DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because they are directed to non-statutory subject matter.
The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “‘[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
As summarized in the 2014 Interim Guidance on Patent Subject Matter Eligibility, examiners must perform a Two-Part Analysis for Judicial Exceptions.
In step 1, it must be determined whether the invention falls in one of the four statutory categories of invention. Claims 1-20 are directed to systems, methods, and articles, which are statutory categories of invention.
In step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. According to the specification, the instant invention can “function as a virtual caddy that records information about a golfer, a golf course, and a golf game” which may be used to provide “accurate and consistent recordation of golf data and more accurate downstream recommendations by the virtual caddy.” Spec. ¶ 20. Exemplary claim 8 recites the following (with emphasis):
8. A method comprising:
receiving, from a device within a golf tracking network, a round start signal;
creating, on a web server, a golf round database;
storing, on the device within the golf tracking network, golf shot data;
receiving, from the device within the golf tracking network, a hole advance signal;
uploading a staging table comprising the golf shot data to the web server; and
coordinating displaying, on a mobile electronic device within the golf tracking network, golf round data derived from the golf shot data.
The abstract idea is defined by the underlined portions of the exemplary claim, with substantially similar features found in independent claims 1 and 15. Dependent claims 2-7, 9-14, and 16-20 further define the abstract idea (e.g., by adding data to, or removing data from, a database over time, etc.) or relate to implementation of the abstract idea (e.g., using a laser device as the source of data, transferring data between devices, etc.). The abstract idea may be viewed, for example as:
Real-time monitoring of an electronic system, as in Electric Power Group, LLC v. Alstom (Fed. Cir. 2016);
An interface providing user display access of customized information, as in Intellectual Ventures I LLC v. Capital One Bank (Fed. Cir. 2015);
A method of managing games similar to that of managing a game of bingo in Planet Bingo, LLC v. VKGS LLC (Fed. Cir. 2014) (non-precedential); and
A method of organizing human activities, as discussed in Alice and Bilski.
The claimed abstract idea reproduced above is effectively an algorithm or set of instructions directed to starting a round of golf and collecting and aggregating data reflective of events within the round of golf. Such steps amount to observation, judgment, and collection of information that could be carried out mentally or with the use of pen and paper. The claims also include carrying out game actions played by human golfers, which suggests that the invention is directed to organizing human activities as discussed in Planet Bingo, Alice, and Bilski.
In Electric Power Group, the Federal Circuit found that merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas. The claims at issue were directed to gathering information to identify problems in an electric grid and to output that information to a user. The court found that such steps constitute an abstract idea based upon several previous court decisions, including Microsoft Corp. v. AT&T Corp., OIP Techs., Inc. v. Amazon.com, Inc., Content Extraction &Transmission LLC v. Wells Fargo Bank, Digitech Image Techs. LLC v. Elecs. For Imaging, Inc., CyberSource Corp. v. Retail Decisions, Inc. The Court also relied upon TLI Communications, Digitech, Bancorp Servs. LLC v. Sun Life, among others, to state that analyzing information by steps people go through in their minds are essentially mental processes within the abstract-idea category.
The abstract idea in the present case is similar in that it gathers information about golf games and creates a database of golf data sent over a network by various sensors. There is no asserted inventive concept in the improvement of computers as tools, but instead upon certain independently abstract ideas that use computers as tools. Such a finding suggests that the decisions in Enfish v. Microsoft, BASCOM Global Internet v. AT&T Mobility LLC, and McRO, Inc. v. Bandai Namco Games America do not apply here. Therefore, under Step 2A prong 2, the claims are directed to the judicially recognized exception of an abstract idea.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. The claims encompass the following additional element(s) or combination of elements in the claim(s) other than the abstract idea per se: one or more processors, one or more storage devices, and a user interface to carry out the abstract idea, a network, a mobile device, a server storing a database, and a laser device. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself. These features do not meaningfully limit the abstract idea because they encompass generic computer implementation (e.g., a computing device, network, server, etc.) as well as other well-understood, routine and conventional devices (e.g., smart phone, laser device, etc.).
The specification admits that the types of computing devices are generic and well-known. For instance, the mobile electronic device may be a smartphone, a laptop, or a wearable device. Spec. ¶ 69. The devices may include an Apple iPhone® or Samsung GalaxyTM. Id. at ¶ 71. The wearable device may be a Fitbit. Id. at ¶ 74. The server is described in generic and functional terms and the database is an off-the-shelf software product, such as Microsoft SQL Server Database. Id. at ¶¶ 79 and 82.
The use of a laser device in golf range-finding and starting of a round of golf is well-understood, routine, and conventional in the art. For instance, US 2007/0197314 to York et al. teaches a laser-based rangefinder used during golf games to help golfers choose an appropriate club for their golf shot. York, ¶¶ 17-20. Additionally, US 2002/0173367 to Gobush et al. teaches the use of an optical trigger, such as a laser or other apparatus, can be used to initiate the system of golf shot tracking. Gobush, ¶ 33.
The Supreme Court in Alice found that claim recitations of a “data processing system” with a “communications controller” and “data storage unit” are purely functional and generic. The Court further stated, “Put another way, the system claims are no different from the method claims in substance...The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea.” The Court concluded that “[b]ecause petitioner's system and media claims add nothing of substance to the underlying abstract idea, we hold that they too are patent ineligible under §101.” The same conclusion is reached with respect to the claims of the instant invention. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is listed on the attached Notice of References Cited
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H MCCULLOCH whose telephone number is (571)272-2818. The examiner can normally be reached M-F 9:30-5:30.
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, David Lewis can be reached at 571-272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WILLIAM H MCCULLOCH JR/Primary Examiner, Art Unit 3715