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 .
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, 7, 9-12 and 14-26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. Claim(s) 1 recite(s) “reading an electronics module identifier for an electronics module” … “reading a wearable article identifier for a wearable article associated with the electronics module”… and” associating the electronics module identifier with the wearable article identifier”.
The limitation of reading an electronics module identifier for an electronics module and reading a wearable article identifier for a wearable article associated with the electronics module and associating the electronics module identifier with the wearable article identifier, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind even with the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Finally, there isn’t any judicial exception recited therefore the claim is not patent eligible.
Claim(s) 23 recite(s) “a first reader arranged to read an electronics module identifier for an electronic module;
a second reader arranged to read a wearable article identifier for a wearable article associated with the electronics module; and
a controller operable to associate the electronics module identifier with the wearable article identifier”.
The limitation of a first reader arranged to read an electronics module identifier for an electronics module; a second reader arranged to read a wearable article identifier for a wearable article associated with the electronics module; and a controller operable to associate the electronics module identifier with the wearable article identifier, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “a first reader”, “a second reader”, and “a controller”, nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “first reader”, “second reader”, and “processor” languages, “reading” and “associating” in the context of this claim encompasses the user manually memorizing/recording the identifications from different objects, and associating the read identifications data together. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites additional element – using a controller to perform association of the electronics identifier and the article identifier. The controller in both steps is recited at a high-level of generality (i.e., as a generic controller performing a generic computer function of taking in data and associating the data) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using readers and controller to perform both reading and associating amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
Dependent claims recite monitoring activity data and displaying without the inclusion of additional elements that are sufficient to amount to significantly more than the judicial exception. Thus, the claims are not patent eligible.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,346,767. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim of instant application is broader in scope than claim of U.S. Paten No. 12,346,767.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-6 of U.S. Patent No. 12,346,767.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,346,767.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,346,767.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,346,767.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,346,767.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,346,767.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,346,767.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,346,767.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,346,767.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,346,767.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12,346,767.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12,346,767.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. 12,346,767.
Claim 22 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,346,767.
Claim 23 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,346,767.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Poutiatine et al. (US 2018/0249944), Alten et al. (US 2008/0218310) and Hines et al. (US 2012/0146784).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to An T Nguyen whose telephone number is (571)270-5167. The examiner can normally be reached Monday - Friday 9-5 ET.
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/AN T NGUYEN/Primary Examiner, Art Unit 2686
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