DETAILED ACTION
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1–20 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims of commonly owned patents:
US 10,252,107 B2 (“’107 patent”)
US 10,625,118 B2 (“’118 patent”)
US 11,385,354 B2 (“’354 patent”)
US 12,032,070 B2 (“’070 patent”)
The claims of these earlier patents are not patentably distinct from the claims of the present application.
Pending Claim 1 vs. Prior Patents
Pending Claim 1 (US 2024/0353570 A1):A method for tracking an athlete engaged in a fitness activity, comprising: determining a location of the athlete during the fitness activity based on data received at a portable fitness monitoring device; determining performance data of the athlete during the fitness activity by a sensor in communication with the portable fitness monitoring device; determining a location of a spectator based on data received at a spectator device; and sending an alert to the portable fitness device when the performance data of the athlete as determined by the sensor meets or exceeds a predetermined performance threshold, wherein the alert is based on the location of the athlete and the location of the spectator.
US 10,252,107 B2, Claim 1:
A method of tracking a participant engaged in a fitness activity, comprising: determining a location of the participant during the fitness activity based on data received at a portable fitness device used by the participant; determining a location of a spectator during the fitness activity based on data received at a mobile spectator device used by the spectator; from a server, sending an alert to a spectator at a spectator device during the fitness activity indicating that the participant is within a predetermined distance of the spectator; and sending an alert to the portable fitness device during the fitness activity indicating that the spectator is within a predetermined distance of the participant.
Overlap: Both claim determining participant/athlete location, determining spectator location, and generating alerts to athlete and spectator devices. The distinction in the pending claim regarding “performance data threshold” is an obvious variation, as performance metrics such as speed, heart rate, or pace were already disclosed in the family.
US 10,625,118 B2, Claim 1:
A method of tracking a participant engaged in a fitness activity, comprising: determining a location of the participant during the fitness activity based on data received at a portable fitness device used by the participant; determining a location of a spectator during the fitness activity based on data received at a mobile spectator device used by the spectator; sending an alert to the spectator at a spectator device during the fitness activity indicating that the participant is within a predetermined distance of the spectator; and sending an alert to the portable fitness device during the fitness activity indicating that the spectator is within a predetermined distance of the participant.
Overlap: Substantially identical to the ’107 patent and the pending application. Again, the only added language in the pending claim concerns “performance thresholds,” which does not render the claim patentably distinct.
US 11,385,354 B2, Claim 1:
A method of tracking a participant engaged in a fitness activity includes determining a location of the participant during the fitness activity based on data received at a portable fitness device used by the participant; determining a location of a spectator during the fitness activity based on data received at a mobile spectator device used by the spectator; from a server, sending an alert to a spectator at a spectator device during the fitness activity indicating that the participant is within a predetermined distance of the spectator; and sending an alert to the portable fitness device during the fitness activity indicating that the spectator is within a predetermined distance of the participant.
Overlap: Essentially identical to the ’118 patent. No meaningful distinction over the pending claims.
US 12,032,070 B2, Claim 1:
A method of tracking a participant using a portable fitness device during a fitness activity, comprising: from a server, prior to the fitness activity sending an invitation to a spectator to participate in tracking the participant; receiving an acceptance from the spectator; determining a location of the participant during the fitness activity; and sending alerts to the spectator and participant devices indicating that one is within a predetermined distance of the other.
Overlap: Same fundamental concept of mutual location tracking and alerting between participant and spectator devices. The additional “invitation/acceptance” feature does not patentably distinguish the invention.
Conclusion
The claims of the present application (US 2024/0353570 A1) are not patentably distinct from the claims of the earlier patents. All disclose methods of tracking athletes/participants and spectators, determining their locations via devices, and providing alerts when thresholds are met. The pending addition of “performance data” (e.g., heart rate threshold) is an obvious modification of the systems already claimed.
Therefore, claims 1–20 are rejected on the ground of non-statutory obviousness-type double patenting over claims of US 10,252,107 B2, US 10,625,118 B2, US 11,385,354 B2, and US 12,032,070 B2.
A terminal disclaimer would be required to overcome this rejection.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claim(s)1-20 is/are rejected under pre-AIA 35 U.S.C. 102(a)(1) as being anticipated by Huston (US20070015586A1).
Claim 1: Huston discloses determining a location of the athlete during the fitness activity based on data received at a portable fitness monitoring device. Specifically, Huston teaches: “Preferably, the participants are GPS equipped and communicate their GPS position (and other sensor information) with a server.” (para[0009], col. 3, lines 7–13). Huston further discloses determining performance data of the athlete during the fitness activity by a sensor in communication with the portable fitness monitoring device, stating: “In addition to the view of the vehicles (or contestants) the spectator can selectively view appended important information. For example… identification plus speed, plus acceleration… Other information from car sensors are possible (or derived from GPS information) such as linear or radial G, engine or tire condition, fuel state, etc.” (para[0012], col. 4, lines 1–10). Huston discloses determining a location of a spectator based on data received at a spectator device: “Each spectator has a portable device that has a GPS engine… telling the server the spectator’s location at the track.” (para[0010], col. 3, lines 13–20). Finally, Huston discloses sending an alert to the portable fitness device when the performance data of the athlete as determined by the sensor meets or exceeds a predetermined performance threshold, wherein the alert is based on the location of the athlete and the location of the spectator. Huston states: “During the race, the positions of the cars are broadcast to the spectators. In one mode, the portable device displays information most relevant to the spectator’s location. For example, the position and vital information of the cars nearest the spectator.” (para[0010], col. 3, lines 20–27). Accordingly, Claim 1 is fully anticipated.
Claim 2 Huston discloses that the portable device displays proximity information: “…the portable device displays information most relevant to the spectator’s location. For example, the position and vital information of the cars nearest the spectator.” (para[0010], col. 3, lines 20–25).
Claim 3 Huston discloses performance information including estimated time metrics: “…lap time, time back or ahead, mile per hour, miles remaining, etc.” (para[0012], col. 4, lines 5–15).
Claim 4 Huston discloses that the portable device transmits the spectator’s GPS location: “…telling the server the spectator’s location at the track.” (para[0010], col. 3, lines 13–20).
Claim 5 Huston discloses audible alerts: “…the portable device would include a radio… to relay audio for monitoring car or pit communications or radio broadcasts.” (para[0012], col. 4, lines 25–32).
Claim 6 Huston discloses video alerts: “…the spectator could go from a view mode to other modes, such as … a view from a particular camera (streaming video), pit video or rendering, etc.” (para[0012], col. 4, lines 15–22).
Claim 7 Huston discloses sensor data related to performance: “…Other information from car sensors are possible (or derived from GPS information) such as linear or radial G, engine or tire condition, fuel state, etc.” (para[0012], col. 4, lines 1–10).
Claim 8 Huston discloses monitoring and transmitting performance data: “…participants are GPS equipped and communicate their GPS position (and other sensor information) with a server.” (para[0009], col. 3, lines 7–13). Huston discloses transmitting performance data to portable devices: “…the positions of the cars are broadcast to the spectators.” (para[0010], col. 3, lines 20–23). Huston discloses generating alerts based on location and performance thresholds: “…lap time, time back or ahead, mile per hour, miles remaining, etc.” (para[0012], col. 4, lines 5–15).
Claims 9–11 Huston discloses selectable areas of interest including finish line and other points: “…spectator might select ‘finish line,’ ‘overhead,’ ‘car 3 driver’s view,’ or ‘my view.’” (para[0010], col. 3, lines 24–30). Huston specifically discloses the finish line: “…the perspective has been changed to the finish line.” (para[0027], col. 5, lines 25–30). Huston also teaches analogous points of interest such as golf waypoints or caddy location, which correspond to aid stations: “…golf spectator… might use the portable device while accompanying a particular golfer… information… gathered by a portable GPS unit accompanying the golfer’s caddy.” (para[0014], col. 4–5).
Claim 12 Huston discloses sensor-based vital statistics as in Claim 7 (para[0012], col. 4, lines 1–10).
Claim 13 Huston discloses audible alerts as in Claim 5 (para[0012], col. 4, lines 25–32).
Claim 14 Huston discloses alerts including athlete location: “…viewing on the graphics display of the device a depiction of the participant positions at said venue, whereby the spectator can selectively change the points of view.” (Claim 10, col. 9, lines 15–20).
Claim 15 Huston discloses transmitting alerts to spectator devices: “…spectators have a portable viewing device that accepts the participants position… During the race, the positions of the cars are broadcast to the spectators.” (para[0009]–[0010]).
Claim 16 Huston discloses that alerts and transmissions are mediated by a server: “…participants… communicate with a server. Each spectator has a portable device… logging in with the central server… positions broadcast to the spectators.” (para[0010], col. 3, lines 7–20).
Claim 17 Huston discloses audible alerts (para[0012], col. 4, lines 25–32).
Claim 18 Huston discloses sensor performance data including vital statistics (para[0012], col. 4, lines 1–10).
Claim 19 Huston discloses computing relative positions of participant and spectator: “…the portable device displays information most relevant to the spectator’s location. For example, the position and vital information of the cars nearest the spectator.” (para[0010], col. 3, lines 20–25).
Claim 20 Huston discloses ETA metrics: “…lap time, time back or ahead, mile per hour, miles remaining, etc.” (para[0012], col. 4, lines 5–15).
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 21-40 are rejected under 35 U.S.C. 101 because based upon consideration of all of the relevant factors with respect to the claim as a whole, the claims are held to claim an abstract idea, and is/are therefore rejected as ineligible subject matter under 35 U.S.C. 101.
Independent claims 21, 31 are directed to a method comprising the steps of determining locations and displaying location. However, the steps are not recited as performed by a particular machine or machines. No machines are disclosed as performing the steps of determining or displaying. While a device is disclosed, however it is not specified to be a computer device with a processor and memory to perform certain activity. A computer processor is a specific machine which may perform specific steps in a method.
Claims 22-30, 32-36 depend from claims 21, 31, inherit their deficiencies, do not cure those deficiencies, and are rejected for the same reasons as claims 21 and 31.
Claim Rejections - 35 USC § 112
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.
Claims 21-30 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 pre-AIA the applicant regards as the invention.
Specifically to claim 21, the limitations recited such as “ determining a spectator location of a spectator base on data received at a spectator device” this limitations has no correlation with the disclosed invention within the claimed limitations. Remaining of the claimed limitations simply recites the tracking of athlete’s dynamic location and activity along the route, which has nothing to do with the spectator location. Therefor, there seems to be some missing steps within the method and the above-mentioned limitations don’t make sense to as what purpose it serving. Examiner is considering the limitations as non-functional descriptive language.
A clarification would help the examiner to treat the claims on their merit.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over US Pub. No. 2011/0250937 A1 (“Hubbard”), in view of US Pub. No. 2011/0029611 A1 (“Hutchison”).
Claim 1
Hubbard discloses determining a location of an athlete during a fitness activity based on data received at a portable fitness monitoring device. Hubbard states: “A portable device carried by the participant can determine the participant’s position using GPS and transmit the location to a central server” (para [0022], col. 4, lines 5–10). Hubbard further discloses determining performance data of the athlete during the fitness activity by a sensor in communication with the portable fitness monitoring device: “The portable device may also receive physiological data such as heart rate, pace, or respiration rate from sensors and transmit this data together with location” (para [0036], col. 6, lines 10–17). Hubbard also discloses transmitting this information to observers: “The central server receives the participant’s data and relays it to authorized spectators or race officials” (para [0050], col. 8, lines 12–20).
Hubbard does not explicitly disclose determining a location of a spectator and sending alerts based on both athlete and spectator locations. Hutchison provides this teaching. Hutchison states: “Each mobile device in the circle of friends determines its own location and communicates with the server, which calculates distances between peers” (para [0047], col. 9, lines 1–7). Hutchison further explains: “The system notifies the user when another friend device enters or leaves a predetermined proximity zone” (para [0048], col. 9, lines 8–14). It would have been obvious to one of ordinary skill to incorporate Hutchison’s peer-to-peer location comparison and alert generation into Hubbard’s athlete tracking system in order to allow alerts to be sent based on both the location of the athlete and the location of a spectator, since both systems concern mobile location tracking and notifications and their combination would predictably yield the claimed functionality.
Claim 2
Hubbard discloses transmitting data to observers (para [0050], col. 8, lines 12–20). Hutchison teaches including distance between devices as part of the notification. Hutchison states: “The system calculates the distance between the user’s device and a friend’s device and provides this information to the user” (para [0047], col. 9, lines 1–5). It would have been obvious to incorporate distance information into the alerts of Hubbard, thereby rendering claim 2 obvious.
Claim 3
Hubbard discloses calculating estimated times to checkpoints and finish lines. Hubbard states: “The system calculates an estimated time of arrival at the next checkpoint or finish line based on speed and pace” (para [0041], col. 7, lines 1–6). Combining this with Hutchison’s distance notification teaches generating alerts that include estimated time. Claim 3 is therefore obvious.
Claim 4
Hubbard discloses transmitting participant location but not explicitly spectator location. Hutchison discloses transmitting and sharing peer device locations. Hutchison states: “Each peer device shares its current position with other devices and the server” (para [0048], col. 9, lines 8–14). It would have been obvious to include spectator location in alerts in Hubbard’s system. Claim 4 is obvious.
Claim 5
Hubbard discloses audible alerts. Hubbard states: “The device may generate an audible notification when thresholds are exceeded or events occur” (para [0055], col. 8, lines 25–30). Claim 5 is therefore obvious.
Claim 6
Hubbard discloses visual and video alerts. Hubbard states: “The portable device may display a graphical map or live video stream of the participant’s progress” (para [0060], col. 9, lines 5–12). Claim 6 is therefore obvious.
Claim 7
Hubbard discloses heart rate sensors. Hubbard states: “Physiological sensors such as heart rate monitors can be paired with the portable device” (para [0036], col. 6, lines 10–17). Claim 7 is therefore obvious.
Claim 8
Hubbard discloses monitoring performance data of the athlete, transmitting to a portable fitness device, and generating alerts. Hubbard states: “The portable device monitors physiological data and location and transmits it to the server. The server analyzes the data and generates alerts when values exceed thresholds” (para [0035]–[0038], col. 6–7). Hutchison discloses alerts based on relative proximity of peer devices (para [0047]–[0048], col. 9, lines 1–14). The combination renders claim 8 obvious.
Claim 9
Hubbard discloses areas of interest along the route. Hubbard states: “The system tracks progress along a route having designated checkpoints, water stations, and finish line” (para [0041], col. 7, lines 1–6). Claim 9 is therefore obvious.
Claim 10
Hubbard specifically discloses the finish line as a designated area of interest (para [0041], col. 7, lines 1–6). Claim 10 is therefore obvious.
Claim 11
Hubbard specifically discloses water stations as designated areas of interest (para [0041], col. 7, lines 1–6). Claim 11 is therefore obvious.
Claim 12
Hubbard discloses heart rate sensors and performance data comprising heart rate (para [0036], col. 6, lines 10–17). Claim 12 is therefore obvious.
Claim 13
Hubbard discloses audible alerts (para [0055], col. 8, lines 25–30). Claim 13 is therefore obvious.
Claim 14
Hubbard discloses alerts that include athlete location along a route. Hubbard states: “The portable device displays the participant’s location on a map of the race course” (para [0060], col. 9, lines 5–12). Claim 14 is therefore obvious.
Claim 15
Hubbard discloses transmitting alerts to observers (spectators). Hubbard states: “The central server relays the participant’s location and data to registered observers” (para [0050], col. 8, lines 12–20). Hutchison discloses peer-to-peer notifications (para [0047], col. 9, lines 1–7). The combination renders claim 15 obvious.
Claim 16
Hubbard discloses alerts sent via a central server. Hubbard states: “The central server aggregates participant data and distributes alerts” (para [0025], col. 5, lines 15–20). Claim 16 is therefore obvious.
Claim 17
Hubbard discloses audible alerts (para [0055], col. 8, lines 25–30). Claim 17 is therefore obvious.
Claim 18
Hubbard discloses heart rate sensors as part of performance data (para [0036], col. 6, lines 10–17). Claim 18 is therefore obvious.
Claim 19
Hubbard does not explicitly disclose alerts including the distance between athlete and spectator devices. Hutchison does. Hutchison states: “The system calculates distance between a user’s device and a friend’s device and notifies when they are near” (para [0047], col. 9, lines 1–5). It would have been obvious to apply this distance calculation in Hubbard’s system. Claim 19 is therefore obvious.
Claim 20
Hubbard discloses estimated time to checkpoints or finish lines. Hubbard states: “The system calculates ETA to checkpoints and finish line” (para [0041], col. 7, lines 1–6). Combining this with Hutchison’s proximity alerts makes it obvious to include estimated time in alerts. Claim 20 is therefore obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MASUD AHMED whose telephone number is (571)270-1315. The examiner can normally be reached on M-F 9:00-8:30 PM PST with IFP.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abby Lin can be reached on 571 270 3976. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MASUD AHMED/Primary Examiner, Art Unit 3657