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 .
Procedural Summary
This is responsive to the claim amendments filed 3/4/2026.
Claims 1, 2, 4-10, 12 & 13 are pending.
Response to Arguments/Amendment
Applicant’s amendment and arguments filed 3/4/2026 are noted. Applicant’s arguments regarding the prior art are persuasive. The prior art rejection is withdrawn.
Applicant’s argument concerning § 101 has been fully considered but is not persuasive. Applicant argues the claimed invention cannot be practically performed in the human mind. (Remarks, 3/4/2026, Page 9). Examiner respectfully disagrees because nothing precludes a human from viewing contestants, whether in person physically or via pictures. And nothing precludes a human from sharing (transmitting) pictures and scoring data to other people, (judges.) Implementing the claimed invention using electronic elements including, inter alia, a “competition server” is merely using computers as a tool to implement a wholly abstract idea.
Applicant suggests that the claimed invention improves a technical field and the functioning of a computer. (Remarks, 3/4/2026, Page 10.) This is not persuasive for several reasons. First, Applicant’s invention predated computing technology. The invention is drawn to bodybuilding competitions. This requires no computers. It can be accomplished by humans watching contestants on a stage and sharing the evaluations. It is a mental process. Since the problem at hand had nothing to do with computing technology, the claimed invention cannot be now said to solve a problem arising in the realm of computers. Nor could it – the Specifications make clear that a litany of generic devices including smartphones implement the invention.1
Applicant has picked generic computing elements that amount to an instruction to “apply” the abstract idea using only conventional devices. After Alice and its progeny, mere nexus to a computing environment fails to confer eligibility. Moreover, even if the claimed invention is said to be rooted in computing technology (which Examiner does not concede), the claims do not actually improve how the computing technology or elements function. The claims merely apply the invention using computers as they were intended to automate what would otherwise be manual activity. This does not amount to an improvement to technology or to the functioning of a computer. Consequently, the 101 rejections are respectfully maintained.
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, 2, 4-10, 12 & 13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
The claims are drawn to process and apparatus categories.
Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter
Step 2A:
Prong 1: Does the Claim recite an Abstract idea, Law of Nature, or Natural Phenomenon?
Representative Claim 102 is analyzed below, with italicized limitations indicating recitations of an abstract idea:
Claim 1: “A competition server for a bodybuilding competition, the competition server comprising: a communication unit configured to receive, from a plurality of contestant terminals, bodybuilding images that are captured from different perspectives by one or more cameras; and a processor configured to determine whether the bodybuilding images conform to rules of the bodybuilding competition, divide each of the bodybuilding images conforming to the rules into a plurality of pose images, transmit first identical-pose images among the bodybuilding images conforming to the rules to a judge terminal for display on a display unit of the judge terminal through the communication unit, receive scores for the first identical-pose images from the judge terminal, transmit second identical-pose images among the bodybuilding images conforming to the rules to the judge terminal for display on the display unit of the judge terminal, receive scores for the second identical-pose images from the judge terminal, and determine a winning bodybuilding image by using the scores for the first identical-pose images and the scores for the second identical-pose images.”
The italicized limitations fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG3, “mental processes”, concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and “certain methods of organizing human activity”, managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
The claimed invention is drawn to the abstract idea of managing a bodybuilding competition. This is an ineligible mental process (i.e., a human can view a bodybuilding competition, view contestants, make judgments and determine a winner). The abstract idea is also drawn to managing a competition and interactions between people.
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
Although the claims recite additional limitations, these limitations do not integrate the exception into a practical application of the exception. For example, the claims require additional limitations drawn to a computing server with a processor and memory, (a GUI).
These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea.
Step 2B:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to conventional computer implementation.
For example, as pointed out above, the claimed invention recites additional elements facilitating implementation of the abstract process. However, these elements viewed individually and as a whole, are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea.
Regarding the Berkheimer decision, the prior art relied on in the rejection4, shows the conventionality of GUIs used to implement imaging contests. These elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea).
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 provide conventional computer implementation of an abstract process.
Moreover, the claims do not recite improvements to another technology or technical field. Nor, do the claims improve the functioning of the underlying computer itself -- they only recite generic computing elements. Furthermore, they do not effect a transformation of a particular article to a different state or thing: the underlying computing elements remain the same.
Concerning preemption, the Federal Circuit precedent controls5:
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of cffDNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OMKAR A DEODHAR whose telephone number is (571)272-1647. The examiner can normally be reached on M-F, generally 9am-5:30 pm.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/OMKAR A DEODHAR/Primary Examiner, Art Unit 3715
1 ¶ 94.
2 As amended, see response 3/4/2026.
3 See MPEP 2106
4 See non-final Office actipon 12/10/2025, Page 7.
5: Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015)
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