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 .
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.
Response to Amendment
This is a response to Applicant’s amendment filed on 15 July 2026, wherein:
Claims 1, 4-9, and 11-13 are amended.
Claims 2, 3, and 10 are canceled.
Claim 14 is new.
Claims 1, 4-9, and 11-14 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) filed 24 March 2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. The copy that was filed for the foreign patent document includes an abstract, an unidentified drawing, and a series of blank pages. Thus, it is incomplete and illegible.
Specification
The disclosure is objected to because of the following informalities:
The specification is generally narrative and indefinite. It appears to be a literal translation into English from a foreign document and is replete with grammatical and idiomatic errors.
The amendments to the specification are to misnumbered paragraphs, except for para. 3 and 4.
Appropriate correction is required.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Double Patenting
Co-pending US Applications 19/087,111 and 19/085,147 claim closely related subject matter. Applicant should be cognizant of the claims in these co-pending applications when making amendments to avoid future double patenting rejections. It is noted that Applicant has amended the instant claims and the claims of US Application 19/085,147 to be more similar to each other.
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.
Claims 1, 4-9, and 11-14 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.
Regarding claims 1, 12, and 13, it is unclear how “strategy” and “plan” are claimed to be separate elements. One of ordinary skill in the art would interpret “strategy” and “plan” to be synonymous with each other. The disclosure does not aid understanding as it insufficiently describes each of these elements. For instance, the most disclosure regarding a “strategy” is found in para. 84 which recites that “a strategy may be selected from strategies that are stored beforehand in association with the final goal” and that a strategy depends “on the type of activity and the ability to be improved for achieving the final goal.” Thus, the disclosure is silent regarding any metes and bounds for what constitutes a “strategy”. Similarly, the most disclosure regarding a “plan” is found in para. 42 which recites that a “plan may include details about strengthening specific body parts and improvement points, based on skills and abilities expected at each stage.” Thus, one of ordinary skill in the art would not be reasonably apprised the scope of the patent protection sought. For the purposes of compact prosecution, “strategy” and “plan” are construed as the same element. Dependent claims 4-9, 11, and 14 inherit the deficiencies of their respective parent claims, and are thus rejected under the same rationale.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 4-9, and 11-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1-7, 12, and 13, the disclosure fails to provide sufficient written description for “outputting, based on the target time and information of persons whose initial states were within a reference range from an initial state of the user, a plurality of possible final goals including (i) information on selection tendencies of the persons and (ii) information on whether the persons achieved the possible final goals;… setting a strategy that includes types of activities for achieving the final goal; setting an interim goal between the final goal and the initial state of the user; setting a plan that includes individual activities for achieving the interim goal based on the strategy” in claims 1, 12, and 13, “wherein the setting the strategy comprises: outputting a plurality of possible strategies that are stored beforehand in association with the final goal” in claim 4, “setting multiple interim goals, wherein the interim goal is one of the multiple interim goals” in claim 5, “determining that the interim goal has been met; setting another interim goal between the interim goal and the final goal; and setting another plan for achieving the other interim goal based on the strategy” in claim 6, “outputting an explanation of an intention and effectiveness of the plan for achieving the other interim goal” in claim 7, and “wherein a state of another user is judged to be within the reference range from the state of the user in a case where a distance between a combination of parameters indicating the state of the user and a combination of parameters indicating the state of the other user is less than or equal to a reference value, the parameters being obtained from a measurement device” to show one of ordinary skill in the art that Applicant had possession of the claimed invention. The claims lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See MPEP 2161.01(I). The specification merely recites that a non-descript machine learning model may be used and that the functions may be performed in results-based language, but is silent regarding any meaningful description of the steps, calculations, or algorithms necessary for a computer to perform the claimed functionality. See, for example, at least para. 42 and 71 of the specification. In short, the disclosure is silent regarding any substantive description for a computer to perform the claimed setting functions beyond merely reciting that they are performed. Dependent claims 4-9, 11, and 14 inherit the deficiencies of their respective parent claims, and are thus rejected under the same rationale.
Regarding claim 8, the originally filed disclosure is silent regarding “determining an estimated state of the user in the activity;… and adjusting the plan for the achieving the interim goal, based on a difference between the estimated state of the user in the activity and the current state of the user in the activity”. There are two statutory provisions that prohibit the introduction of new matter. The first provision is 35 USC 132, which provides that no amendment shall introduce new matter into the disclosure of the invention. If new matter is added to the claims, the examiner should reject the claims under 35 USC 112(a) – written description requirement. See MPEP 2163.06. The claims lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See MPEP 2161.01(I). However, while the specification recites language that can be construed as “a current state of the user in the activity” (see para. 54 which recites “[t]he controller 71 obtains the current skills and abilities”) the disclosure is silent regarding “an estimated state of the user in the activity”, let alone any steps for determining an estimated state of the user in the activity. Subsequently, the disclosure is also silent regarding calculating a difference between the estimated state and the current state and then adjusting the plan based on the difference. The closest language is found in para. 58 of the specification which is distinct from the currently amended claim language and directed to the originally filed claim 8 regarding an estimated change in the state of the user in the activity and adjusting the plan based on a difference between the estimated change and the actual change. Thus, these limitations are new matter.
Regarding claim 9, the disclosure fails to provide sufficient written description for “determining an estimated indicator of the activity for a current state of the user in the activity; determining a current indicator of the activity for a current state of the user; and responsive to determining that the current indicator of the activity is lower than the estimated indicator of the activity, outputting advice for improving the indicator” to show one of ordinary skill in the art that Applicant had possession of the claimed invention. The claims lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See MPEP 2161.01(I). The specification merely recites similar language as the claim without providing any meaningful description of the steps, calculations, or algorithms necessary for a computer to perform the claimed functionality. See, for example, at least para. 15 and 89 of the specification. In short, the disclosure is silent regarding any substantive description for a computer to perform the claimed determining references of indicators and linking of advice functions beyond merely reciting that they are performed.
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, 4-9, and 11-14 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 including additional elements that are sufficient to amount to significantly more than the judicial exception itself.
Step 1
The instant claims are directed to a method and products which fall under at least one of the four statutory categories (STEP 1: YES).
Step 2A, Prong 2
Independent claim 1 recites:
A computer-implemented method, comprising:
receiving a target time for achieving a final goal for an activity of a user;
outputting, based on the target time and information of persons whose initial states were within a reference range from an initial state of the user, a plurality of possible final goals including (i) information on selection tendencies of the persons and (ii) information on whether the persons achieved the possible final goals;
receiving an indication of a selection of the final goal from the possible final goals by the setting a strategy that includes types of activities for achieving the final goal;
setting an interim goal between the final goal and the initial state of the user;
setting a plan that includes individual activities for achieving the interim goal based on the strategy; and
outputting an instruction regarding the activity according to the plan for the interim goal.
Independent claim 12 recites:
A device comprising:
a processor configured to:
receive a target time for achieving a final goal for an activity of a user;
output, based on the target time and information of persons whose initial states were within a reference range from an initial state of the user, a plurality of possible final goals including (i) information on selection tendencies of the persons and (ii) information on whether the persons achieved the possible final goals;
receive an indication of a selection of the final goal from the possible final goals by the user;
set a strategy that includes types of activities for achieving the final goal;
set an interim goal between the final goal and the initial state of the user;
set a plan that includes individual activities for achieving the interim goal based on the strategy; and
output an instruction regarding the activity according to the plan for the interim goal.
Independent claim 13:
A non-transitory computer-readable storage medium storing instructions that cause a processor to:
receive a target time for achieving a final goal for an activity of a user;
output, based on the target time and information of persons whose initial states were within a reference range from an initial state of the user, a plurality of possible final goals including (i) information on selection tendencies of the persons and (ii) information on whether the persons achieved the possible final goals;
receive an indication of a selection of the final goal from the possible final goals by the user;
set a strategy that includes types of activities for achieving the final goal;
set an interim goal between the final goal and the initial state of the user;
set a plan that includes individual activities for achieving the interim goal based on the strategy; and
output an instruction regarding the activity according to the plan for the interim goal.
All of the foregoing underlined elements identified above amount to the abstract idea grouping of a certain method of organizing human activity because they amount to managing personal behavior or interactions between people (including social activities, teaching, and following rules or instructions) by merely collecting information, analyzing the collected information, and outputting the results of the collection and analysis in the context of goal-setting and progress tracking. These elements are also interpreted as a series of steps that could reasonably be performed by mental processes with the aid of pen and paper because the claims, under their broadest reasonable interpretation, cover performance of the limitations in the mind (including observation, evaluation, judgment, opinion) but for the recitation of generic computer components. See MPEP 2106.04(a)(2)(III)(C) - A Claim That Requires a Computer May Still Recite a Mental Process. Even if humans would use a physical aid to help them complete the recited steps, the use of such physical aid does not negate the mental nature of these limitations.
The dependent claims amount to merely further defining the judicial exception.
Therefore, the claims recite a judicial exception. (STEP 2A, PRONG 1: YES).
Step 2A, Prong 2
This judicial exception is not integrated into a practical application because the independent and dependent claims do not include additional elements that are sufficient to integrate the exception into a practical application under the considerations set forth in MPEP 2106.04(d). The elements of the claims above that are not underlined constitute additional elements.
The following additional elements, both individually and as a whole, merely generally link the judicial exception to a particular technological environment or field of use: reciting the method to be “computer-implemented” (claim 1), a device comprising a processor (claim 12), a non-transitory computer-readable storage medium storing instructions to cause a processor to perform the method (claim 13), and a measurement device (claim 14). This is evidenced by the manner in which these elements are disclosed in the drawings and the instant specification. For example, Fig. 1-3 merely illustrate these elements as non-descript black boxes or stock images, while para. 7-37 merely provide stock descriptions of generic computer hardware and software components in any generic arrangement and illustrate that the claimed invention is merely using a software application to cause a computer to implement the judicial exception. Thus, the computer components are merely an attempt to link the abstract idea to a particular technological environment, but do not result in an improvement to the technology or computer functions employed. The claims are silent regarding any specific rules with specific characteristics that improve the functionality of the computer system. For instance, the measurement device, as claimed and organized, merely adds insignificant extra-solution activity to the judicial exception (e.g., mere extra-solution data gathering in conjunction with a law of nature or abstract idea). None of the hardware offer a meaningful limitation beyond generally linking the performance of the steps to a particular technological environment, that is, implementation via computers. Again, this is evidenced by the manner in which these elements are disclosed in the drawings and specification as identified above. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of the additional elements does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014). Additionally, the claims do not apply or use a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition nor do they apply or use a judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. In particular, the claims, and disclosure as a whole, are silent regarding any treatment for any disease or medical condition. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. (STEP 2A, PRONG 2: YES).
Step 2B
The independent and dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception under the considerations set forth in MPEP 2106.05. As identified in Step 2A, Prong 2, above, the claimed system and the process it performs does not require the use of a particular machine, nor does it result in the transformation of an article. Although the claims recite computer components, identified above, for performing at least some of the recited functions, these elements are recited at a high level of generality in a conventional arrangement for performing their basic computer functions (i.e., receiving, processing, outputting data). This is evidenced by the manner in which these elements are disclosed in the instant specification. For example, Fig. 1-3 merely illustrate these elements as non-descript black boxes or stock images, while para. 7-37 merely provide stock descriptions of generic computer hardware and software components in any generic arrangement and illustrate that the claimed invention is focused on a software application that merely causes a computer to implement the judicial exception. Thus, the computer components are merely an attempt to link the abstract idea to a particular technological environment, but do not result in an improvement to the technology or computer functions employed. The claims do not recite any specific rules with specific characteristics that improve the functionality of the computer system. For instance, the measurement device, as claimed and organized, merely adds insignificant extra-solution activity to the judicial exception (e.g., mere extra-solution data gathering in conjunction with a law of nature or abstract idea). None of the hardware offer a meaningful limitation beyond generally linking the performance of the steps to a particular technological environment, that is, implementation via computers. Again, this is evidenced by the manner in which these elements are disclosed in the instant specification as identified above. Viewed as a whole, these additional claim elements do not provide meaningful limitation 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 of itself (STEP 2B: NO).
Therefore, the claims are rejected under 35 USC 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4-9, and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cuthbert (US 2013/0216989).
Regarding claims 1, 12, and 13, Cuthbert teaches a computer-method (claim 1), a device comprising a processor (claim 12), and a non-transitory computer-readable storage medium storing instructions that causes a processor (claim 13) to:
receive a target time for achieving a final goal for an activity of a user (Cuthbert, para. 74, “a subject and/or an authorized user can access… a calendar platform to determine objectives, monitor progress… For example, a subject seeking quitting consuming tobacco products can set a date to quit in the calendar platform”);
output, based on the target time and information of persons whose initial states were within a reference range from an initial state of the user, a plurality of possible final goals including (i) information on selection tendencies of the persons and (ii) information on whether the persons achieved the possible final goals (Cuthbert, para. 43, “The invention can compare the success of a subject, or a plurality of subjects, in achieving such motivational goals. The invention can auto-populate a recommendation towards achieving a goal based on the number of subject's that have successfully applied the recommendation towards achieving the goal.” Para. 93, “The system can supply the subject with recommended milestones, and can populate the calendar platform with a timeline for milestone achievement.” Para. 111, “Data sources can be:…f) a plurality of other users 101d, including subjects themselves 105.”);
receive an indication of a selection of the final goal from the possible final goals by the user (Cuthbert, para. 43, “set behavior-changing objectives in the objective engine seeking, for example, a positive change in a sedentary lifestyle. The subject can acknowledge the behavior and set behavioral changing objectives in the objective engine, seeking, for example, a positive change in a sedentary lifestyle.”);
set a strategy that includes types of activities for achieving the final goal (Cuthbert, para. 43, “The system of the invention also can, for example, auto-populate personalized behavior-changing objectives within the objective engine, personalizing a regimen that supports a change in the subject's sedentary life style.”);
set an interim goal between the final goal and the initial state of the user (Cuthbert, para. 63, “Personalized objectives can comprise a plurality of segments, each segment represented as objective milestones, objective goals, daily objectives, partial objectives, monthly objectives, and yearly objectives.”);
set a plan that includes individual activities for achieving the interim goal based on the strategy (Cuthbert, para. 63, “Personalized objectives can comprise a plurality of segments, each segment represented as objective milestones, objective goals, daily objectives, partial objectives, monthly objectives, and yearly objectives.”); and
output an instruction regarding the activity according to the plan for the interim goal (Cuthbert, para. 65, “provide personalized health education for a subject based on a subject's objectives, provide personalized reminders to a subject based on a subject's objectives, and provide one or more points redeemable for one or more reward credits incentivizing a subject's achieving or making progress towards a target objective.”).
Regarding claim 4, Cuthbert teaches the computer-implemented method according to claim 1, wherein the setting the strategy comprises:
outputting a plurality of possible strategies that are stored beforehand in association with the final goal (Cuthbert, para. 48, “a system of the invention searches a database comprising information for a recommendation for improving the behavior.”); and
receiving an indication of a selection of the strategy from the possible strategies by the user (Cuthbert, para. 48, “Recommendations can be modified, accepted, or rejected by a user.” Para. 103, “The messaging and the calendar components of the system of the invention allow users to enter objectives into an objective engine and have them available for selection by the subject.”).
Regarding claim 5, Cuthbert teaches the computer-implemented method according to claim 1, further comprising setting multiple interim goals, wherein the interim goal is one of the multiple interim goals (Cuthbert, para. 63, “Personalized objectives can comprise a plurality of segments, each segment represented as objective milestones, objective goals, daily objectives, partial objectives, monthly objectives, and yearly objectives.”).
Regarding claim 6, Cuthbert teaches the computer-implemented method according to claim 1, further comprising:
determining that the interim goal has been met (Cuthbert, para. 74, “monitor progress” Para. 65, “provide one or more points redeemable for one or more reward credits incentivizing a subject's achieving or making progress towards a target objective.”);
setting another interim goal between the interim goal and the final goal (Cuthbert, para. 63, “Personalized objectives can comprise a plurality of segments, each segment represented as objective milestones, objective goals, daily objectives, partial objectives, monthly objectives, and yearly objectives.”); and
setting another plan for achieving the other interim goal based on the strategy (Cuthbert, para. 93, “The system can supply the subject with recommended milestones, and can populate the calendar platform with a timeline for milestone achievement.” Para. 94, “To support lifestyle changes, the system of the invention can provide a comprehensible and explicit course of action for achieving an objective in the form of recommendations. The system of the invention produces recommendations that can constructively outline a strategy for achieving an objective(s), effectively speaking to challenges in pursuing/achieving objectives.”).
Regarding claim 7, Cuthbert teaches the computer-implemented method according to claim 6, further comprising outputting an explanation of an intention and effectiveness of the plan for achieving the other interim goal (Cuthbert, para. 63, “Personalized objectives can comprise a plurality of segments, each segment represented as objective milestones, objective goals, daily objectives, partial objectives, monthly objectives, and yearly objectives.” Para. 65, “analyze the health information of a subject based on a subject's objectives, provide personalized health education for a subject based on a subject's objectives, provide personalized reminders to a subject based on a subject's objectives, and provide one or more points redeemable for one or more reward credits incentivizing a subject's achieving or making progress towards a target objective. The present invention links personalized health education with reminders, rewards, and incentives that can motivate subject behavior, and increase adherence and compliance.” Para. 74, “A therapist can, for example, denote to send subjects messages containing guidelines towards objective achievement once or twice every day, week, or month. The frequency at which messages are sent to a subject can also be adjusted by the subject. A calendar platform within the objective engine can be configured by a user or a subject from a plurality of available systems for objective schedule monitoring and tracking”).
Regarding claim 8, Cuthbert teaches the computer-implemented method according to claim 1, further comprising:
determining an estimated state of the user in the activity (Cuthbert, para. 63, “Personalized objectives can comprise a plurality of segments, each segment represented as objective milestones, objective goals, daily objectives, partial objectives, monthly objectives, and yearly objectives.” Since the disclosure is silent regarding an “estimated state of the user in the activity” and particularly silent regarding what it constitutes, an “estimated state of the user in the activity” is construed in light of the adjusting limitation below to be an interim goal in progress towards another interim goal as a means to measure progress towards the interim goal. Thus, Cuthbert teaches this limitation as identified above.);
determining a current state of the user in the activity (Cuthbert, para. 56, “the system of the invention can use the frequency, duration, seriousness, and basis of current and past behaviors”; para. 74, “monitor progress”); and
adjusting the plan for the achieving the interim goal based on a difference between the estimated state of the user in the activity and the current state of the user in the activity (Cuthbert, para. 43, “The invention can auto-populate, and the invention can auto-remove, a goal based on a subject's behavior.” Para. 56, “the system of the invention can use the frequency, duration, seriousness, and basis of current and past behaviors for behavior to identify antecedents, forecast behavior-changing and function-changing objective consequences, and provide behavior-changing and function-changing objectives.” Para. 64, “the occurrence of a behavior of a subject can be used to adjust personalized objectives. For example, a subject can seek to comply with qualitative spiritual objectives, such as complying with the values and doctrines of a particular faith, and/or a subject can seek to comply with quantitative spiritual objectives, such as participating in a defined number of religious events in a given month.”).
Regarding claim 9, Cuthbert teaches the computer-implemented method according to claim 1, further comprising:
determining an estimated indicator of the activity for a current state of the user in the activity (Cuthbert, para. 18, “The computer system can outline a plan for behavioral change, for example, by populating progress towards objectives within the calendar platform, and reminding the subject hourly, daily, or weekly of achievements, objectives, and progress.” The objectives are the estimated indicators of the activity.);
determining a current indicator of the activity for a current state of the user (Cuthbert implies this with at least para. 18, “The computer system can outline a plan for behavioral change, for example, by populating progress towards objectives within the calendar platform, and reminding the subject hourly, daily, or weekly of achievements, objectives, and progress.”); and
responsive to determining that the current indicator of the activity is lower than the estimated indicator of the activity, outputting advice for improving the indicator (Cuthbert, para. 65, “analyze the health information of a subject based on a subject's objectives, provide personalized health education for a subject based on a subject's objectives, provide personalized reminders to a subject based on a subject's objectives, and provide one or more points redeemable for one or more reward credits incentivizing a subject's achieving or making progress towards a target objective. The present invention links personalized health education with reminders, rewards, and incentives that can motivate subject behavior, and increase adherence and compliance.” Para. 164, “Upon sensing an increase in the levels of the stress associated cytokine, and differentiating amongst personalized patterns of cytokine, GSK, and positional signals, the system populates the calendar platform with pop-up reminders, such as reminders to engage in stress reducing activities. The recommendations provided by the system to the subject towards the subject's goal of coping and reducing stress help deliver a treatment intervention that is personalized to the subject's unique response to a particular pattern of stress or agitation (biomarker phenotype or subtype).”).
Regarding claim 11, Cuthbert teaches the computer-implemented method according to claim 4,
wherein the outputting the possible strategies comprises outputting (i) information on selection tendencies of persons who previously performed the activity and whose initial states were within the reference range from the initial state of the user and (ii) information on whether the persons achieved the final goal (Cuthbert, para. 43, “The invention can compare the success of a subject, or a plurality of subjects, in achieving such motivational goals. The invention can auto-populate a recommendation towards achieving a goal based on the number of subject's that have successfully applied the recommendation towards achieving the goal.” Para. 164, “Upon sensing an increase in the levels of the stress associated cytokine, and differentiating amongst personalized patterns of cytokine, GSK, and positional signals, the system populates the calendar platform with pop-up reminders, such as reminders to engage in stress reducing activities. The recommendations provided by the system to the subject towards the subject's goal of coping and reducing stress help deliver a treatment intervention that is personalized to the subject's unique response to a particular pattern of stress or agitation (biomarker phenotype or subtype).”).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Cuthbert (US 2013/0216989) as applied to claim 1 above, in view of Collins et al. (WO 00/52604, hereinafter referred to as Collins).
Regarding claim 14, Cuthbert teaches the computer-implemented method according to claim 1, the parameters being obtained from a measurement device (Cuthbert, para. 29-44 describe this including the use of a multitude of measurement devices.).
Cuthbert does not explicitly teach wherein a state of another user is judged to be within the reference range from the state of the user in a case where a distance between a combination of parameters indicating the state of the user and a combination of parameters indicating the state of the other user is less than or equal to a reference value, the parameters being obtained from a measurement device.
However, in an analogous art, Collins teaches wherein a state of another user is judged to be within the reference range from the state of the user in a case where a distance between a combination of parameters indicating the state of the user and a combination of parameters indicating the state of the other user is less than or equal to a reference value, the parameters being obtained from a measurement device (Collins, pg. 19, lines 1-28, “the transformed entries of database 39a are further processed to be clustered into a number of prototypes (i.e., classes), step 61. More specifically, the transformed entries may form a number of clusters. Each of these clusters may represent common characteristics of a group of users and/or a group of health educated materials. Cluster analysis is a class of techniques in which like members are grouped together in classes to form composite prototypes. As database 39a grows in size, clustering is preferred both to reduce the time of the matching process and to improve the reliability of the health regimens prescribed… The user profile is transformed using the principal components (e.g., multiplied with the selected eigenvectors; step 63). In step 65, the transformed user profile is matched against the prototypes. The matching is preferably accomplished using a well-known form of pattern recognition analysis known as discussed in K-Nearest Neighbor as referenced in Dasrathy, B.V., Nearest Neighbor (NN) Norms: NN Pattern Classification Techniques, IEEE, 1991 and Tou, J.T. and Gonzalez, R.C., Pattern Recognition Principles, Addison-Wesley, 1981. K-Nearest Neighbor is a classification method in which the classification of a pattern depends on the class assignment of its K nearest neighbors. Nearness is preferably defined in terms of Euclidean distance, but other measures such as cross-correlation (shape of profile function) or Mahalanobis distance (eliminates correlation effects) may also be used. A user profile may not fit exactly with any of the prototypes. Often, a user profile is located between prototypes in the sense that it could have been classified as belonging to one prototype cluster as well as to another. To allow for this ‘multiple matching’ requirement, a modified version of K-Nearest Neighbor pattern recognition called Fuzzy K-Nearest Neighbor (or Fuzzy KNN for short) is provided. The fuzzy classification preferably takes the form of drawing from multiple entries. A discussion on Fuzzy K-Nearest neighbor is provided in Keller, J.M. et. al., ‘A Fuzzy K-Nearest Neighbor Algorithm’, IEEE Trans. Systems, Man and Cybernetics, SMC-15, 4, 580-585, 1985.”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use the pattern recognition analysis identified in Collins in Cuthbert to judge a state of another user to be within the reference range from the state of the user where a distance between a combination of parameters indicating the state of the user and a combination of parameters indicating the state of the other user is less than or equal to a reference value because Collins identifies that such analysis is well-known for such a use. See Collins at pg. 19, lines 12-14, “the transformed user profile is matched against the prototypes. The matching is preferably accomplished using a well-known form of pattern recognition analysis known as discussed in K-Nearest Neighbor”. Given that Collins is identifying that such analysis was well-known at least 13 years prior to Cuthbert, one of ordinary skill in the art recognizes that such analysis techniques would be readily applied to the personalized behavior modification program in Cuthbert to yield predictable results before the effective filing date of the claimed invention.
Response to Arguments
Applicant’s arguments with respect to the specification objections have been fully considered but they are not persuasive. The amendments to the specification, except for para. 3 and 4, are to misnumbered paragraphs. Applicant is reminded that the lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Applicant's arguments with respect to the IDS filed 24 March 2025 have been fully considered but they are not persuasive. Applicant asserts that a copy of Japanese Patent Application No. 2005-108025 A was submitted with the pending amendments.
Examiner is not persuaded. No copy of any foreign patent application document was filed with the pending amendments.
Applicant's arguments with respect to the rejection of the claims under 35 USC 101 have been fully considered but they are not persuasive. Applicant asserts that the pending claims do not recite an abstract idea, but rather focus on a specific technological implementation. Here, Applicant asserts the claims recite a structured, hierarchical control framework that dynamically links user initial state, final goal, intermediate goal, and strategy-constrained plan; requires progressive decomposition of goals into machine-defined intermediate states; and controls instructions based on user state relative to interim goals. Applicant further asserts that such limitations are not a recitation of “goal-setting” or “progress tracking”, but a recitation of a specific computational architecture for adaptive guidance generation that requires the interim goal is positioned between the initial state and final goal and instructions that are output based on the plan.
Examiner is not persuaded. Applicant’s assertions act as further evidence that the claims directly amount to managing personal behavior or interactions between people in the context of goal-setting and progress tracking. By definition, an interim goal is positioned between the initial state and final goal in the context of goal-setting and progress tracking, and instructions are output based on the plan. These are features that are wholly encompassed in the judicial exception, not any technological advance, as any goal-setting and progress tracking process involves such features. The mere use of a machine to define intermediate states is only an attempt to link the judicial exception to a technological environment, that is implementation with a computer.
In pg. 15, Applicant asserts that the recited operations cannot be practically performed in the human mind because they require continuous state tracking of a user, integration of multi-level plan generation (final + interim), and real-time or iterative instruction generation tied to a plan. Applicant further asserts that these operations rely on sensor-derived activity data, database-driven comparisons, and machine learning and statistical processing.
Examiner is not persuaded. Continuous state tracking of a user, integration of multi-level plan generation (final + interim), and real-time or iterative instruction generation tied to a plan are wholly encompassed in the judicial exception as illustrated in the rejection above. Any asserted use of a sensor is merely adding insignificant extra-solution activity to the judicial exception (e.g., mere extra-solution data gathering in conjunction with a law of nature or abstract idea). It is further noted that “statistical processing” is well within the capabilities of the human mind, and that even if humans would use a physical aid to help them complete the recited steps, the use of such physical aid does not negate the mental nature of these limitations. See MPEP 2106.04(a)(2)(III)(C) - A Claim That Requires a Computer May Still Recite a Mental Process. The mere use of machine learning as a tool amounts to an attempt to link the judicial exception to a computerized environment, but does not provide any improvements to the technology or computer functions employed. This further evidences that the judicial exception is not implemented with a particular machine or manufacture, and thus is not providing any technical solution to a technical problem particularly when the mere use of machine learning are common features for data analysis and content generation before the effective filing date of the claimed invention. See the cited prior art, Collins, which makes this explicit.
In pg. 15-16, under Step 2A, Prong Two, Applicant asserts the pending claims provide an improvement to computerized user guidance systems. Here, Applicant asserts that the pending claims define a specific improvement over conventional systems that merely output advice by introducing hierarchical goal decomposition (final to interim), strategy-based plan derivation, and state-dependent instruction output tied to interim goals. Applicant further asserts that this is analogous to the fact pattern in McRO and the fact pattern in Core Wireless.
Examiner is not persuaded. Applicants assertions are a misrepresentation of the art. Hierarchical goal decomposition (final to interim), strategy-based plan derivation, and state-dependent instruction output tied to interim goals are conventional features of behavior-modification programs between a parent/therapist/counselor/life coach/advisor/etc. and a child/patient/counselee/subject/advisee/etc. Regardless, as illustrated in the rejection above, these elements are wholly encompassed in the judicial exception. At best, they are merely an improvement within the abstract idea. See pg. 2-3 in SAP America Inc. v. lnvestpic, LLC (890 F.3d 1016, 126 USPQ2d 1638 (Fed. Cir. 2018) which proffered “[w]e may assume that the techniques claimed are groundbreaking, innovative, or even brilliant, but that is not enough for eligibility. Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. The claims here are ineligible because their innovation is an innovation in ineligible subject matter. Their subject is nothing but a series of mathematical calculations based on selected information and the presentation of the results of those calculations.” Furthermore, the assertions of similarity to McRO and to Core Wireless are conclusory statements made without substantive support, and are not persuasive.
Applicant then asserts that claim 1 imposes meaningful technological constraints, asserting that such constraints are the two-stage setting operation, requiring that interim goals are intermediate relative to initial state, and output being based on the interim goal plan and current user state. Applicant also asserts that the dependent claims further reinforce the practical application by requiring goal selection based on target time constraints, use of historical user data distributions, adaptive updating of goals and plans, plan adjustment based on deviation between expected and actual progress, and threshold-based feedback using indicator comparisons.
Examiner is not persuaded. Each of these elements, both individually and as a whole, are wholly encompassed in the judicial exception and are absent of any technological features, let alone provide any technological constraint. Just as above, they are features of conventional behavior-modification programs.
In pg. 17, under Step 2B, Applicant asserts that the claims recite an inventive concept. Here, Applicant asserts that the claims include a non-conventional combination of final goal and strategy determination, structured derivation of interim goals positioned relative to initial state, plan generation tied to strategy, and output instructions based on both plan and real-time user state.
Examiner is not persuaded. This is merely a conclusory statement made without substantive support, and is not persuasive. In contrast, each of the features, both individually and as a whole, are illustrated in the rejection to be wholly encompassed in the judicial exception. Contrary to Applicant’s assertions, one only needs to look to the prior art of record to understand that conventional systems “enforce hierarchical goal positioning constraints and dynamically link interim plans to real-time output control.”
Applicant also asserts that claim 8 introduces feedback-based plan adjustment using differences between estimated user state and actual user state. Here, Applicant asserts that this creates a closed-loop control system which is a hallmark of technological improvement.
Examiner is not persuaded. At least as illustrated by the prior art, this is not an improvement, let alone a “technological” improvement. This is a conventional feature of behavior-modification programs between a parent/therapist/counselor/life coach/advisor/etc. and a child/patient/counselee/subject/advisee/etc.
In pg. 17-18, Applicant asserts there is a lack of preemption.
Examiner is not persuaded. Regarding preemption, Examiner reminds Applicant that the Office provides information by way MPEP 2106.04(I). The current analysis as set forth in Steps 2A and 2B of the Mayo Test will be used, since it already incorporates many aspects of preemption at a level that is consistent with the case law precedent. The Supreme Court has described the concern driving the judicial exceptions as preemption, however, the courts do not use preemption as a stand‐alone test for eligibility. Instead, questions of preemption are inherent in the two‐part framework from Alice Corp. and Mayo (incorporated as Steps 2A and 2B), and are resolved by using this framework to distinguish between preemptive claims, and “those that integrate the building blocks into something more…the latter pose no comparable risk of preemption, and therefore remain eligible”. It should be kept in mind, however, that while a preemptive claim may be ineligible, the absence of complete preemption does not guarantee that a claim is eligible. Use of a streamlined analysis is available for claims that “clearly do not seek to tie up any judicial exception such that others cannot practice it.” The use of “tie up” refers to the results of Steps 2A and 2B, and is not meant to imply that the streamlined analysis is either a preemption test or a means of avoiding the results that would occur if a claim were to undergo the full eligibility analysis. In fact, the results of the streamlined analysis will always be the same as the full analysis, in that a claim that qualifies as eligible after Step 2A or Step 2B of the full analysis would also be eligible if the streamlined analysis were applied to that claim. Since the claimed invention is not eligible under Step 2A or 2B of the Mayo Test, this argument is not persuasive.
Applicant's arguments with respect to the rejections of the claims under 35 USC 112(a) have been fully considered but they are not persuasive. In pg. 21-22, Applicant asserts that the analysis improperly treats written description as requiring disclosure of source code, pseudocode, or a particularized software algorithm for every claimed computer-implemented function.
Examiner is not persuaded. The rejections explicitly point to and follow MPEP 2161.01(I) which provides the guidance regarding satisfying written description under 35 USC 112(a) for computer-implemented functions.
Applicant then asserts that the specification describes the claimed goal-setting framework, the relationship between final goals, strategies, initial state, interim goals, and plans, and the manner in which instructions or advice are generated and updated within that framework at para. 35, 50, 54, 72, 80, 81, 90, 93, and 120.
Examiner is not persuaded. The disclose, and particularly Applicant’s asserted paragraphs of the specification, are silent regarding any substantive description for a computer performing the claim limitations rejected under 35 USC 112(a). It is noted that the filed specification does not include a para. 120. The last paragraph is para. 101. For the purposes of compact prosecution, Applicant’s asserted paragraph numbers are construed as paragraph numbers in the published specification.
In pg. 22, Applicant asserts that the specification expressly discloses determination of a practice plan based on a user’s target goal and target data in para. 50; expression of the final goal in terms of desired performance in para. 54; determination of the next interim goal based on current skills, abilities, and the final goal, followed by determination of a corresponding plan according to the set method in para. 72; output of practice content, objectives, and advice according to the plan and the user's condition in para. 80 and 81; presentation of information derived from similar users, including selection tendencies and achievement statuses, to assist in goal or method selection in para. 90; display of achievement rates and correlations relevant to practice content in para. 93; and changing or adjusting plans and schedules according to the user's actual improvement rate in para. 120.
Examiner is not persuaded. The claims are silent regarding determination of a practice plan. Regardless, para. 50 of the published specification merely recites that a practice plan is determined in results-based language without any meaningful description of the determining function. Similarly, para. 72 of the published specification merely recites determining the next interim goal and determining a corresponding plan in results-based language without any meaningful description of the determining function. Regarding para. 80 and 93 of the published specification, it is noted that mere outputting/displaying is not rejected, but rather determining the information to be output/displayed. It is further noted the claims are silent regarding displaying achievement rates and correlations relevant to practice content. Continuing, para. 120 of the published specification merely recites that the plans and schedules may be changed or adjusted without any description of how.
Applicant's arguments with respect to the rejections of the claims under 35 USC 112(b) have been fully considered but they are not persuasive. In pg. 23-25, Applicant asserts that the claims have been amended to overcome the rejections.
Examiner is not persuaded. While the majority of the rejections under 35 USC 112(b) have either been obviated or rendered moot by claim amendments or cancelations, the rejection of independent claims 1, 12, and 13 regarding “strategy” and “plan” remains.
Applicant's arguments with respect to the rejections of the claims under 35 USC 102 have been fully considered but they are not persuasive. In pg. 26-27, Applicant asserts that Cuthbert does not teach the amendments to independent claims 1, 12, and 13 and that Cuthbert describes recommending behavior-changing actions, reminders, and support tools directed generally toward an objective.
Examiner is not persuaded. Not only does Applicant misrepresent Cuthbert, Applicant is directed to the rejections above which have been updated to address the amendments to the claims.
Applicant then asserts that dependent claims 4-9, 11, and 14 are allowable due to their dependencies.
Examiner is not persuaded. Applicant is directed to the rejections of the pending claims above which have been updated to address the claim amendments and illustrate that neither the independent claims nor the dependent claims are allowable.
The rejections stand.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL LANE whose telephone number is (303)297-4311. The examiner can normally be reached Monday - Friday 8:00 - 4:30 MT.
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/DANIEL LANE/ Examiner, Art Unit 3715
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