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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 30, 2026 has been entered.
Detailed Action:
Regarding 101:
The Applicant makes several unpersuasive assertions and arguments regarding patent eligible subject matter. The main rationale are that (1) because the temperature is being taken by a temperature sensor it has a practical application that isn’t subject to a mental process; and (2) there exists an improvement to the system itself.
Regarding the first assertions/argument the temperature sensor is not doing anything beyond the routine and conventional works of a temperature sensor. It is merely taking the temperature. Moreover, the mental process maybe aided by a computing device, which would be here the temperature sensor. This computing device doesn’t take away from the directive of the claims that they are within the realm of a mental process.
Second, regarding the assertion that there exists an improvement to the system, the Examiner is not persuaded. Although the Applicant isn’t explicit as to what constitutes the “system,” the examiner will rely on the handheld watch element. This is because the Applicant references Dejardins in their remarks within the context of the improvement to the system. In Dejardins, the improvement to the functioning of the machine learning system was found. Here, the handheld watch isn’t performing anything beyond that which it was already designed to do, which is to record (as cited in prior art and previous office actions) the experiments. There is no efficiency improvement, no memory improvement, or anything that would indicate the watch itself is improved in itself.
Regarding 103:
The Applicant has amended the claims. The examiner has reviewed, analyzed, and researched the amended claims and has found they are novel/non-obvious when taken as a whole and within context.
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 17,23-33, 36-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claim 17 is directed to a judicial exception (i.e., a law of nature, natural phenomenon, or abstract idea) without significantly more.
Specifically, they recite the abstract idea of a mental process.
PART I. 2A-PRONG ONE (IDENTIFY THE ABSTRACT IDEAS)
The Alice framework, step 2A-Prong One (part 1 of Mayo test), here, the claims are analyzed to determine if the claims are directed to a judicial exception. MPEP §2106.04(a). In determining, whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception (Prong One of Step 2A), and whether the claims recite additional elements that integrate the judicial exception into a practical application (Prong Two of Step 2A). See 2019 Revised Patent Subject Matter Eligibility Guidance (“PEG” 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50-57 (Jan. 7, 2019)).
Claims 17,23-33, 36-40 are directed to the abstract idea of a mental process. Specifically, the claims are directed to the analysis of a workflow of a scientific method.
A mental process includes, but is not limited to, concepts that can be performed in the human mind. This includes observing, evaluating, judging or forming an opinion. The limitations of the Applicant are determined a mental process.
Under step 2A-Prong One (part 1 of Mayo test), here, the claimed invention in claims 16 and 17 are 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. Accordingly, the claims are directed to a mental process, and thus, the claims are directed to an abstract idea under the first prong of Step 2A.
PART I. 2A-PRONG TWO (ADDITIONAL ELEMENTS THAT INTEGRATE THE JUDICIAL EXCEPTION INTO A PRACTICAL APPLICATION)
Under step 2A-Prong two (part 1 of Mayo test), this judicial exception is not integrated into a practical application under the second prong of Step 2A.
The claims recite the additional elements beyond the recited abstract idea of, “temperature sensor…individual images…video recording...” which is pursuant to the broadest reasonable interpretation, and as an ordered combination, each of the additional elements are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. (See, MPEP 2106.05(f)) Here, the video and sensor functioning as a computing device.
As a result, Examiner asserts that the dependent claims are similarly directed to the abstract idea. Since these claims are directed to an abstract idea, the Office must determine whether the remaining limitations “do significantly more” than describe the abstract idea.
PART II. DETERMINE WHETHER ANY ELEMENT, OR COMBINATION, AMOUNTS TO “SIGNIFICANTLY MORE” THAN THE ABSTRACT IDEA ITSELF
The Alice framework, we turn to step 2B (Part 2 of Mayo) to determine if the claim is sufficient to ensure that the claim amounts to “significantly more" than the abstract idea itself. These additional elements recite conventional computer components and conventional functions of: “…temperature sensor…video recording…individual images…”Examiner asserts that these do not amount to significantly more than the abstract idea because each of the additional elements are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. (See, MPEP 2106.05(f) Here, the sensor, video recording, and images are functioning as the computing device.
This is evidenced by the Applicant’s Specification on page 7-8, wherein the sensor and video recordings and images are made on commercially available items. Furthermore, they do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.
The dependent claims, claims do not independently overcome 101, and are therefore, rejected based on their dependency of claim 17. The dependent claims alone or in combination recite similar elements which have already been found to be non-patent eligible. Furthermore, they do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment as discussed above.
Thus, all the claims are rejected under 101.
Conclusion
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ZAHRA . ELKASSABGI
Examiner
Art Unit 3623
/HAFIZ A KASSIM/Primary Examiner, Art Unit 3623
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