.
It is evident from the specification and claims that the applicant is not improving computer technology, and instead providing an improvement to the abstract idea by automating early-stage detection. An improvement to the abstract idea is not an improvement to computer technology. Thus, examiner does not see how the present claims improve the functioning of a computer or provide improvements to any other technology or technical field. The claimed invention appears similar to the example of improvements that are insufficient to show an improvement in computer-functionality such as arranging transactional information on a graphical user interface in a manner that assists traders in processing information more quickly, Trading Technologies v. IBG LLC, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019). See MPEP 2106.05(a)(I)(viii). The broad claims are lacking concrete limitations to integrate the abstract idea into a practical application. Examiner points out that the claimed limitations have no indication in the specification that the operations recited invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (fed Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). Most importantly, in DDR Holdings & unlike the present claims, the claims at issue specified how interactions with the Internet were manipulated to yield a desired result—a result that overrode the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink. 773 F.3d at 1258; 113 USPQ2d at 1106. The examiner also points out that there is no indication in the specification that the claimed invention affects a transformation or reduction of a particular article to a different state or thing. Examiner points to the recitation of machine learning in the claim(s) as generic. "[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice Corp. v. CLS Banklnt'l, 573 U.S. 208 223 (2014). Applicant does not and cannot contend they invented the concept of machine learning, nor does the specification disclose any new machine learning technique. In fact, the applicant’s specification [0018] recognizes known machine learning models in the art. The alleged improvement of using a machine learning model lies in the abstract idea itself, not to any technological improvement nor to any improvement to the functioning of a computer. See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287-88 (Fed. Cir. 2018). The fact pattern of the applicant’s claims is congruent to the Recentive Analytics, Inc. v. Fox Corp., 2025 U.S.P.Q.2d 628 (Fed. Cir. 2025) decision by the Federal Circuit. Just like in Recentive, the present claims do not delineate steps through which the machine learning technology achieves an improvement. See, e.g., IBM v. Zillow Grp., Inc., 50 F.4th 1371, 1381 (Fed. Cir. 2022) (holding abstract a claim that "d[id] not sufficiently describe how to achieve [its stated] results in a non-abstract way," because "[s]uch functional claim language, without more, is insufficient for patentability under our law." (quoting Two-Way Media Ltd v. Comcast Cable Commc'ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017))); see also Intell. Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (similar); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016) (similar). Claiming a mere concept or functional result without disclosing the implementation details does not overcome USC 101. Applying an established technique to a new field or data set is insufficient for patent eligibility. To show an involvement of a computer assists in improving technology, the claims must recite details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology (MPEP 2106.05(a)(II)). In Finjan, Inc. v. Blue Coat Systems the courts found that the claims were “directed to a non-abstract improvement in computer functionality…” (MPEP 2106.04(d)). The present invention clearly does not meet the condition set forth by the courts and thus is not integrated into a practical application. Additionally, it is evident that the present claims follow the fact pattern of Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012) by monopolizing mapping out a correlation with a generic computer (i.e., bodily changes + daily activity = early-stage medical condition), restricting further innovation in this area without offering a specific, technical improvement to how the computer actually operates. That is, it is clear applicant’s invention would stifle innovation and lock-up a basic tool of scientific and technological work (i.e., implementing an abstract idea on a generic computer) in the United States of America. Again, using generic computers is generally not enough to transform an abstract idea into patent-eligible subject matter if the core of the invention is still abstract; “monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.” Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980 (quoting Myriad, 569 U.S. at 589, 106 USPQ2d at 1978 and Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012)). The applicant has not demonstrated that their invention is inventive; thus, the present invention is not patent-eligible under USC 101. Therefore, the USC 101 rejection is strongly maintained.
Prior Art Cited but Not Relied Upon
Husebo, B. S., Heintz, H. L., Berge, L. I., Owoyemi, P., Rahman, A. T., & Vahia, I. V. (2020). Sensing technology to monitor behavioral and psychological symptoms and to assess treatment response in people with dementia. A systematic review. Frontiers in pharmacology, 10, 1699.
This reference is relevant because it discloses monitoring patient data for patients who have dementia and providing a personalized recommendation.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 WINSTON FURTADO whose telephone number is (571)272-5349. The examiner can normally be reached Monday-Friday 8:00 AM to 4:00 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mamon Obeid can be reached at (571) 270-1813. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WINSTON R FURTADO/Examiner, Art Unit 3687
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