DETAILED ACTION
This action is responsive to the claim amendments and Applicant’s Remarks filed 11 May 2026. The Examiner acknowledges the amendments to claims 1, 4, 8, and 14-15, and the cancelation of claims 2-3 and 5-6. Claims 1, 4, and 7-15 are pending.
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 Objections
Claim(s) 1, 14, and 15 is/are objected to because of the following informalities:
Claim 1 should read “a skin of [[a]] the user” [line 4].
The Examiner notes that the amendments to claim 1 are not considered to be in proper form, as the amendments submitted are not made in accordance with MPEP § 1.530, which states “Any changes relative to the patent being reexamined which are made to the specification, including the claims, must include the following markings: (1) The matter to be omitted by the reexamination proceeding must be enclosed in brackets; and (2) The matter to be added by the reexamination proceeding must be underlined”. The Examiner notes that instant line 8 of claim 1 presently recites “the of a user”, whereas corresponding line 8 of previously presented claim 1 recited “a skin of a user”, wherein the Examiner notes that “skin” is presently omitted. Claim 1 should read “the skin of [[a]] user” [line 8].
Lines 22-25 of claim 14 should be tabbed to the right once.
Lines 18-21 of claim 15 should be tabbed to the right once.
Appropriate correction is required.
Claim Interpretation
Examiner Notes: currently, NO limitation invokes interpretation under § 112(f).
Claim Rejections - 35 USC § 112
Examiner’s Note Regarding Machine Learning: the claimed “machine-learned model” of claim(s) 8 was considered under § 112(a), wherein the Examiner notes that the disclosure of machine learning of the Applicant’s Specification [Applicant’s Specification ¶¶0072, 0077-0078] is considered to provide sufficient written description support for the machine-learned model as presently claimed for one of ordinary skill in the art to understand that the Applicant possessed the instant invention at the time of filing.
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.
Claim(s) 4 and 10-11 is/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.
Claim 4 recites the limitations “wherein generating, by the computing system, an estimated oxygen saturation level comprises” [lines 1-2] and “a electric signal associated with red light and an electric signal associated with infrared light”, which are considered to render claim 4 indefinite, as it is not clear whether the recited limitations are meant to further limit the previous limitation of claim 1 of “determining, by the computing system, an estimated oxygen saturation level using the filtered electric signals” [lines 24-25 of claim 1] or define a new instance of generating a different/separate instance of an oxygen saturation level. Claim 4 is further considered indefinite, as it is not clear whether the recited limitations are meant to refer to the use of “the electric signal associated with the red light” and “the electric signal associated with the infrared light” of claim 1 [see line 11 of claim 1] or refer to the “filtered electric signals” [see lines 14-25 of claim 1]. For examination purposes, the Examiner has interpreted the recited limitation of claim 4 to further limit the identified previous limitation of claim 1, and wherein the Examiner has further interpreted the recited limitation of claim 4 to read “wherein the estimated oxygen saturation level further comprises”. The Examiner has further interpreted the recited electric signals of claim 4 to refer to the filtered electric signals of claim 1, as claim 4 has been interpreted to further limit the “determining” step of claim 1.
Claim 10 recites the limitation “a predetermined threshold” [lines 2-3], which is considered indefinite, as it is not clear whether the recited predetermined threshold is meant to refer to the previously defined predetermined threshold of claim 9 or define a different/separate predetermined threshold. For examination purposes, the Examiner has interpreted the indefinite limitation to read “[[a]] the predetermined threshold”. The Examiner notes that claim 11 recites similar subject matter that is interpreted similarly to the interpretation of claim 10 above mutatis mutandis.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim(s) 1, 4, and 7-15 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. Each claim has been analyzed to determine whether it is directed to any judicial exceptions.
Representative claim(s) 14 [representing all independent claims] recite(s):
A wearable computing device, the wearable computing device comprising:
one or more processors; and
a computer-readable memory, wherein the computer-readable memory stores instructions that, when executed by the one or more processors, cause the wearable computing device to perform operations comprising:
emitting, by the wearable computing device using one or more green light sources, light towards a skin of a user at a green wavelength;
emitting, by the wearable computing device using one or more red light sources, light towards the of a user at a red wavelength;
emitting, by the wearable computing device using one or more infrared light sources, light towards the of a user at an infrared wavelength;
detecting, using one or more light sensors, an intensity of green light, red light, and infrared light emitted from the skin of a user, wherein the one or more light sensors generate, for each of green light, red light, and infrared light, a respective electric signal, the respective electric signal for a particular wavelength of light representing the intensity of the wavelength of light; and
filtering the electric signal associated with red light and the electric signal associated with infrared light using the electric signal associated with green light by:
generating a dot product of a time series of the electric signal associated with the green light and a time series of the electric signal associated with the red light, and
generating a dot product of the time series of the electric signal associated with the green light and a time series of the electric signal associated with the infrared light to filter the electric signals associated with red light and infrared light to frequencies corresponding to a heartbeat of the user to improve signal-to-noise ratio for wrist-based measurement;
determining an estimated oxygen saturation level using the filtered electric signals.
(Emphasis added: abstract idea, additional element)
Step 2A Prong 1
Representative claim(s) 14 recites the following abstract ideas, which may be performed in the mind or by hand with the assistance of pen and paper:
“filtering the electric signal associated with red light and the electric signal associated with infrared light using the electric signal associated with green light by: generating a dot product of a time series of the electric signal associated with the green light and a time series of the electric signal associated with the red light” – may be performed by merely applying known mathematical processes/equations to known or previously collected data [for at least a limited amount of data] [Applicant’s Specification ¶0063 generally refers to the known mathematical process of determining a dot product between datasets]
“generating a dot product of the time series of the electric signal associated with the green light and a time series of the electric signal associated with the infrared light to filter the electric signals associated with red light and infrared light to frequencies corresponding to a heartbeat of the user to improve signal-to-noise ratio for wrist-based measurement” – may be performed by merely applying known mathematical processes/equations to known or previously collected data [for at least a limited amount of data] [Applicant’s Specification ¶0063 generally refers to the known mathematical process of determining a dot product between datasets]
“determining an estimated oxygen saturation level using the filtered electric signals” – may be performed by merely observing known or previously collected data [for at least a limited amount of data] and drawing mental conclusions therefrom using known or derived relationships [The wearable computing device can generate an initial estimate of the saturation of the blood of the user based on a comparison of the intensity or amount of light emitted in each wavelength range. Specifically, the wearable computing device can determine a ratio between measured intensity of light in the red light wavelength spectrum and of the measured intensity of light in the infrared wavelength spectrum (Applicant’s Specification ¶0023)]
If a claim, under BRI, covers performance of the limitations in the mind but for the mere recitation of extra-solutionary activity (and otherwise generic computer elements) then the claim falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea under Step 2A Prong 1 of the Mayo framework as set forth in the 2019 PEG.
No limitations are provided that would force the complexity of any of the identified evaluation steps to be non-performable by pen-and-paper practice.
Alternatively or additionally, these steps describe the concept of using implicit mathematical formula(s) [i.e., “filtering the electric signal associated with red light and the electric signal associated with infrared light using the electric signal associated with green light by: generating a dot product of a time series of the electric signal associated with the green light and a time series of the electric signal associated with the red light” and “generating a dot product of the time series of the electric signal associated with the green light and a time series of the electric signal associated with the infrared light to filter the electric signals associated with red light and infrared light to frequencies corresponding to a heartbeat of the user to improve signal-to-noise ratio for wrist-based measurement” (Applicant’s Specification ¶0063, determining a dot product between datasets); “determining an estimated oxygen saturation level using the filtered electric signals” (Applicant’s Specification ¶0023, determining a ratio)] to derive a conclusion based on input of data, which corresponds to concepts identified as abstract ideas by the courts [Diamond v. Diehr. 450 U.S. 175, 209 U.S.P.Q. 1 (1981), Parker v. Flook. 437 U.S. 584, 19 U.S.P.Q. 193 (1978), and In re Grams. 888 F.2d 835, 12 U.S.P.Q.2d 1824 (Fed. Cir. 1989)]. The concept of the recited limitations identified as mathematical concepts above is not meaningfully different than those mathematical concepts found by the courts to be abstract ideas.
The dependent claims merely include limitations that either further define the abstract idea [e.g. limitations relating to the data gathered or particular steps which are entirely embodied in the mental process] and amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they are merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Thus, these concepts are similar to court decisions of abstract ideas of itself: collecting, displaying, and manipulating data [Int. Ventures v. Cap One Financial], collecting information, analyzing it, and displaying certain results of the collection and analysis [Electric Power Group], collection, storage, and recognition of data [Smart Systems Innovations].
Step 2A Prong 2
The judicial exception is not integrated into a practical application.
Representative claim 14 only recites additional elements of extra-solutionary activity – in particular, extra-solution activity [generic computer function, data gathering] – without further sufficient detail that would tie the abstract portions of the claim into a specific practical application (2019 PEG p. 55 – the instant claim, for example does not tie into a particular machine, a sufficiently particular form of data or signal collection – via the claimed extra-solution activity identified above, or a sufficiently particular form of display or computing architecture/structure).
Dependent claim(s) 4 and 7-9 merely add detail to the abstract portions of the claim but do not otherwise encompass any additional elements which tie the claim(s) into a particular application/integration [the dependent claim(s) recite generic ‘units’ or ‘steps’ which encompass mere computer instructions to carry out an otherwise wholly abstract idea].
Dependent claim(s) 10-13 encounter substantially the same issues as the independent claim(s) from which they depend in that they encompass further generic extra-solutionary activity [generic data gathering] and/or generic computer elements [storage, memory per se].
Accordingly, the claim(s) are not integrated into a practical application under Step 2A Prong 2.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Independent claims 1 and 14-15 as individual wholes fail to amount to significantly more than the judicial exception at Step 2B. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of extra-solutionary activity [i.e., generic computer function, data gathering] and generic computer elements cannot amount to significantly more than an abstract idea [MPEP § 2106.05(f)] and is further considered to merely implement an abstract idea on a generic computer [MPEP § 2106.05(d)(II) establishes computer-based elements which are considered to be well understood, routine, and conventional when recited at a high level of generality].
For the independent claim portions and dependent claims which provide additional elements of extra-solutionary data gathering, MPEP § 2106.05(g) establishes that mere data gathering for determining a result does not amount to significantly more. The extra-solutionary activity of processor steps [acquiring, storing, filtering signals, etc.] as presently recited, cannot provide an inventive concept which amounts to significantly more than the recited abstract idea.
For the independent claims as well as the dependent claims merely reciting generic computer elements and functions [processor, memory, computing system, display, each recited at a high level of generality], MPEP § 2106.05(d)(II) establishes computer-based elements which are considered to be well understood, routine, and conventional when recited at a high level of generality.
Accordingly, the generic computer elements and functions therein, as presently limited, cannot provide an inventive concept since they fall under a generic structure and/or function that does not add a meaningful additional feature to the judicial exception(s) of the claim(s).
Claim(s) 1 and 14-15 recite “emitting… using one or more green light sources, light towards a skin of a user at a green wavelength”, “emitting… using one or more red light sources, light towards the skin of a user at a red wavelength”, “emitting… using one or more infrared light sources, light towards the skin of a user at an infrared wavelength”. Claim(s) 1-3 and 14-15 further recite “detecting… an intensity of green light, red light, and infrared light emitted from the skin of a user, wherein the one or more light sensors generate, for each of green light, red light, and infrared light, a respective electric signal, the respective electric signal for a particular wavelength of light representing the intensity of the wavelength of light” [claim 1]. Claims 13-14 recites “wherein the computing system is a wearable computing device”. Such a wearable computing device. Such an ordered combination of a green light source, red light source, infrared light source, one or more light sensors, and wearable device is considered well-understood, routine, and conventional, as known by at least:
Applicant’s disclosure is not particular regarding the particular structure of the generically claimed wearable computing device, and recites the wearable computing device at a high level of generality [More specifically, a wearable computing device can include any computing device that is integrated into an object that is meant to be worn by a user. For example, wearable computing devices can include, but are not limited to smartwatches, fitness bands, computing devices integrated into jewelry such as smart rings or smart necklaces, computing devices integrated into items of clothing such as jackets, shoes, and pants, and wearable glasses with computing elements included therein (Applicant’s Specification ¶0026)]. This lack of disclosure is acceptable under 35 U.S.C. 112(a) since this hardware performs non-specialized functions known by those of ordinary skill in the medical technology arts. Thus, Applicant's specification essentially admits that this hardware is conventional and performs well understood, routine and conventional activities in the field of wearable technology. In other words, Applicant’s specification demonstrates the well-understood, routine, conventional nature of the above-identified additional element because it describes such an additional element in a manner that indicates that the additional element is sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. 112(a) [see Berkheimer memo from April 19, 2018, Page 3, (III)(A)(1), not attached]. Adding hardware that performs “well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible [TLI Communications].
Wu (US-10568525-B1, cited by Applicant, previously presented) [FIG. 1 depicts six pairs of light sources 102, two secondary light sources 104, and one detector 106, but in other embodiments the monitoring device 100 may contain any number of pairs of light sources 102, secondary light sources 104, and detectors 106 (Wu Col 5:8-13); each pair of light sources 102 includes a red light source and an infrared light source (Wu Col 6:8-9); light sources 104 may be green light sources, such as green LEDs (Wu Col 7:2-3)]
Fraser (US-20150355604-A1, previously presented) [The apparatus 100 can include a wrist worn device 110 configured to be worn on a wrist of a user. The apparatus 100 can include a light emitter 120 that can emit light 125 from a user side 150 of the wrist worn device 110 to a wrist of the user. The light emitter 120 can include one or more of different types of light emitters. For example, the light emitter 120 can include a red light emitter, an infrared light emitter, a green light emitter,,,, and/or any other light emitter that can be used to detect biometric information of a user. For example, a red light emitter and an infrared light emitter can be used to detect blood oxygen saturation, such as oxygen saturation of hemoglobin in a volume of intravascular blood of the user, heart rate, and other biometric information. Additionally, one, two, or more green light emitters can also be used to detect blood oxygen saturation, heart rate, and/or other biometric information. Furthermore, a combination of red, infrared, and green light emitters can be used to detect blood oxygen saturation, heart rate, and/or other biometric information. For example, red and infrared light emitters can be used to detect blood oxygen saturation and a green light emitter can be used to detect heart rate (Fraser ¶0015)]
Lafon (US-20200000441-A1, previously presented) [The watch can also include an optical measurement sub-system 152, such as is illustrated in the example back view of the smart watch 150 illustrated in FIG. 1B. In this example, the optical measurement sub-system includes at least one optical emitter and at least one optical receiver. The emitter can emit light of one or more wavelengths that can be reflected from the surface of the user's skin, or diffusely reflected after traveling, under the surface, and detected by at least one of the emitters (Lafon ¶0018); The example device in FIG. 6 includes emitters 616 and detectors 618 capable of being used for obtaining optical photoplethsymogram (PPG) measurements… In some embodiments, a PPG device employs a single light source coupled to a single detector (i.e., a single light path). Alternatively, a PPG device may employ multiple light sources coupled to a single detector or multiple detectors (i.e., two or more light paths). In other embodiments, a PPG device employs multiple detectors coupled to a single light source or multiple light sources (i.e., two or more light paths). In some cases, the light source(s) may be configured to emit one or more of green, red, and/or infrared light (Lafon ¶0068); Although some embodiments are described with reference to HR or cardiac components of PPG signals, the techniques described herein may be extended to other types of physiological metrics described herein, such as may relate to SpO.sub.2, or other types of signals that can be extracted from the PPG signals to determine such physiological metrics (Lafon ¶0075)]
Claim 8 recites “a machine-learned model”. Such a machine-learned model is considered well-understood, routine, and conventional, as known by at least:
Hu (“Intelligent Sensor Networks”, previously presented) [In supervised learning, the learner is provided with labeled input data. This data contains a sequence of input/output pairs of the form xi, yi, where xi is a possible input and yi is the correctly labeled output associated with it. The aim of the learner in supervised learning is to learn the mapping from inputs to outputs. The learning program is expected to learn a function f that accounts for the input/output pairs seen so far, f (xi) = yi, for all i. This function f is called a classifier if the output is discrete and a regression function if the output is continuous. The job of the classifier/regression function is to correctly predict the outputs of inputs it has not seen before (Hu, Page 5)]
Huang (“Kernel Based Algorithms for Mining Huge Data Sets”, previously presented) [In supervised learning, the learner is provided with labeled input data. This data contains a sequence of input/output pairs of the form xi, yi, where xi is a possible input and yi is the correctly labeled output associated with it. The aim of the learner in supervised learning is to learn the mapping from inputs to outputs. The learning program is expected to learn a function f that accounts for the input/output pairs seen so far, f (xi) = yi, for all i. This function f is called a classifier if the output is discrete and a regression function if the output is continuous. The job of the classifier/regression function is to correctly predict the outputs of inputs it has not seen before (Huang, Page 1)]
Mitchell (“The Discipline of Machine Learning”, previously presented) [For example, we now have a variety of algorithms for supervised learning of classification and regression functions; that is, for learning some initially unknown function f : X [Calibri font/0xE0] Y given a set of labeled training examples {xi; yi} of inputs xi and outputs yi = f(xi) (Mitchell, Pages 3-4)]
Examiner’s Note Regarding Particular Treatment or Prophylaxis: Claim(s) 1, 12, and 14-15 recite subject matter regarding determining and displaying an estimated oxygen saturation level, which the Examiner notes is not considered to be a particular treatment or prophylaxis, as none of the identified claims positively recite or include language that is considered to be a particular treatment or prophylaxis as an additional element to integrate the judicial exception into a practical application or allow the identified claims to amount to significantly more than the judicial exception [MPEP § 2106.04(d)(2)].
Accordingly, the claim(s) as whole(s) fail amount to significantly more than the judicial exception under Step 2B.
Subject Matter Not Taught By Prior Art
The Examiner notes that the closest prior art of record regarding claims 1, 14, and 15 is Wu (US-10568525-B1, cited by Applicant, previously presented).
Regarding Wu, Wu discloses filtering the electric signal associated with the red light and the electric signal associated with the infrared light using the electric signal associated with the green light, wherein the determination of the estimated oxygen saturation level uses the filtered electric signals [At step 608, the noise components are removed from the one or more SpO.sub.2 datasets to produce one or more filtered SpO.sub.2 datasets, which can be performed by using an adaptive filter for which the one or more SpO.sub.2 datasets and a characteristic of the one or more PPG signals for characterizing a heart rate are inputs. For example, the SpO.sub.2 datasets formed at step 606 may be filtered based upon the signals received at step 604 to remove all or part of noise components from the SpO.sub.2 datasets to yield filtered SpO.sub.2 datasets. In one embodiment, the PPG signals obtained using infrared and red light sources typically are weaker than signals based upon green light sources (e.g., see FIG. 7); however, a heart rate signal determined using the green light source may be used to improve the PPG signals with an adaptive filter that uses the heart rate information detected using the green light sources to remove noise that are inconsistent with the heart rate frequency. In an embodiment, the PPG signals for SpO.sub.2 comprise primary inputs to an adaptive filter and the heart rate signal is the reference input (Wu Col 11:14-32)]. However, the Examiner notes that Wu fails to explicitly disclose, teach, or suggest wherein the filtering is performed by “generating a dot product of a time series of the electric signal associated with the green light and a time series of the electric signal associated with the red light, and generating a dot product of the time series of the electric signal associated with the green light and a time series of the electric signal associated with the infrared light to filter the electric signals associated with red light and infrared light to frequencies corresponding to a heartbeat of the user to improve signal-to-noise ratio for wrist-based measurement”.
The Examiner further notes that the previously applied Song and Montgomery each only generally describe filtering red/infrared electric signals [Song ¶0054; Montgomery ¶0048].
It would not have been obvious to one of ordinary skill in the art to have modified any of Wu, Song, or Montgomery, alone or in combination, to employ the subject matter regarding generating a dot product for the purposes of filtering the electric signal associated with the red light and the electric signal associated with the infrared light, without the benefit of hindsight. As such, claims 1, 14, 15, and those dependent therefrom are considered to not be taught by any prior art reference.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks p. 8, filed 11 May 2026, with respect to the previously presented drawing objections have been fully considered and are persuasive. The drawing objections have been withdrawn.
Applicant’s arguments, see Applicant’s Remarks p. 8, with respect to the previously presented claim objections have been fully considered and are persuasive. The objections to claims 5-6 and 8 have been withdrawn.
Applicant's arguments, see Applicant’s Remarks p. 8-9, with respect to the previously applied rejections under § 112(b) have been fully considered but they are not entirely persuasive.
The Examiner notes that not all of the previously applied rejections under § 112(b) were addressed in the claim amendments or Applicant’s Remarks filed 11 May 2026. See above for maintained rejections.
Applicant's arguments, see Applicant’s Remarks p. 9-13, with respect to the previously applied rejections under § 101 have been fully considered but they are not persuasive.
The Applicant asserts that (1) the amended claims provide an inventive concept under Step 2B by reciting an unconventional technical solution to a technical problem, wherein the Applicant notes that the Examiner’s analysis of each element being individually known in the art is improper, as the claim is to be considered as an ordered combination. The Applicant asserts that (3, recited as argument “2” on p. 12) the claimed “ordered combination is not well-understood, routine, or conventional (WURC)”, as the Applicant notes that while using red, infrared, and green LEDs on a wearable may be conventional, the specific method of using the green light signal data to filter the red and infrared signal data via a dot product calculation between their respective time series is not. The Applicant further notes that the Examiner’s acknowledgement that the previously cited Wu reference fails to teach the argued method is an inventive feature that is non-obvious under § 103 that cannot, by definition, be “well-understood, routine, and conventional” for the purposes of a § 101, Step 2B analysis, further citing Berkheimer v. HP Inc. However, the Examiner disagrees with the Applicant’s arguments, as the Examiner notes that (1) the argued ordered combination of additional elements of red, infrared, and green light sources and corresponding light sensors on a wearable were identified as being well-understood, routine, and conventional as an ordered combination Wu [Wu Col 5:8-13, Col 6:8-9, Col 7:2-3; Fraser ¶0015; Lafon ¶¶0018, 0068, 0075]. The Examiner further notes that (3) the examination under 35 U.S.C. 101 is distinct and separate from the examination under 35 U.S.C. 102 and 35 U.S.C. 103, as recited in the MPEP: As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.")…Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101 (MPEP 2106.05(I)). As such, the allowability of the claims over the prior art is equivalent to the identified abstract ideas and additional elements of the claims rejected under 35 U.S.C. 101 as not being capable of being performed in the mind or by hand or being well understood, routine, and conventional, respectively. The Examiner further directs attention the Examiner’s response to Applicant’s argument (2) below regarding the argued method that the Applicant considers to refer to the argued ordered combination of additional elements.
The Applicant asserts that (2) the claims solve a technical problem rooted in computer technology by explicitly reciting “filtering the electrical signal associated with the red light and the electric signal associated with the infrared light using the electric signal associated with the green light by: generating a dot product of a time series of the electric signal associated with the green light and a time series of the electric signal associated with the red light, and generating a dot product of a time series of the electric signal associated with the green light and a time series of the electric signal associated with the infrared light to filter the electric signals to frequencies corresponding to a heartbeat of the user to improve signal-to-noise ratio for wrist-based measurement”, which the Applicant further asserts is not merely “determining a result” and is instead a specific series of signal processing operations that use a stronger, more motion-robust signal (from green light) to refine and denoise weaker, motion-sensitive signals (from red and infrared light). The Applicant also notes that the claims recite a particular mathematical manipulation as an improvement to the functionality of the wearable computing device itself, and further cites similar cases of Enfish, LLC v. Microsoft Corp. and McRO, Inc. v. Bandai Namco Games America Inc. However, the Examiner disagrees with the Applicant’s argument, as the Examiner notes that (2) the claimed invention is not considered to be patent eligible under 35 U.S.C. 101, as while the Applicant asserts that the claimed invention is for improving “other technology or technical field”, the improvement is recited within limitations that have been identified as being abstract ideas implemented on a generic computer with additional elements that are considered to be well-understood, routine, and conventional. The “improvements” are not considered to be additional elements, as “generating a dot product of a time series of the electric signal associated with the green light and a time series of the electric signal associated with the red light, and generating a dot product of a time series of the electric signal associated with the green light and a time series of the electric signal associated with the infrared light to filter the electric signals to frequencies corresponding to a heartbeat of the user to improve signal-to-noise ratio for wrist- based measurement”, is/are identified as being an abstract idea(s) directed towards using implicit mathematical formula(s) to derive a conclusion based on input of data, which corresponds to concepts identified as abstract ideas by the courts [Diamond v. Diehr. 450 U.S. 175, 209 U.S.P.Q. 1 (1981), Parker v. Flook. 437 U.S. 584, 19 U.S.P.Q. 193 (1978), and In re Grams. 888 F.2d 835, 12 U.S.P.Q.2d 1824 (Fed. Cir. 1989)]. The concept of the recited limitations identified as mathematical concepts above is not meaningfully different than those mathematical concepts found by the courts to be abstract ideas. As such, under MPEP 2106.05(a), "an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology". Specifically, the "improvements" analysis in Step 2A determines whether the claim pertains to an improvement to the functioning of a computer or to another technology without reference to what is well-understood, routine, conventional activity [MPEP § 2106.04(d)(1)]. 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 the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception [MPEP § 2106.05(a)]. It is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation. That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 120 USPQ2d 1473 (Fed. Cir. 2016) (a method of translating a logic circuit into a hardware component description of a logic circuit was found to be ineligible because the method did not employ a computer and a skilled artisan could perform all the steps mentally) [MPEP § 2106.05(a)(I)]. As such, the claims do not recite additional elements that may integrate the abstract ideas into a practical application of the abstract ideas, and thus the claimed invention is not considered to improve other technology or technical field. The Examiner further notes that the Applicant has not provided any analysis as to how the recited abstract idea/mathematical concept is similar to the cited cases of Enfish, LLC v. Microsoft Corp. and McRO, Inc. v. Bandai Namco Games America Inc, wherein the Examiner notes that Enfish provided disclosure as to how the invention specifically improved the way the computer stores and retrieves data in memory in combination with the specific data structure recited in the claims.
Applicant’s arguments, see Applicant’s Remarks p. 13-14, with respect to the rejections of claims 1, 14-15, and those dependent therefrom under § 102 and § 103 have been fully considered and are persuasive. The rejections of claims 1, 14-15, and those dependent therefrom under § 102 and § 103 have been withdrawn.
The Applicant asserts that independent claims 1, 14, and 15 have been amended to include the subject matter of previously presented and presently canceled claim 6 that was previously identified as not taught by any prior art reference, such that the previously applied rejections of claims 1, 14, and 15 are rendered moot. The Examiner agrees that the amendments to claims 1, 14, and 15 would overcome the previously applied prior art rejections and are not considered to be taught by any prior art reference.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any 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 SEVERO ANTONIO P LOPEZ whose telephone number is (571)272-7378. The examiner can normally be reached M-F 9-6 EST.
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/SEVERO ANTONIO P LOPEZ/Examiner, Art Unit 3791
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