DETAILED ACTION
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.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The determination of whether a claim recites patent ineligible subject matter is a 2 step inquiry.
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), see MPEP 2106.03, or
STEP 2: the claim recites a judicial exception, e.g. an abstract idea, without reciting additional elements that amount to significantly more than the judicial exception, as determined using the following analysis: see MPEP 2106.04
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon? see MPEP 2106.04(II)(A)(1)
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? see MPEP 2106.04(II)(A)(2)
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? see MPEP 2106.05
101 Analysis – Step 1
Claims 1-22 and 34-35 are directed towards methods / systems and are, therefore, within at least one of the four statutory categories.
101 Analysis – Step 2A, Prong I
Regarding Prong I of the Step 2A analysis, the claims are to be analyzed to determine whether they recite subject matter that falls within one of the follow groups of abstract ideas: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes. see MPEP 2106(A)(II)(1) and MPEP 2106.04(a)-(c)
Independent claim 1 includes limitations that recite an abstract idea (bolded below) and additional elements (underlined below) and will be used as a representative claim for the remainder of the 101 rejection. Claim 1 recites:
1. (Original) A method comprising:
applying a force to a first sample, the force being representative of a bodyweight load, the first sample comprising a portion of a footwear article;
generating, by at least one sensor, at least one first output in response to application of the force to the first sample, wherein the at least one first output is associated with a first comfort indication metric;
applying the force to a second sample, the second sample comprising a flooring material positioned beneath the portion of the footwear article in a stacked arrangement;
generating, by the at least one sensor, at least one second output in response to application of the force to the second sample, wherein the at least one second output is associated with a second comfort indication metric; and
determining, based at least in part on the first comfort indication metric and the second comfort indication metric, at least one value comparing the first comfort indication metric to the second comfort indication metric.
The examiner submits that the foregoing bolded limitation(s) constitute a “mental process” because under its broadest reasonable interpretation, the claim covers performance of the limitation in the human mind. Specifically, the “determining” step merely comprises determining a value based on comparing the first comfort metric pertaining to the portion of a footwear article to the second comfort metric pertaining to the portion of the footwear article stacked with the flooring material. As illustrated in [0048] of Applicant’s specification, the determined value can merely be a “ratio” between the two comfort metrics that represents the “relative comfort” such as a “20% difference between the comfort of the shoe and the comfort of the shoe with the flooring material”. As further explained in [0049] the disclosed systems and methods “solve the technical problem of relating flooring material measurements by comparing measurements associated with experiences with which a lay consumer is familiar” (emphasis added). In other words, the claim is directed toward determining how to describe the characteristics of flooring material, such as energy absorption, in laymen’s terms, e.g. the flooring material provides x% more absorption than a typical sneaker or y% more absorption than a typical loafer.
Accordingly, the claim recites at least one abstract idea.
101 Analysis – Step 2A, Prong II
Regarding Prong II of the Step 2A analysis, the claims are to be analyzed to determine whether the claim, as a whole, integrates the abstract into a practical application. see MPEP 2106.04(II)(A)(2) and MPEP 2106.04(d)(2). It must be determined whether any additional elements in the claim beyond the abstract idea integrate 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 exception into a “practical application.”
The “applying” and “generating” steps together amount to data gathering, which is a form of insignificant extra solution activity. See MPEP 2106.05(g). The two steps are performed twice to provide the first and second comfort indication metrics that are then used to determine the value comparing them.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitation(s) as an ordered combination or as a whole, the limitation(s) add 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 effect a particular treatment or prophylaxis for a disease or medical condition, 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 § 2106.05. Accordingly, the additional limitation(s) do/does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
101 Analysis – Step 2B
Regarding Step 2B of the Revised Guidance, representative independent claim 1 does 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. As discussed above with respect to the examiner submits that these limitations are insignificant extra-solution activities. In addition, these additional limitations (and the combination, thereof) amount to no more than what is well-understood, routine and conventional activity.
With regard to the applying and generating steps, fig. 1 and [0031]-[0033], [0038] of Applicant’s specification teaches how the first/second forces are applied and the first/second outputs (and associated comfort indication metrics) are generated. As is shown in the cited portions of the specification, the applying force steps comprise using a force application assembly having a contact structure 22, actuator 24, sensors 28 and anvil 30 to apply a compressive force to a sample 32, i.e. the footwear article and/or the flooring material. The generating steps comprise reading the output of the sensors 28 as the force is applied to the sample 32. The sensor data can comprise force and displacement data. Essentially, the limitations comprise compression testing of the footwear article and/or flooring material. Doran (US 2008/0256828) teaches where compression testing is a well-understood, routine and conventional process for determining the firmness of a material, including material that provides support to a person, such as a shoe (see Doran [0016]). As such, it can be seen the applying and generating steps are well-understood, routine and conventional and, thus, do not provide an inventive concept.
Hence, the claim is not patent eligible.
Dependent claim(s) 2-20 do not recite any further limitations that cause the claim(s) to be patent eligible. Rather, the limitations of dependent claims are directed toward additional aspects of the judicial exception and/or well-understood, routine and conventional additional elements that do not integrate the judicial exception into a practical application. Therefore, dependent claims 2-20 are not patent eligible under the same rationale as provided for in the rejection of claim 1.
Claim 34 is directed toward a system comprising a compression testing apparatus (actuator), a sensor, and a processor that performs the steps of claim 1. As shown above, claim 1 is directed toward a mental process that is not integrated into a practical application. The claiming of a well-understood, routine and conventional compression testing apparatus does not provide an inventive concept and, therefore, claim 34 is rejected under the same rational used in the rejection of claim 1.
Claims 21-22 and 35 are directed toward a variation of the methods/system of claims 1 and 34, the difference being that only one application of force to a stacked arrangement of flooring material and portion of a footwear article is performed and one output in response to the application of the force is generated. In other words, one compression test is performed. In addition, the mental process comprises determining, using a computing device and a database, a shoe type corresponding to the footwear article and a relative increase in energy absorption provided by the flooring material in comparison to the shoe type, i.e. the same value that is determined in claims 1 and 34. Therefore, claims 21-22 and 35 are rejected under the same rationale used in the rejections of claims 1 and 34
Therefore, claims 1-22 and 34-35 are ineligible under 35 USC §101.
Subject Matter Not Taught By The Prior Art
The prior art does not teach or fairly suggest the systems / methods as claimed in claims 1-22 and 34-35. Specifically, the prior art does not teach comparing the comfort metric of footwear to the comfort metric of flooring.
Conclusion
Any inquiry concerning this or any earlier communication from the examiner should be directed to Examiner Peter Nolan, whose telephone number is 571-270-7016. The examiner can normally be reached Monday-Friday from 7:30 am to 5:00 pm.
The fax number for the organization to which this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/Peter D Nolan/
Examiner, Art Unit 3661
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