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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 8th, 2025 has been entered.
Amendment Entered
In response to the amendment filed on December 8th, 2025, amended claims 1-2, 13-14, and 22 are entered.
Response to Arguments
Applicant's remarks with respect to the claim interpretations under 35 U.S.C. 112(f) have been fully considered but they are not persuasive. The claim interpretations are maintained.
At Pg. 10 of the Reply, Applicant argues that “these claim terms do not use the word "means," and therefore are not presumed to invoke 35 U.S.C. § 112(f).” Examiner respectfully disagrees. Even though the claims do not use the word “means”, the claim limitations still use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
With respect to the first prong of this analysis, the claim limitations use generic placeholders (a term that is simply a substitute for the term “means”) that do not limit the scope of the claim to any specific manner or structure for performing the claimed function. The term “device” is a non-structural term, having no specific structural meaning for performing the claimed function. The following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6: “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for.” See MPEP 2181.
Applicant further argues that the term "image capture device" is a well-understood structural term in the art and would be readily recognized by a person of ordinary skill as referring to camera / optical imaging hardware. Examiner recognizes that Claim 9 recites “wherein the image capture device is a digital camera”. Therefore, Claim 9 has not been included in the claim interpretations. However, the “image capture device” in Claims 1-2 still fail to recite sufficient structure.
Similarly, Applicant argues that “by amending ‘monitoring device’ to ‘physiological monitoring device,’ the claims expressly recite recognized physiological-signal-acquisition hardware that would be readily recognized by a person of ordinary skill, including EEG electrodes, sensing circuitry, and associated biosignal monitoring hardware”. Examiner respectfully disagrees. With respect to the second prong of this analysis, the claims merely state the underlying function without recitation of structure for performing that function. It is clear that “device” is set forth by the function it performs as opposed to the specific structure, material, or acts that perform the function. Although the addition of the word “physiological” may further limit the functioning of the “monitoring device”, the amendment fails to recite sufficient structure in order to overcome the claim interpretations.
With respect to the third prong of this analysis, the claim limitations are not modified by sufficient structure, material, or acts for achieving the specified function. In order to determine whether a word, term, or phrase coupled with a function denotes structure, (1) the specification must provide a description sufficient to inform one of ordinary skill in the art that the term denotes structure; (2) general and subject matter specific dictionaries provide evidence that the term has achieved recognition as a noun denoting structure; and (3) the prior art provides evidence that the term has an art-recognized structure to perform the claimed function. Ex parte Rodriguez, 92 USPQ2d 1395, 1404 (Bd. Pat. App. & Int. 2009) (precedential).
At Pg. 11 of the Reply, Applicant argues that the “specification further reinforces this structural understanding by describing and illustrating the image capture device and the physiological monitoring devices”. Examiner would like to clarify that only the recitations of “image capture device” in Claims 1-2, “first physiological monitoring device” in Claim 13, and “second physiological monitoring device” in Claim 13 are being presumed to invoke 35 U.S.C. § 112(f). The later recitations of the “image capture device” in Claim 9, “first physiological monitoring device” in Claim 14, and “second physiological monitoring device” in Claim 14 are not included in the claim interpretations because they recite sufficient structure. However, there is no indication that “device” denotes structure in the current limitations of “image capture device” in Claims 1-2, “first physiological monitoring device” in Claim 13, and “second physiological monitoring device” in Claim 13, and as such, the amendments fail to overcome the claim interpretations.
Applicant's remarks and amendments with respect to the rejections under 35 U.S.C. 112(b) have been fully considered. The rejections are withdrawn in view of the amendment.
Applicant's arguments, filed on December 8th, 2025, with respect to the rejections under 35 U.S.C. 101 have been fully considered but they are not persuasive. The rejection is maintained, and further clarified, in view of the amendment.
At Pg. 12 of the Reply, Applicant argues that amended “claim 1 requires a specific technological process carried out by a biofeedback system operating across a plurality of biofeedback sessions…these are concrete, machine-implemented operations that improve the functioning of the biofeedback system itself and therefore constitute a practical application under Step 2A, Prong Two”. Examiner respectfully disagrees.
The step of “identify[ing] an occurrence of neural synchrony” in independent Claim 1 can be classified as a mental process (i.e., an observation, judgement, or evaluation) and a mathematical concept (comparison of data sets based on a quantitative score and predetermined threshold score). Neural synchrony was identified through comparison of data, which can be completed through either a mental process and/or mathematical concept, and all the other additional elements that were recited merely performed insignificant extra-solution activity through the forms of data-gathering (receiving) and data-outputting (transmitting and displaying).
“The full scope of the claim under the BRI should be considered to determine if the claim reflects an improvement in technology (e.g., the improvement described in the specification).” MPEP 2106.05(a). “That is, the claim must include the components or steps of the invention that provide the improvement described in the specification.” Id.
“[I]n McRO, the court relied on the specification’s explanation of how the particular rules recited in the claim enabled the automation of specific animation tasks that previously could only be performed subjectively by humans, when determining that the claims were directed to improvements in computer animation instead of an abstract idea.” MPEP 2106.05 (a). There is no improvement to a computer or other technology. Unlike McRO, the claimed system invokes a computer as a tool to perform a mathematical concept and/or mental process.
The processor, units, and medium perform the same with or without the claimed abstract idea. Therefore, it is unclear how the abstract idea can improve the standard functions of the additional elements.
Further at Pg. 12 of the Reply, Applicant argues that “claim 1 does not merely measure neural activity or report information. Rather, the system according to embodiments iteratively captures physiological data over multiple sessions, computes and displays real-time neural-synchrony visualizations, and modifies its operation across sessions such that the duration of maintained neural synchrony is incrementally increased. This is a specific, technology-based feedback mechanism analogous to other forms of iterative, closed-loop control recognized by the USPTO as patent-eligible practical applications”. Examiner respectfully disagrees. Regardless of the amendments, the claims still recite steps for data-gathering (“iteratively captures physiological data over multiple sessions”), the abstract idea (“computes”), and steps for data-outputting (“displays real-time neural-synchrony visualizations”). Further reiterations of these steps do not make this invention a patent-eligible practical application.
Additionally, the Examiner notes that the displaying step is categorized as data-outputting, which falls under insignificant extra-solution activity. “As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978)” MPEP 2106.05(g). Moreover, diagnostics are typically done in real time by a physician or a machine. Therefore, performing these functions in real-time is nothing outside of the normal decision-making process of a diagnostic setting that would recite an improvement or integrate the abstract idea into a practical application.
The judicial exceptions are not integrated into a practical application because the additional elements do not constitute a particular machine (i.e., the cited additional elements are recited at a high level of generality), nor are they integral to the process claimed. The step of “identify[ing] previously determined occurences of neural synchrony” does not add significantly more to the abstract ideas identified, as it merely specifies the nature of the data which is exploited in the steps encompassing a mental process. See MPEP 2106.05(g). Additionally, the limitations related to the data detection and capturing merely generally link to a particular technical environment. See MPEP 2106.05(h). Each of the additional elements claimed, considered alone and in combination, do no more than generally link the use of the judicial exceptions identified to a particular technological environment or field of use.
In consideration of each of the relevant factors and the claim elements individually and in combination, the claims are directed to abstract ideas without sufficient integration into a practical application and without significantly more. The dependent claims do not sufficiently link to a practical application or recite element(s) which constitute significantly more than the abstract ideas identified.
At Pg. 13 of the Reply, Applicant argues that claims are directed to an improvement, similar to McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) (hereinafter, McRO). Examiner respectfully disagrees. In this case, the claims of the instant application fail to recite a specific, unconventional set of rules to automate a process similar to that of McRO.
Even with the new amendments, the claims still recite mental processes performed on a computer control system. The “Federal Circuit has explained, ‘[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.’ Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015).” MPEP 2106.04(a)(2) III. The computer is merely utilized as a tool to perform the mental steps.
Further at Pg. 13 of the Reply, Applicant argues that the “the claim contains an ‘inventive concept’ under Step 2B. The combination of limitations — iterative EEG-based data capture across multiple biofeedback sessions, session-over-session modification of system behavior, and real-time neural-synchrony visualization used to incrementally increase synchrony duration — is not well-understood, routine, or conventional. The limitations of claim 1 therefore amount to significantly more than any alleged abstract idea”. Applicant is arguing the overall “combination of limitations”, but the Examiner would like to clarify that Step 2B is only overcome if an additional element or combination of additional elements is found to be not well-understood, routine, or conventional.
Applicant's remarks and amendments with respect to the rejections under 35 U.S.C. 103 have been fully considered. The rejections are withdrawn in view of the amendment.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“image capture device” in Claims 1-2
“first physiological monitoring device” in Claim 13
“second physiological monitoring device” in Claim 13
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims 1-2 and 7 are objected to because of the following informalities:
Claim 1 recites “wherein the processor” in line 43, but should read “wherein the at least one processor”
Claim 2 recites “instruct the processor” in line 2, but should read “instruct the at least one processor”
Claim 7 recites “instruct the processor” in line 5, but should read “instruct the at least one processor”
Appropriate correction is required.
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 1-2 and 5-22 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the first electrodes" in lines 4-5. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the second electrodes" in line 8. There is insufficient antecedent basis for this limitation in the claim.
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 and 5-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Each of Claims 1-2 and 5-22 has been analyzed to determine whether it is directed to any judicial exceptions.
Step 1
Claims 1-2 and 5-22 recite a system for increasing neural synchrony by using biofeedback. Thus, the claims are directed to a machine, which is one of the statutory categories of invention.
Step 2A, Prong 1
Each of Claims 1-2 and 5-22 recites at least one step or instruction for increasing neural synchrony by using biofeedback, which is grouped as a mental process under the 2019 PEG or a certain method of organizing human activity under the 2019 PEG. Accordingly, each of Claims 1-2 and 5-22 recites an abstract idea.
Specifically, Claim 1 recites:
a first electroencephalogram (EEG) headset including a plurality of first electrodes, wherein the first EEG headset is configured to be worn by a first user, and wherein the first electrodes of the plurality of first electrodes of the first EEG headset are configured to detect neural activity in the first user;
a second EEG headset including a plurality of second electrodes, wherein the second EEG headset is configured to be worn by a second user, and wherein the second electrodes of the plurality of second electrodes of the second EEG headset are configured to detect neural activity in the second user;
at least one image capture device, wherein the at least one image capture device is configured to capture first images of at least one first behavior performed by the first user and second images of at least one second behavior performed by the second user;
at least one display device;
a computer in communication with the first EEG headset, the second EEG headset, the at least one image capture device, and the at least one display device; and
a machine learning model, wherein the machine learning model is iteratively trained on tagged data identifying previously determined occurrences of neural synchrony,
wherein the computer includes at least one processor and at least one memory, wherein the at least one memory is configured to store computer instructions configured to instruct the at least one processor to cause the iteratively trained machine learning model to:
receive a first data set from the first EEG headset, wherein the first data set includes data of the neural activity of the first user;
receive a second data set from the second EEG headset, wherein the second data set includes data of the neural activity of the second user;
compare the first data set with the second data set;
identify an occurrence of neural synchrony between the first user and the second user based on the comparison of the first data set with the second data set, wherein identifying the occurrence of neural synchrony includes determining a probability of neural synchrony occurring between the first user and the second user based on a quantitative score, wherein the quantitative score is compared to a predetermined threshold score to determine the occurrence of neural synchrony between the first user and the second user and the probability of neural synchrony occurring between the first user and the second user;
transmit data of the occurrence of neural synchrony between the first user and the second user, wherein the transmitted data includes the probability of neural synchrony occurring between the first user and the second user;
display a graph of the occurrence of neural synchrony between the first user and the second user on the at least one display device in real-time during at least one biofeedback session such that an increase or decrease in neural synchrony can be visualized by at least one of the first user and the second user during the at least one biofeedback session to increase an amount of time that neural synchrony is maintained between the first user and the second user,
wherein the at least one biofeedback session includes a plurality of biofeedback sessions, wherein the processor incrementally increases the amount of time that neural synchrony is maintained between the first user and the second user by iteratively capturing, during each biofeedback session of the plurality of biofeedback sessions, the first and second data sets, and displaying, in real time, a plurality of graphs of the occurrence of neural synchrony between the first user and the second user,
wherein third and fourth data sets are each captured during each biofeedback session of the plurality of biofeedback sessions, and wherein the third data set is compared with the fourth data set during each biofeedback session of the plurality of biofeedback sessions to determine, by the iteratively trained machine learning model, additional occurrences of neural synchrony between the first user and the second user during the biofeedback sessions of the plurality of biofeedback sessions.
The step of “identify[ing] an occurrence of neural synchrony” in independent Claim 1 can be classified as a mental process (i.e., an observation, judgement, or evaluation) and a mathematical concept (comparison of data sets based on a quantitative score and predetermined threshold score). Neural synchrony was identified through comparison of data, which can be completed through either a mental process and/or mathematical concept, and all the other additional elements that were recited merely performed insignificant extra-solution activity through the forms of data-gathering (receiving) and data-outputting (transmitting and displaying).
Further, dependent Claims 2 and 5-22 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Accordingly, as indicated above, each of the above-identified claims recites an abstract idea.
Step 2A, Prong 2
The above-identified abstract idea in each of independent Claim 1 (and its dependent Claims) is not integrated into a practical application under 2019 PEG because the additional elements (identified above in independent Claim 1), either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use. More specifically, the additional elements of: EEG headsets, image capture device(s), display device(s), computer, processor(s), memory, monitoring device(s), earphone device(s) are generically recited computer elements in independent Claim 1 (and its dependent claims) which do not improve the functioning of a computer, or any other technology or technical field. Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Furthermore, the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. For at least these reasons, the abstract idea identified above in independent Claim 1 (and its dependent claims) is not integrated into a practical application under 2019 PEG.
Moreover, the above-identified abstract idea is not integrated into a practical application under 2019 PEG because the claimed method and system merely implements the above-identified abstract idea (e.g., mental process and certain method of organizing human activity) using rules (e.g., computer instructions) executed by a computer (e.g., “computer” and “processor” as claimed). In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claim 1 (and its dependent claims) is not integrated into a practical application under the 2019 PEG.
Accordingly, independent Claim 1 (and its dependent claims) are each directed to an abstract idea under 2019 PEG.
Step 2B
None of Claims 1-2 and 5-22 include additional elements that are sufficient to amount to significantly more than the abstract idea for at least the following reasons.
These claims require the additional elements of: EEG headsets, image capture device(s), display device(s), computer, processor(s), memory, monitoring device(s), earphone device(s).
The above-identified additional elements are generically claimed computer components which enable the above-identified abstract idea(s) to be conducted by performing the basic functions of automating mental tasks. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Those in the relevant field of art would recognize the above-identified additional elements as being well-understood, routine, and conventional means for data-gathering and computing, as demonstrated by
Applicant’s specification (e.g. paragraphs [0070-0073]) which discloses that the processor(s) comprise generic computer components that are configured to perform the generic computer functions (e.g. comparing and identifying) that are well-understood, routine, and conventional activities previously known to the pertinent industry.
Applicant’s Background in the specification; and
The non-patent literature of record in the application.
Accordingly, in light of Applicant’s specification, the claimed term computer and processor is reasonably construed as a generic computing device. Like SAP America vs Investpic, LLC (Federal Circuit 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available computers, with their already available basic functions, to use as tools in executing the claimed process.
Furthermore, Applicant’s specification does not describe any special programming or algorithms required for the computer and processor. This lack of disclosure is acceptable under 35 U.S.C. §112(a) since this hardware performs non-specialized functions known by those of ordinary skill in the computer arts. By omitting any specialized programming or algorithms, Applicant's specification essentially admits that this hardware is conventional and performs well understood, routine and conventional activities in the computer industry or arts. In other words, Applicant’s specification demonstrates the well-understood, routine, conventional nature of the above-identified additional elements because it describes these additional elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a) (see Berkheimer memo from April 19, 2018, (III)(A)(1) on page 3). Adding hardware that performs “‘well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible (TLI Communications).
The recitation of the above-identified additional limitations in Claims 1-2 and 5-22 amounts to mere instructions to implement the abstract idea on a computer. Simply using a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
A claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
For at least the above reasons, the system of Claims 1-2 and 5-22 are directed to applying an abstract idea as identified above on a general purpose computer without (i) improving the performance of the computer itself, or (ii) providing a technical solution to a problem in a technical field. None of Claims 1-2 and 5-22 provides meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself.
Taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claim 1 (and its dependent claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment. That is, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity. When viewed as a combination, these above-identified additional elements simply instruct the practitioner to implement the claimed functions with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. When viewed as whole, the above-identified additional elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Thus, Claims 1-2 and 5-22 merely apply an abstract idea to a computer and do not (i) improve the performance of the computer itself (as in Bascom and Enfish), or (ii) provide a technical solution to a problem in a technical field (as in DDR).
Therefore, none of the Claims 1-2 and 5-22 amounts to significantly more than the abstract idea itself. Accordingly, Claims 1-2 and 5-22 are not patent eligible and rejected under 35 U.S.C. 101.
Conclusion
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/CHANEL J JHIN/Examiner, Art Unit 3791