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 .
Applicant filed a response dated 11/24/2025 in which claims 1, 4-5, 11, 14, and 18-19 have been amended, claims 9 and 15 have been canceled. Thus, the claims 1-8, 10-14, and 16-20 are pending in the 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 1-8, 10-14, and 16-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of determining potency of lifestyle interventions without significantly more.
Examiner has identified claim 1 as the claim that represents the claimed invention presented in independent claims 1, 11, and 18.
Claim 1 is directed to a method, which is one of the statutory categories of invention (Step 1: YES).
The claim 1 recites a series of steps, e.g., receiving, by a server, a set of lifestyle interventions from a device associated with a user, the set of lifestyle interventions being associated with improving a health condition of the user; estimating, by the server, a potency probability for each lifestyle intervention in the set of lifestyle interventions; generating by the server, a catalog including data associated with the set of lifestyle interventions; partitioning the set of lifestyle interventions into a plurality of disjoint sets of lifestyle interventions based on the catalog and potency probabilities associated with the set of lifestyle interventions; for each disjoint set of the plurality of disjoint sets of lifestyle interventions, applying by the server, a machine learning model to determine a potency of each lifestyle intervention included in the disjoint set, the machine learning model being applied for an optimum number of rounds that is determined based on the catalog and updating the machine learning model based on at least a subset of potencies of lifestyle interventions included in the disjoint set that are determined upon completion of each round, wherein the machine learning model comprises a tree that connects a set of nodes, each node representing a lifestyle intervention of unknown potency; obtaining, based on the applying, the potency of each lifestyle intervention in the set of lifestyle interventions; and rendering in a user interface, the set of lifestyle interventions and associated potency of each lifestyle intervention. These limitations (with the exception of italicized limitations), under their broadest reasonable interpretation, describe the abstract idea to determine potency of lifestyle interventions. Furthermore; if a claim limitation, under its broadest reasonable interpretation, covers interactions between people, then it falls within the “certain methods of organizing human activity” grouping of abstract ideas. The additional elements of a server, a machine learning model, a device, a user interface, a tree, and nodes do not necessarily restrict the claim from reciting an abstract idea. Thus, the claim 1 recites an abstract idea (Step 2A-Prong 1: YES).
This judicial exception is not integrated into a practical application because the additional limitations of a server, a machine learning model, a device, a user interface, a tree, and nodes result in no more than simply applying the abstract idea using generic computer elements. The additional elements of a server, a machine learning model, a device, a user interface, a tree, and nodes are recited at a high level of generality, and under their broadest reasonable interpretation comprises a generic computing device. The presence of a generic computing device does nothing more than to implement the claimed invention (MPRP 2106.05(f)). The additional limitations of a server, a machine learning model, a device, a user interface, a tree, and nodes are no more than mere instructions to apply the exception using a generic computer element. Therefore, the recitations of additional elements do not meaningfully apply the abstract idea and hence do not integrate the abstract idea into a practical application. Thus, the claim 1 is directed to an abstract idea (Step 2A-Prong 2: NO).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements of a server, a machine learning model, a device, a user interface, a tree, and nodes are recited at a high level of generality in that it result in no more than simply applying the abstract idea using generic computer elements. The additional elements when considered separately and as an ordered combination do not amount to add significantly more as these limitations provide nothing more than to simply apply the exception in a generic computer environment (Step 2B: NO). Thus, the claim 1 is not patent eligible.
Similar arguments can be extended to other independent claims 11 and 18 and thus the claims 11 and 18 are rejected on similar grounds as claim 1.
Dependent claims 2-8, 10, 12-14, 16-17, and 19-20 further define the abstract idea that is present in their respective independent claims 1, 11, and 18 and thus correspond to Certain Methods of Organizing Human Activity and hence are abstract in nature for the reasons presented above. Dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the claims 2-8, 10, 12-14, 16-17, and 19-20 are directed to an abstract idea. Thus, the claims 1-8, 10-14, and 16-20 are not patent-eligible.
Response to Arguments
Examiner withdraws 35 U.S.C. 103 rejection of claims 1-20 in view of amendment/argument.
Applicant's arguments filed dated 11/24/2025 have been fully considered but they are not persuasive due to the following reasons:
With respect to the rejection of claims 1-20 under 35 U.S.C. 101, Applicant states that under Step 2A, Prong 1, the claimed invention is directed to executing by a server, a machine learning model to enable computation of potencies for a set of lifestyle interventions. The claims as amended detail the methods and techniques used to do so in an improved fashion. Such actions do not describe an abstract concept, or a concept similar to those found by the courts to be abstract such as fundamental economic practice, a method of organizing human activity, an idea itself (standing alone), or a mathematical relationship.
Examiner respectfully disagrees and notes that under Step 2A, Prong 1, the claim limitations are considered in the absence of additional elements to determine if the claim recites an abstract idea. In the absence of additional elements, the claim recites determining potency of lifestyle interventions by receiving, estimating, generating, partitioning, applying, obtaining, and rendering steps. The steps of receiving, estimating, generating, partitioning, applying, obtaining, and rendering are all abstract in nature (a certain method of organizing human activity, interaction between a human and a computer, following rules or instructions) and the additional elements when recited at a high level of generality do not restrict the claim from reciting an abstract idea. Thus, the claim recites an abstract idea. The additional elements are further considered in detail under Step 2A, Prong 2 and Step 2B to determine if the additional elements integrate the abstract idea into a practical application or amount to add significantly more.
With respect to Step 2A, Prong 2, Applicant states that the claims as amended specify that a machine learning model comprising a tree is applied and updated to determine a potency of each lifestyle intervention. The specification explains how this provides improvements over prior systems. The claims as amended further detail how a specific machine learning model is trained and updated to provide these improved results. This is similar to the patent-eligible claims in the recent Desjardins holdings, in which the PTAB held that steps relating to adjusting parameters of a machine learning model to optimize performance “constitutes an improvement to how the machine learning model itself operates,” noting that “categorically excluding AI innovations form patent protection in the United States jeopardizes America’s leadership in this critical emerging technology.”
Examiner respectfully disagrees and notes that the additional elements of a machine learning model comprising a tree is recited at a high level of generality in that it amounts to merely applying the abstract idea without integrating the abstract idea into a practical application. The obtaining setups simply amounts to applying the abstract idea with the use of a machine learning model. The obtaining step does not go into specific technical steps. The rendering step simply outputs a set of lifestyle interventions that were obtained in the previous step. It is unclear how a machine learning model is utilized that lead to technical improvement. In this case, the steps carried out with the use of a machine learning model do not offer any technical improvement. If there is an improvement, it is to the abstract idea of providing a set of lifestyle intervention and is not sufficient to integrate the abstract idea into a practical application. Thus, these arguments are not persuasive.
With respect to Step 2B, Applicant states that the recited claim elements clearly “add[] a specific limitation other than what is well-understood, routine and conventional in the filed” or “add[] unconventional steps that confine the claim to a particular useful application.” As noted below with respect to §103, the claims are patentable over the prior art, so they must add specific limitations that are not well-understood, routine, and conventional in the field.
Examiner respectfully disagrees and notes that the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See Mayo, 566 U.S. at 91, 101 USPQ2d at 1973 (rejecting “the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under §101”). 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.” “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.” An inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces. Specifically, lack of novelty under 35 U.S.C. 103 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. 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.
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 RAJESH KHATTAR whose telephone number is (571)272-7981. The examiner can normally be reached M-F 8AM-5PM.
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RAJESH KHATTAR
Primary Examiner
Art Unit 3684
/RAJESH KHATTAR/Primary Examiner, Art Unit 3684