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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/28/2025 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Regarding the arguments against the rejection of claims under 35 USC 101, the Examiner respectfully disagrees. Applicant argues that the claims do not recite a mental process that can practically be performed in the human mind. Examiner asserts that as described in the updated rejection under Step 2A Prong 1, steps of analysis and determinations and generally the abstract model with respect to the interventions are steps that can be performed in the human mind. The use of the server and other additional elements are analyzed under Step 2A Prong 2.
Applicant further argues that the claims are integrated into a practical application. Examiner asserts that the use of the server, user interface and encoded nodes-tree structure recites insignificant additional elements as described in the updated rejection under Step 2A Prong 2. The goal to compute potencies of a set of input lifestyle interventions to enable a user to select lifestyle interventions to achieve a target heath outcome recites an abstract idea. There is no indication that these additional elements of computing components are used beyond generic implementation of the abstract idea, and does not recite a practical application as analyzed.
Applicant further argues that the claims involve more than performance of “well understood, routine, and conventional activities previously known to the industry.” Examiner further asserts that the use of the model (which is generally recited and can be interpreted as part of the abstract idea) that is encoded as a tree recites generic computer implementation as analyzed in both Step 2A Prong 2 and Step 2B. As described, there is no indication that the use of the child nodes are “specifically” implemented beyond generic binary tree and node structuring in a computing environment. Aspects of the metadata that is updated based on evaluation and process that is iteratively done with a stop condition recites part of the abstract idea. Further, there is no indication of a technology advantage with the use of a user interface to select the one or more lifestyle interventions based on computed potencies.
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 USC 101 because the claimed invention is directed to an abstract idea without significantly more.
It is appropriate for the Examiner to determine whether a claim satisfies the criteria for subject matter eligibility by evaluating the claim in accordance to the Subject Matter Eligibility Test as recited in the following Steps: 1, 2A, and 2B, see MPEP 2106(III.).
Patent Subject Matter Eligibility Test: Step 1:
First, the Examiner is to establish whether the claim falls within any statutory category including a process, a machine, manufacture, or composition of matter, see MPEP 2106.03(II.) and MPEP 2106.03(I).
Claims 13-19 are related to a system, and claims 1-12 are also related to a method (i.e., a process). Claim 20 is related to a “non-transitory” processor readable media storing instructions. Accordingly, these claims are all within at least one of the four statutory categories.
Patent Subject Matter Eligibility Test: Step 2A- Prong One:
Step 2A of the Subject Matter Eligibility Test demonstrates whether a clam is directed to a judicial exception, see MPEP 2106.04(I.). Step 2A is a two-prong inquiry, where Prong One establishes the judicial exception. Regarding Prong One of Step 2A, the claim limitations are to be analyzed to determine whether, under their broadest reasonable interpretation, they “recite” a judicial exception or in other words whether a judicial exception is “set forth” or “described” in the claims. An “abstract idea” judicial exception is subject matter that falls within at least one of the following groupings: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes, see MPEP 2106.04(II.)(A.)(1.) and 2106.04(a)(2).
Representative independent claim 13 includes limitations that recite at least one abstract idea as underlined in the following limitations. Specifically, independent claim 13 recites:
A server for group testing a set of lifestyle interventions, the server comprising:
a processor; and
a memory including instructions that, when executed with the processor, cause the server to, at least:
initialize a model with respect to a set of lifestyle interventions received from a device associated with a user, wherein initializing the model includes (i) encoding the model as a tree including a plurality of nodes, wherein each node of the tree is representative of a list of lifestyle interventions and includes metadata information associated with the node, and (ii) assigning the set of lifestyle interventions received from the device to the list of lifestyle interventions associated with a root node of the tree;
for each node of the tree,
(a) identify, a first subset of the list of lifestyle interventions associated with the node to be assigned to a first child node of the node, and a second subset of the list of lifestyle interventions associated with the node to be assigned to a second child node of the node;
(b) select one of the first child node and the second child node to be utilized for a next round of processing based on an evaluation of each of the first child node and the second child node,
(c) update metadata information associated with the first child node and the second child node based on the evaluation; and
(d) iteratively repeat (a)-(c) until a stopping criterion is satisfied; and
transmit metadata information on the device associated with the user, wherein the metadata information includes a potency computed by the server for each lifestyle intervention in the set of lifestyle interventions, the potency for each lifestyle intervention being rendered in a user interface of an application executing on the device associated with the user, and enabling a selection, via the user interface, of one or more lifestyle interventions from the set of lifestyle interventions for achieving a target outcome.
The Examiner submits that the foregoing underlined limitations constitute a “mental process”, as the following abstract limitations are related to evaluations that can be practically performed in the human mind:
“initialize” a model with respect to a set of lifestyle interventions, which includes having a list of lifestyle interventions and includes metadata information, and “assigning” the set of lifestyle interventions to the list of lifestyle interventions, which are abstract limitations of analysis by generating an abstract model to be used for the evaluation of the interventions,
“identify” a first subset of the list of lifestyle interventions and a second subset of the list of lifestyle interventions, which is an abstract limitation of observation,
consideration of the first and second set of interventions to be utilized for a next round of “processing” based on an “evaluation”, which is an abstract limitation of further analysis of the subsets of interventions,
“update” metadata information based on the evaluation, and “iteratively repeat” the previous abstract steps until a stopping criterion is satisfied, which are abstract limitations of evaluations of using the abstract model to identify information, make an abstract selection of the subset of interventions that are used for further analysis, and then make a further judgement to update metadata information which is related to the interventions,
where the metadata includes a potency for each lifestyle intervention in the set, which is an abstract limitation with the consideration of potency for each intervention,
enabling a selection of one or more lifestyle interventions from the set of lifestyle interventions for achieving a target outcome, which is an abstract limitation of making a judgement of which lifestyle interventions is to be selected for achieving the target outcome.
Accordingly, the claim recites the steps for group testing a set of lifestyle interventions by generating an abstract representation of the interventions for analysis that can practically be performed in the human mind with a physical aid such as pen and paper.
The abstract idea recited in claims 1 and 20 are similar to that of claim 13.
Any limitations not identified above as part of the abstract idea are deemed “additional elements” (i.e., processor) and will be discussed in further detail below.
Accordingly, the claim as a whole recites at least one abstract idea.
Furthermore, dependent claims further define the at least one abstract idea, and thus fails to make the abstract idea any less abstract as noted below:
Claims 2 and 14 recite further detail of the abstract model of the metadata information, where it includes a first set of impotent interventions, a second set of potent interventions, a first parameter of the number of interventions of a list of interventions of the node, a second parameter of the minimum number of potent interventions, and a third parameter of a maximum number of ponent interventions, further describing the abstract idea. Claims 3 and 15 recite further abstract limitations further describing the initializing of the abstract model by “estimating” the third parameter associated with the root node, further describing the abstract idea. Claims 4 and 16 recite further abstract limitations further describing the third parameter is estimated based on a confidence threshold and a probability distribution, further describing the abstract idea. Claims 5 and 17 recite further description of the interventions is “determined” based on a catalog of interventions and being selected in a random fashion, further describing the abstract idea. Claims 6 recites further abstract limitations of “generating” a catalog including data associated with the set of interventions where the data includes records, each record including data such as number of interventions, minimum number of potent interventions, max number of ponent interventions, optimal count, max of execution of the model as described, further describing the abstract idea. Claims 7 and 18 recite abstract limitations of the modeling of data as further describing the first subset of interventions is disjoint with the second subset, further describing the abstract idea. Claims 8 and 19 recite further abstract limitations further describing the “evaluation” of each subset of interventions by “simulating” the model for a first potency response for the first subset, “simulating” the model for a second potency response of the first subset, “identifying” based on the catalog, a first result of the simulation and a second result, and then “simulating the model for the first potency response of the second subset, “simulating” the model for the second potency response value of the second subset, “identifying” a third result of simulating for the first potency response and a fourth result for the second potency response, a second maximum number of rounds required to “determine” potencies of interventions included in the second subset, and “selecting” one of the first and second subsets based on the comparison of the first and second number of rounds of model execution, further describing the abstract idea (where the claim recites selecting of the first child node, however the representation of the intervention subset as a node recites mere computer implementation as described in Step 2A Prong 2 of the Eligibility Test). Claim 9 recites further abstract limitations describing the abstract modeling by “selecting” the first set of interventions in response to the first maximum number of rounds of model execution being lower than the second maximum rounds, further describing the abstract idea. Claim 10 recites further detail of the abstract model by “selecting” the second subset in response to the second maximum number of rounds of model execution being lower than the first maximum number of rounds of model execution, further describing the abstract idea. Claim 11 recites further detail of the stopping criterion for the abstract model where the criterion corresponds to a potency of each lifestyle intervention included in the lifestyle interventions as being “determined as potent or impotent, further describing the abstract idea.
Patent Subject Matter Eligibility Test: Step 2A- Prong Two:
Regarding Prong Two of Step 2A, it must be determined whether the claim as a whole integrates the abstract idea into a practical application. It must be determined whether any additional elements in the claim beyond the abstract idea integrates the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exceptions into a “practical application,” see MPEP 2106.04(II.)(A.)(2.) and 2106.04(d)(I.).
In the present case, the additional limitations beyond the above-noted at least one abstract idea are as follows (where the bolded portions are the “additional limitations” while the underlined portions continue to represent the at least one “abstract idea”):
Regarding claim 13:
A server for group testing a set of lifestyle interventions, the server comprising:
a processor; and
a memory including instructions that, when executed with the processor, cause the server to, at least (amounts to nothing more than an instruction to apply the abstract idea using a generic computer as noted below, see MPEP 2106.05(f)):
initialize a model with respect to a set of lifestyle interventions received from a device associated with a user (merely data gathering steps as noted below, see MPEP 2106.05(g) and buySAFE, Inc. v. Google, Inc), wherein initializing the model includes (i) encoding the model as a tree including a plurality of nodes, wherein each node of the tree is representative of (amounts to nothing more than an instruction to apply the abstract idea using a generic computer as noted below, see MPEP 2106.05(f)) a list of lifestyle interventions and includes metadata information associated with the node, and (ii) assigning the set of lifestyle interventions received from the device to the list of lifestyle interventions associated with a root node of the tree;
for each node of the tree,
(a) identify, a first subset of the list of lifestyle interventions associated with the node to be assigned to a first child node of the node, and a second subset of the list of lifestyle interventions associated with the node to be assigned to a second child node of the node;
(b) select one of the first child node and the second child node to be utilized for a next round of processing based on an evaluation of each of the first child node and the second child node,
(c) update metadata information associated with the first child node and the second child node based on the evaluation; and
(d) iteratively repeat (a)-(c) until a stopping criterion is satisfied; and
transmit metadata information on the device associated with the user (amounts to nothing more than an instruction to apply the abstract idea using a generic computer as noted below, see MPEP 2106.05(f)), wherein the metadata information includes a potency computed by the server (amounts to nothing more than an instruction to apply the abstract idea using a generic computer as noted below, see MPEP 2106.05(f)) for each lifestyle intervention in the set of lifestyle interventions, the potency for each lifestyle intervention being rendered in a user interface of an application executing on the device associated with the user (amounts to nothing more than an instruction to apply the abstract idea using a generic computer as noted below, see MPEP 2106.05(f)), and enabling a selection, via the user interface, of one or more lifestyle interventions from the set of lifestyle interventions for achieving a target outcome.
For the following reasons, the Examiner submits that the above identified additional limitations do not integrate the above-noted at least one abstract idea into a practical application.
Regarding the additional limitation of the overall server system comprising a processor and a memory including instructions that, when executed with the processor, cause the server to perform steps, encoding the model as a tree including a plurality of nodes where each node of the tree is representative of the lifestyle intervention subset, use of the root node, use and selection of the first and second child node, the metadata associated with the first and second child nodes, transmission of the metadata information on the device associated with the user, computation of the server, and the potency for each lifestyle intervention being rendered in a user interface of an application executing on the device associated with the user, the Examiner submits that these limitations amount to nothing more than an instruction to apply the abstract idea using a generic computer and generic computing components (see MPEP § 2106.05(f)). [0036, 0044, 0063] of the Applicant’s Specification recites detail of the generic server used to carry out the abstract idea and the recitation of other generic computing components of a processor and memory. [0051] recites the use of the node and tree structure of the data. [0057] recites associating the intervention sets as part of the child nodes. [0055] recites the use of the root nodes. [0057] recites the use of child nodes being associated with the metadata. However, the generic implementation of the abstract idea to the generic node/tree structuring amounts to nothing more than an instruction to apply the abstract idea using generic computing components. [0041, 0067] recites the transmission of metadata on the generic user device. [0037] recites the use of the generic computing done on the server. [0049, 0067, 0106] recites the use of the generic user interface for the potency and selection of interventions to be displayed. Claim 1 recites similar additional elements. Claim 20 recites similar additional elements including other additional elements of: “a non-transitory computer readable medium storing specific computer- executable instructions that, when executed by a processor, cause a computer system to perform steps” [0044, 0068, 0120] of the Applicant’s Specification recites the generic use of a computing system with the non-transitory computer readable storage medium and the computer system. The additional elements recite the use of generic computing components with a non-specific implementation to carry out steps of the abstract idea without showing an improvement to technology, computers or other technical fields, and thus recites mere instructions to implement the abstract idea on a computer.
Regarding the additional limitation of receiving a set of lifestyle interventions from a device associated with a user, this is merely pre-solution activity. The Examiner submits that this additional limitation merely adds insignificant extra-solution activity of collecting data to the at least one abstract idea in a manner that does not meaningfully limit the at least one abstract idea (see MPEP § 2106.05(g)). [0064] of Applicant’s Specification recites the server receiving the lifestyle intervention from a user’s device. The use of the devices to send and receive data are used to perform data gathering for the abstract idea, and thus recites insignificant pre-solution activities. Claims 1 and 20 recite similar additional elements.
Taken alone, the additional elements do not integrate the at least one abstract idea into a practical application.
Looking at the additional limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole, reflect an improvement in the functioning of a computer or an improvement to another technology or technical field, apply or use the above-noted judicial exception to group testing a set of lifestyle interventions, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is not more than a drafting effort designed to monopolize the exception, see MPEP 2106.04(d), 2106.05(a), 2106.05(b).
The remaining dependent claim limitations not addressed above fail to integrate the abstract idea into a practical application as set below:
Claims 3 and 15 recites further additional elements describing the sets associated with the root node of the tree to a null set, however these limitations amount to nothing more than an instruction to apply the abstract idea using generic computing components. Claims 5 and 17 recite further additional elements of “receiving” a set of interventions from a device, which merely recites insignificant data gathering steps for the abstract idea. Claim 6 recites additional elements of mapping of a 3-tuple, which recites generic implementation of the abstract idea into the computing environment. Claim 12 recites further detail of the additional element describing the tree as a binary tree, however these limitations amount to nothing more than an instruction to apply the abstract idea using generic computing components.
Thus, taken alone and in ordered combination, the additional elements do not integrate the at least one abstract idea into a practical application.
Patent Subject Matter Eligibility Test: Step 2B:
Regarding Step 2B of the Subject Matter Eligibility Test, the independent claims do not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application, see MPEP 2106.05(II.). Further, it may need to be established, when determining whether a claim recites significantly more than a judicial exception, that the additional elements recite well understood, routine, and conventional activities, see MPEP 2106.05(d).
Regarding the additional limitation of the overall server system comprising a processor and a memory including instructions that, when executed with the processor, cause the server to perform steps, encoding the model as a tree including a plurality of nodes where each node of the tree is representative of the lifestyle intervention subset, use of the root node, use and selection of the first and second child node, the metadata associated with the first and second child nodes, transmission of the metadata information on the device associated with the user, computation of the server, and the potency for each lifestyle intervention being rendered in a user interface of an application executing on the device associated with the user, the Examiner submits that these limitations amount to nothing more than an instruction to apply the abstract idea using a generic computer and generic computing components (see MPEP § 2106.05(f) and MPEP § 2106.05(d)(II), specifically “Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93” and “buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network)”). [0036, 0044, 0063] of the Applicant’s Specification recites detail of the generic server used to carry out the abstract idea and the recitation of other generic computing components of a processor and memory. [0051] recites the use of the node and tree structure of the data. [0057] recites associating the intervention sets as part of the child nodes. [0055] recites the use of the root nodes. [0057] recites the use of child nodes being associated with the metadata. However, the generic implementation of the abstract idea to the generic node/tree structuring amounts to nothing more than an instruction to apply the abstract idea using generic computing components. [0041, 0067] recites the transmission of metadata on the generic user device. [0037] recites the use of the generic computing done on the server. [0049, 0067, 0106] recites the use of the generic user interface for the potency and selection of interventions to be displayed. The transmission of the generated metadata from one device to the other display device recites well understood, routine, and conventional activities.
Claim 1 recites similar additional elements. Claim 20 recites similar additional elements including other additional elements of: “a non-transitory computer readable medium storing specific computer- executable instructions that, when executed by a processor, cause a computer system to perform steps” [0044, 0068, 0120] of the Applicant’s Specification recites the generic use of a computing system with the non-transitory computer readable storage medium and the computer system. The additional elements recite the use of generic computing components with a non-specific implementation to carry out steps of the abstract idea without showing an improvement to technology, computers or other technical fields, and thus recites mere instructions to implement the abstract idea on a computer and does not recite significantly more than the judicial exception, and where the memory storing instructions to perform steps of the abstract idea recites well understood, routine, and conventional activities..
Regarding the additional limitation of receiving a set of lifestyle interventions from a device associated with a user, this is merely pre-solution activity. The Examiner submits that this additional limitation merely adds insignificant extra-solution activity of collecting data to the at least one abstract idea in a manner that does not meaningfully limit the at least one abstract idea (see MPEP § 2106.05(g) and MPEP § 2106.05(d)(II), specifically “buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network)”). [0064] of Applicant’s Specification recites the server receiving the lifestyle intervention from a user’s device. The use of the devices to send and receive data are used to perform data gathering for the abstract idea, and thus recites insignificant pre-solution activities. Claims 1 and 20 recite similar additional elements. The use of devices to send and receive the information related to the interventions recites well understood, routine, and conventional activities.
The dependent claims do not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exceptions for the same reasons to those discussed above with respect to determining that the dependent claims do not integrate the at least one abstract idea into a practical application.
For the reasons stated, the claims fail the Subject Matter Eligibility Test and therefore claims 1-20 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
Conclusion
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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/CONSTANTINE SIOZOPOULOS/
Examiner
Art Unit 3686
/JASON B DUNHAM/Supervisory Patent Examiner, Art Unit 3686