Espen D. Kateraas et al.

Patent Trials and Appeals Board

Dec 26, 2019

13055591 - (D) (P.T.A.B. Dec. 26, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/055,591 03/31/2011 Espen D. Kateraas 10805.0004-00000 6588
22852 7590 12/26/2019
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
DETWEILER, JAMES M
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
12/26/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ESPEN D. KATERAAS and PEDRO J. MEDELIUS
____________________

Appeal 2018-001207
Application 13/055,591
Technology Center 3600
____________________

Before JOHN A. EVANS, JAMES W. DEJMEK, and
JASON M. REPKO, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 17–26. Appellant has canceled claims 1–16. See
Appeal Br. (Claims App’x 2). We have jurisdiction over the remaining
pending claims under 35 U.S.C. § 6(b). See Ex parte Lemoine, 46 USPQ2d
1420, 1423 (BPAI 1994) (precedential).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2016). Appellant identifies
HEARTMILES, LLC as the real party in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to a
physical-activity tracking system. Spec. ¶ 7. In a disclosed embodiment, the
physical activity system comprises a data collection portal that is configured
to acquire data from data collection units. Spec. ¶ 7. In addition, the data
collection units may contain an array of sensors to collect such information
as body temperature, blood oxygen levels, and pulse rate of an individual
using (i.e., wearing) the data collection unit. Spec. ¶ 12. According to the
Specification, the data may be collected and analyzed to calculate various
indicators of physical activity. See, e.g., Spec. ¶¶ 38–42. As an incentive to
encourage physical activity, the Specification also describes providing a
reward to the user if the calculated physical activity exceeds a baseline level
of activity. See Spec. ¶¶ 27–29, 50.
Claim 17 is representative of the subject matter on appeal and is
reproduced with the disputed limitation emphasized in italics:
17. A physical activity tracking system for determining a
physical activity level of a particular individual relative to a
determined baseline fitness level unique to the individual, the
system comprising:
at least one data collection portal configured to acquire
data from a data collection unit associated with the particular
individual, the data collection unit including a pulse sensor, a
body temperature sensor, and a blood oxygenation level sensor,
and the received data including an output from the pulse sensor,
an output from the body temperature sensor, and an output from
the blood oxygenation level sensor; and at least one server unit
configured to:
communicate with the at least one data collection
portal;
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receive from the at least one data collection portal
the acquired data, including the output from the pulse
sensor, the output from the body temperature sensor, and
the output from the blood oxygenation level sensor;
determine the baseline fitness level unique to the
particular individual based on the output from the pulse
sensor and at least one of the output from the body
temperature sensor and the output from the blood
oxygenation level sensor, wherein the baseline fitness
level unique to the particular individual includes a baseline
heart rate for the particular individual determined based on
the output of the pulse sensor acquired during a resting
condition for the particular individual and at least one of a
baseline body temperature for the particular individual
determined based on the output of the body temperature
sensor acquired during the resting condition for the
particular individual and a baseline blood oxygen level for
the particular individual determined based on the output of
the blood oxygenation level sensor acquired during the
resting condition for the particular individual;
determine a physical activity score for the particular
individual based on the determined baseline fitness level
unique to the particular individual and based on a
monitored pulse rate for the particular individual and at
least one of a monitored body temperature for the
particular individual and a monitored blood oxygen level
for the particular individual;
compare the determined physical activity score to a
predetermined threshold; and
determine and store an amount of time during which
the determined physical activity score exceeds the
predetermined threshold.

The Examiner’s Rejections
1. Claims 17–26 stand rejected under the doctrine of obviousness-
type double patenting over the claims of U.S. Patent No. 8,936,552 B2
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(issued Jan. 20, 2015); Shimada et al. (US 2006/0094938 A1; May 4, 2006)
(“Shimada”); Stubbs et al. (US 6,736,759 B1; May 18, 2004) (“Stubbs”);
Amano et al. (US 6,030,342; Feb. 29, 2000) (“Amano”); Tchao et al. (US
2009/0149299 A1; June 11, 2009) (“Tchao”); and/or Ando et al. (US
2002/0013717 A1; Jan. 31, 2002) (“Ando”).2 Non-Final Act. 4–5.
2. Claims 17–26 stand provisionally rejected under the doctrine of
obviousness-type double patenting over the claims of Application No.
14/529,224 (filed Jan. 20, 2015); Shimada, Stubbs, Amano, Tchao, and/or
Ando.3 Non-Final Act. 5–6.
3. Claims 17–26 stand rejected under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. Non-Final Act. 6–14.
4. Claims 17, 18, 23, and 24 stand rejected under pre-AIA
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Non-Final Act. 17–21.
5. Claim 17 stands rejected under pre-AIA 35 U.S.C. § 112,
second paragraph, as being indefinite. Non-Final Act. 22.

2 In the statement of rejection, the Examiner inadvertently identifies claims
14–26. Non-Final Act. 4. We note, as does Appellant (see Appeal Br. 9
n.9), that Appellant previously had canceled claims 14–16. Appellant does
not otherwise assert prejudice as a result of the misidentification of claims.
Accordingly, we treat the typographical error as harmless.
3 In the statement of rejection, the Examiner inadvertently identifies claims
14–26. Non-Final Act. 5. We note, as does Appellant (see Appeal Br. 9
n.9), that Appellant previously had canceled claims 14–16. Appellant does
not otherwise assert prejudice as a result of the misidentification of claims.
Accordingly, we treat the typographical error as harmless.
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6. Claims 17–23 and 25 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Shimada, Stubbs, and Amano. Non-
Final Act. 23–38.
7. Claim 24 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Shimada, Stubbs, Amano, and Ando. Non-Final
Act. 38–40.
8. Claim 26 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Shimada, Stubbs, Amano, and Tchao. Non-Final
Act. 40–41.

ANALYSIS4
Objection to Claim 17
In the Non-Final Office Action, the Examiner objected to claim 17,
indicating that “to maintain consistency of terminology throughout the
claims” that the word “particular” should precede “individual” in the
preamble. Non-Final Act. 2. Appellant asserts that an amendment to add
“particular” should not be required as there is only one individual referenced
throughout the preamble and claims. Appeal Br. 4.
Objections are not appealable, but rather are petitionable matters. See
MPEP § 706.01 (explaining “the Board will not hear or decide issues
pertaining to objections and formal matters which are not properly before the
Board”). Accordingly, we do not address the merits of Appellant’s

4 Throughout this Decision, we have considered the Appeal Brief, filed
July 21, 2017 (“Appeal Br.”); the Reply Brief, filed November 15, 2017
(“Reply Br.”); the Examiner’s Answer, mailed September 15, 2017 (“Ans.”);
and the Non-Final Office Action, mailed June 22, 2016 (“Non-Final Act.”),
from which this Appeal is taken.
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arguments concerning the Examiner’s objection to the language in the
preamble of claim 17.

Claim Interpretation
In the Non-Final Office Action, the Examiner states that the “baseline
fitness level unique to the particular individual,” as recited in claim 17 is
interpreted “to be any output or value associated with an output (and/or
combination or set of outputs/values) that from the pulse sensor and at least
one of the temperature or blood oxygenation level sensor acquired during a
resting condition for the particular individual.” Non-Final Act. 3. The
Examiner further states that the term is not understood to be a single value or
metric, and does not necessarily involve a formula or other mathematical
manipulation of sensor output data. Non-Final Act. 3; see also Ans. 5–6.
Appellant asserts that the Examiner’s interpretation conflicts with the
express language of claim 17 and is inconsistent with the Specification.
Appeal Br. 4–9; Reply Br. 1–4. In particular, Appellant argues that rather
than a set of two or more sensor outputs, claim 17 expressly recites the
baseline fitness level includes a baseline heart rate and at least one of a
baseline body temperature and baseline blood oxygen level. Appeal Br. 6–9.
In addition, Appellant argues the Specification describes the baseline heart
rate, baseline body temperature, and baseline blood oxygen level as a
mathematical formula (e.g., integral over time) of readings from the
appropriate sensor. Appeal Br. 6–9 (citing Spec. ¶¶ 38–40).
When construing claim terminology during prosecution before the
Office, claims are to be given their broadest reasonable interpretation
consistent with the Specification, reading claim language in light of the
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Specification as it would be interpreted by one of ordinary skill in the art.
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
However, the broadest reasonable interpretation differs from the broadest
possible interpretation. In re Smith Int’l, Inc., 871 F.3d 1375, 1383 (Fed.
Cir. 2017). The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is “an interpretation
that corresponds with what and how the inventor describes his invention in
the specification, i.e., an interpretation that is ‘consistent with the
specification.’” Smith, 871 F.3d at 1382–83 (quoting In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997)). Additionally, we are mindful that limitations
are not to be read into the claims from the Specification. In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir. 1993).
We agree with Appellant that the Examiner’s proposed construction
improperly reads out the language of claim 17 that expressly recites:
wherein the baseline fitness level unique to the particular
individual includes a baseline heart rate for the particular
individual determined based on the output of the pulse sensor
acquired during a resting condition for the particular individual
and at least one of a baseline body temperature for the particular
individual determined based on the output of the body
temperature sensor acquired during the resting condition for the
particular individual and a baseline blood oxygen level for the
particular individual determined based on the output of the blood
oxygenation level sensor acquired during the resting condition
for the particular individual.
Further, when considered in light of the Specification, we agree with
Appellant that the baseline heart rate, baseline body temperature, and
baseline blood oxygen level are defined by a mathematical calculation
performed on the output gathered from the appropriate sensors. See Spec.
¶¶ 38–40.
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Provisional Obviousness-type Double Patenting Rejection
The Examiner provisionally had rejected claims 17–26 over the
claims of Application No. 14/529,224 (“the ’224 application”), Shimada,
Stubbs, Amano, Tchao, and/or Ando. Non-Final Act. 5–6. On March 28,
2019 (i.e., subsequent to the Examiner’s response in the instant matter), the
’224 application was abandoned. Accordingly, this rejection is moot.

Obviousness-type Double Patenting Rejection
Appellant argues the Examiner’s obviousness-type double patenting
rejection is in error because U.S. Patent No. 8,936,552 (“the ’552 patent”) is
directed to a completely different part of the system as compared to the
instant claims. Appeal Br. 9–15. In particular, Appellant asserts the instant
claims are directed to a data collection portal and a server unit in
communication with the data collection portal to acquire data from a data
collection unit, whereas the claims of the ’552 patent are directed to a data
collection unit. Appeal Br. 14; Reply Br. 4. As such, Appellant argues the
differences between the instant claims and those of the ’552 patent would
not have been obvious. Appeal Br. 14–15.
In rejecting claims 17–26 under the doctrine of obviousness-type
double patenting, the Examiner determines the pending claims “would have
been obvious to one of ordinary skill in the art” in view of Shimada and/or
Stubbs/and/or Amano and/or Tchao and/or Ando “for analogous reasons to
those discussed . . . with regard to the rejections of the claims under
35 U.S.C. [§] 103.” Non-Final Act. 5; see also Ans. 6–7 (explaining it
would have been obvious to modify the claims of the ’552 patent with the
teachings of the various cited references).
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“[D]ouble patenting is determined by analysis of the claims as a
whole.” Carman Indus., Inc. v. Wahl, 724 F.2d 932, 940 (Fed. Cir. 1983)
(quotation and citations omitted). In particular, “it is important to bear in
mind that comparison can be made only with what invention is claimed in
the earlier patent, paying careful attention to the rules of claim interpretation
to determine what invention a claim defines and not looking to the claim for
anything that happens to be mentioned in it as though it were a prior art
reference.” Gen. Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d
1272, 1280 (Fed. Cir. 1992).
We agree with Appellants that the claims of the ’552 patent define a
data collection unit, whereas the pending claims define a physical-activity
tracking system that merely uses the data acquired from a data collection
unit. These are patentably distinct inventions. In a double patenting
analysis, patent claims of a reference application are examined only to
determine what has been patented, not for “something one may find to be
disclosed by reading them.” In re Aldrich, 398 F.2d 855, 859 (CCPA 1968);
see also In re Sutherland, 347 F.2d 1009, 1015 (CCPA 1965) (cautioning
against using the language of the claims as prior art). Rather than analyzing
what the claims of the ’552 patent define, the Examiner appears to look to
the claim language to determine what it may disclose to one of ordinary skill
in the art, particularly when combined with the teachings of other cited
references.
For the reasons discussed supra, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner’s rejection of claims 17–26
under the doctrine of obviousness-type double patenting.

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Rejection under 35 U.S.C. § 101
Appellant disputes the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter. Appeal Br. 15–19; Reply
Br. 4–7. In particular, Appellant argues the claims are not directed to an
abstract idea, but rather, are “directed to an improvement in technology that
centers about collection . . . outputs” or an improvement “in rule-based
determination of a physical activity level.” Appeal Br. 16; Reply Br. 7.
Moreover, Appellant asserts that the additional limitations, considered as an
ordered combination, provide significantly more than the alleged abstract
idea. Appeal Br. 17–19.
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the Office recently published revised
guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Office Guidance”). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257–58 (Fed. Cir. 2016). Per Office Guidance, this first inquiry has two
prongs of analysis (i) does the claim recite a judicial exception (e.g., an
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abstract idea), and (ii) if so, is the judicial exception integrated into a
practical application. 84 Fed. Reg. at 54. Under the Office Guidance, if the
judicial exception is integrated into a practical application, see infra, the
claim passes muster under § 101. 84 Fed. Reg. at 54–55. If the claim is
directed to a judicial exception (i.e., recites a judicial exception and does not
integrate the exception into a practical application), the next step is to
determine whether any element, or combination of elements, amounts to
significantly more than the judicial exception. Alice, 573 U.S. at 217;
84 Fed. Reg. at 56.
Here, we conclude Appellant’s claims recite an abstract idea. More
particularly, Appellant’s claims are generally directed to tracking activity
data associated with an individual and determining a physical activity level
of the individual relative to a baseline fitness level unique to the individual.
See Non-Final Act. 6–8; see also Ans. 9. This is consistent with how
Appellants describe the claimed invention. See Appeal Br. 2 (“Claim 17 is
directed to a physical activity tracking system for determining a physical
activity level of a particular individual relative to a determined baseline
fitness level unique to the individual.”); see also Spec. ¶ 2 (describing that
the invention relates to “evaluating data relating to the physical activity level
of an individual”); ¶ 7 (summarizing the claimed invention as a physical-
activity tracking system to analyze data associated with the physical activity
of an individual and indicate when the activity level exceeds a threshold).
As described in the Specification, tracking activity data includes collecting
data from “any suitable array of components” such as a sensor within a data
collection unit worn by an individual. Spec. ¶¶ 10–11. As further described
in the Specification, determine a physical activity level of the individual
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relative to a baseline fitness level for the individual may be characterized
using various mathematical relationships and formulas based on the
collected data. Spec. ¶¶ 38–42.
Therefore, consistent with our Office Guidance and case law, we
conclude that tracking activity data associated with an individual and
determining a physical activity level of the individual relative to a baseline
fitness level unique to the individual is a mathematical concept (e.g.,
mathematical relationship or mathematical calculation)—i.e., an abstract
idea. See 84 Fed. Reg. at 52; see also Digitech Image Techs., LLC v. Elec.
for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (concluding that “a
process of organizing information through mathematical correlations and is
not tied to a specific structure or machine” to be abstract); SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (concluding claims for
providing statistical analysis of investment data were directed to the abstract
idea of “selecting certain information, analyzing it using mathematical
techniques, and reporting or displaying the results of the analysis”).
Moreover, our reviewing court has noted that, in certain instances,
there may be an overlap between an abstract idea within the mathematical
concepts category and an abstract idea within the mental processes category.
See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016) (concluding that “analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category”). Thus, we further
conclude tracking activity data associated with an individual and
determining a physical activity level of the individual relative to a baseline
fitness level unique to the individual is a mental process (i.e., a concept
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performed in the human mind, such as, an observation, evaluation,
judgment, and opinion)—i.e., an abstract idea. See 84 Fed. Reg. at 52; see
also Content Extraction & Transmission v. Wells Fargo Bank, N.A., 776
F.3d 1343, 1347 (Fed. Cir. 2014) (concluding the claimed method of
processing information from various sources (i.e., hard copy documents)
was directed to the abstract idea of “1) collecting data, 2) recognizing certain
data within the collected data set, and 3) storing that recognized data in a
memory”); Univ. of Fla. Research Found., Inc. v. Gen. Elec. Co, 916 F.3d
1363, 1367 (Fed. Cir. 2019) (concluding claims to collecting physiologic
data from disparate medical devices, converting the data to a common
format, analyzing the data, and displaying the data were directed to an
abstract idea); HealthTrio LLC v. Aetna, Inc., 2017 WL 192962 (mem.)
(Fed. Cir. 2017) (affirming district court decision holding “collection of data
from various sources with the goal of compiling a single, comprehensive,
patient health record” is patent ineligible); EResearchTechnology, Inc. v.
CRF, Inc., 2017 WL 1033672 (mem.) (Fed. Cir. 2017) (affirming district
court ruling that “using an electronic device to obtain clinical trial data that
would otherwise be collected by pen-and-paper diary, and analyzing the data
to decide whether to prompt action” and “[c]lassifying clinical trial results
by obtaining data using a portable electronic device and comparing same to
a norm” are patent ineligible).
Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co., LTD.,
855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to
another abstract idea . . . does not render the claim non-abstract.”); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir.
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2016) (determining the pending claims were directed to a combination of
abstract ideas).
Claim 17 is reproduced below and includes the following claim
limitations that recite tracking activity data associated with an individual and
determining a physical activity level of the individual relative to a baseline
fitness level unique to the individual, emphasized in italics:
17. A physical activity tracking system for determining a
physical activity level of a particular individual relative to a
determined baseline fitness level unique to the individual, the
system comprising:
at least one data collection portal configured to acquire
data from a data collection unit associated with the particular
individual, the data collection unit including a pulse sensor, a
body temperature sensor, and a blood oxygenation level sensor,
and the received data including an output from the pulse sensor,
an output from the body temperature sensor, and an output from
the blood oxygenation level sensor; and at least one server unit
configured to:
communicate with the at least one data collection
portal;
receive from the at least one data collection portal
the acquired data, including the output from the pulse
sensor, the output from the body temperature sensor, and
the output from the blood oxygenation level sensor;
determine the baseline fitness level unique to the
particular individual based on the output from the pulse
sensor and at least one of the output from the body
temperature sensor and the output from the blood
oxygenation level sensor, wherein the baseline fitness
level unique to the particular individual includes a baseline
heart rate for the particular individual determined based on
the output of the pulse sensor acquired during a resting
condition for the particular individual and at least one of a
baseline body temperature for the particular individual
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determined based on the output of the body temperature
sensor acquired during the resting condition for the
particular individual and a baseline blood oxygen level for
the particular individual determined based on the output of
the blood oxygenation level sensor acquired during the
resting condition for the particular individual;
determine a physical activity score for the
particular individual based on the determined baseline
fitness level unique to the particular individual and based
on a monitored pulse rate for the particular individual and
at least one of a monitored body temperature for the
particular individual and a monitored blood oxygen level
for the particular individual;
compare the determined physical activity score to a
predetermined threshold; and
determine and store an amount of time during which
the determined physical activity score exceeds the
predetermined threshold.
More particularly, the concept of tracking activity data associated with
an individual and determining a physical activity level of the individual
relative to a baseline fitness level unique to the individual comprises
(i) gathering data indicative of physical activity and a baseline fitness for an
individual (i.e., the claimed limitations of acquiring data from the data
collection unit associated with the individual and receipt of the acquired data
by a server unit); (ii) analyzing the received data to compute a baseline
fitness level and physical activity score for the individual (i.e., the claimed
limitations of determining a baseline fitness level and physical activity
score); and (iii) comparing the determined physical activity score to a
threshold (i.e., the claimed limitation of comparing the determined physical
activity score to a predetermined activity threshold).
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Because the claim recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. 84 Fed. Reg. at 54. To determine whether the judicial
exception is integrated into a practical application, we identify whether there
are “any additional elements recited in the claim beyond the judicial
exception(s)” and evaluate those elements to determine whether they
integrate the judicial exception into a recognized practical application.
84 Fed. Reg. at 54–55 (emphasis added); see also Manual of Patent
Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018).
Here, we find the additional limitation(s) do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state
(see MPEP § 2106.05(c)); or (iv) any other meaningful limitation
(see MPEP § 2106.05(e)). See 84 Fed. Reg. at 55.
Contrary to Appellant’s assertions, the claims do not set forth an
improvement in technology related to the collection of sensor data (see
Appeal Br. 16) or a rule-based determination of a physical activity level of
an individual (see Reply Br. 7). The claims do not recite (nor does the
Specification describe) an improvement to the performance of the sensors,
the data collection portal, or the server unit. See Ans. 9. Moreover, we
disagree that the claims recite a rule-based determination of a physical
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activity level. Instead, the physical activity score is determined based on
collected data.
Further, the additional elements in the limitations (e.g., identifying
different sensors as the source of the data to be acquired/received, or
identifying the data used in making the determinations) merely refine
elements of the abstract idea and do not otherwise confer patent eligibility to
the claims. Additionally, elements of communicating data or storing the
results of the analysis are the type of extra-solution activities (i.e., in
addition to the judicial exception) the courts have determined insufficient to
transform judicially excepted subject matter into a patent-eligible
application. See MPEP § 2106.05(g); see also Bilski v. Kappos, 561 U.S.
593, 612 (2010) (holding the use of well-known techniques to establish
inputs to the abstract idea as extra-solution activity that fails to make the
underlying concept patent eligible); Elec. Power, 830 F.3d at 1355
(explaining that “selecting information, by content or source, for collection
analysis, and display does nothing significant to differentiate a process from
ordinary mental processes”); Elec. Power, 830 F.3d at 1354 (recognizing
“that merely presenting the results of abstract processes of collecting and
analyzing information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and
analysis”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can., 771
F.Supp.2d 1054, 1065 (E.D. Mo. 2011) aff’d, 687 F.3d 1266 (Fed. Cir.
2012) (explaining that “storing, retrieving, and providing data . . . are
inconsequential data gathering and insignificant post solution activity”).
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application.
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18
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 77–
79). As stated in the Office Guidance, many of the considerations to
determine whether the claims amount to “significantly more” under step two
of the Alice framework are already considered as part of determining
whether the judicial exception has been integrated into a practical
application. 84 Fed. Reg. at 56. Thus, at this point of our analysis, we
determine if the claims add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field, or simply appends well-understood, routine, conventional activities at
a high level of generality. 84 Fed. Reg. at 56.
Here, Appellant’s claims do not recite specific limitations (or a
combination of limitations) that are not well-understood, routine, and
conventional. See Non-Final Act. 10–12; Ans. 12; see also OIP Techs., Inc.
v. Amazon.com, Inc., 788 F. 3d 1359, 1363 (Fed. Cir. 2015) (“relying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible”); Content Extraction, 776 F.3d
at 1347 (“The concept of data collection, recognition, and storage is
undisputedly well-known.”). Moreover, in the Specification, Appellant
describes the system in high-level generic terms performing generic
functions (e.g., collecting data from “any suitable array of components” and
transmitting data “via any suitable scheme for transmission”). See Spec.
¶¶ 10–18, 24; see also Mortgage Grader, Inc. v. First Choice Loan Servs.
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Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (generic computer
components, such as an “interface,” “network,” and “database,” fail to
satisfy the inventive concept requirement); Alice, 573 U.S. at 226 (“Nearly
every computer will include a ‘communications controller’ and a ‘data
storage unit’ capable of performing the basic calculation, storage, and
transmission functions required by the method claims.”); buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claims 17–26
under 35 U.S.C. § 101.

Rejection under pre-AIA 35 U.S.C. § 112, first paragraph
The Examiner finds three different claim elements lack adequate
written description support in the Specification and, accordingly, fail under
pre-AIA 35 U.S.C. § 112, first paragraph. Non-Final Act. 17–21. We
address these claim elements seriatim.
a. “determine a physical activity score”
Claim 17 sets forth determining a physical activity score for an
individual based on a determined baseline fitness level, a monitored pulse
rate, and at least one of a monitored body temperature and a monitored
blood oxygen level. The Examiner acknowledges that the Specification
provides an equation to determine a physical activity score (see Spec. ¶ 42),
but that the equation includes three unidentified constants and the
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“disclosure fails to suggest what these constants represent, or how to go
about choosing a value for these constants.” Non-Final Act. 18–19.
Appellant asserts the Specification “provides the requisite written
description to demonstrate that the inventors possessed this invention as of
the time of filing.” Appeal Br. 21. In support of this assertion, Appellant
reproduces the equations recited in the Specification for determining an
individual’s baseline heart rate, an individual’s baseline body temperature,
an individual’s baseline blood oxygen level, and averaged sensed vital signs
quantity, and a physical activity score. Appeal Br. 21–22. Appellant argues
the constants are not “unidentified,” but are constant values (i.e., numeric
values) and that “one skilled in the art would know how to program the
disclosed computer to perform the steps described in the specification to
achieve the claimed function, and, therefore, the written description
requirement is satisfied per MPEP 2161.01.” Appeal Br. 23. Further,
Appellant asserts that “the ability to select these numeric values would have
been beyond those with ordinary skill in the art.” Reply Br. 8.
As set forth in the Specification, the equation for determining the
physical activity score is:
𝑃𝑃𝑃𝑃𝑃𝑃 = (𝑘𝑘1 × 𝑃𝑃1) 𝐼𝐼𝐼𝐼1⁄ + (𝑘𝑘2 × 𝑃𝑃2) 𝐼𝐼𝐼𝐼2⁄ + (𝑘𝑘3 × 𝑃𝑃3) 𝐼𝐼𝐼𝐼3⁄ ,
where 𝐼𝐼𝐼𝐼1 represents an individual’s baseline heart rate and may be
determined by the equation:
𝐼𝐼𝐼𝐼1 =
1
𝑇𝑇 ∫ 𝑟𝑟𝑟𝑟𝑟𝑟
𝑇𝑇
0 ;
𝐼𝐼𝐼𝐼2 represents an individual’s baseline body temperature and may be
determined by the equation:
𝐼𝐼𝐼𝐼2 =
1
𝑇𝑇 ∫ 𝑓𝑓𝑟𝑟𝑟𝑟
𝑇𝑇
0 ; and
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𝐼𝐼𝐼𝐼3 represents an individual’s baseline blood oxygen level and may be
determined by the equation:
𝐼𝐼𝐼𝐼3 =
1
𝑇𝑇 ∫ 𝑏𝑏𝑟𝑟𝑟𝑟
𝑇𝑇
0 .
Spec. ¶¶ 38–42. Further, the Specification describes S1 as the current heart
rate; S2 as the current body temperature; and S3 as the current blood oxygen
level. See Amend. Spec., ¶ 39 (filed March, 30, 2015). In addition, the
Specification states “k1, k2, and k3 are constants.” Spec. ¶ 41.
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellants possessed the claimed
invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Specifically, the
description must “clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed” and
the test requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill
in the art. Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and
show that the inventor actually invented the invention claimed.
Ariad Pharms., Inc., 598 F.3d at 1351 (quotations and citations omitted).
However, it is not enough to satisfy the written description requirement that
the claimed subject matter would have been obvious to a person of ordinary
skill in view of the written description. See ICU Med., Inc. v. Alaris Med.
Sys., Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009); see also Regents of the
Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566–67 (Fed. Cir. 1997)
(explaining that “an applicant complies with the written description
requirement by describing the invention, with all its claimed limitations, not
that which makes it obvious” (quotations omitted)). In other words, “it is
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not a question of whether one skilled in the art might be able to construct the
patentee’s device from the teachings of the disclosure . . . . Rather, it is a
question whether the application necessarily discloses that particular device
. . . . A description which renders obvious the invention for which an earlier
filing date is sought is not sufficient.” Lockwood v. Am. Airlines, Inc., 107
F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533,
536 (CCPA 1963)) (emphasis added).
Although, as Appellant states, an ordinarily skilled artisan may know
how to program a computer to calculate the physical activity score (and
select values for constants k1, k2, and k3), that is not the correct inquiry. See
Lockwood, 107 F.3d at 1572. However, we note the Specification further
describes “an individual’s PAS may depend solely on heart rate, any other
sensed value, or any combination (weighted or otherwise) of sensed values.”
Spec. ¶ 42. In other words, a PAS based solely on heart rate would have
constants k2 and k3 set to 0, and k1 set to 1. Similarly, a non-weighted PAS
would have the constants set at the same value. We find that based on “an
objective inquiry into the four corners of the specification from the
perspective of a person of ordinary skill in the art,” the ordinarily skilled
artisan would understand that Appellant had possession of the claimed
physical activity score. See Ariad Pharms., Inc., 598 F.3d at 1351
(explaining the level of detail necessary to satisfy the written description
requirement depends on the scope of the claims and the complexity of the
technology).
For the reasons discussed supra, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner’s rejection of claims 17 and 18
under pre-AIA 35 U.S.C. § 112, first paragraph.
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b. “determine a bio signature”
Claim 23 depends from claim 17 and further recites “the at least one
server unit is further configured to determine a bio signature for the
particular individual based on historical values for one or more of the
particular individual’s heart rate, body temperature, and blood oxygen
level.” The Examiner finds the Specification merely mentions that a bio
signature may be determined but does not provide adequate written
description for how the bio signature would be computed. Non-Final
Act. 20.
Appellant asserts adequate written description support because the
Specification states the system “may also be configured to determine a bio
signature for an individual user based on outside temperature and one or
more of the user’s body temperature, blood oxygen level, physical
movements, and heart rate information, for example.” Appeal Br. 24–25
(quoting Spec. ¶ 74).
We agree with the Examiner that the Specification fails to reasonably
convey to those skilled in the art that Appellant had possession of the
claimed subject matter (i.e., determining a bio signature) as of the filing
date. In particular, there is no description of how the server (or system) is
configured to determine a bio signature, how historical values for the
different parameters are used, or how/when the values are collected (i.e.,
when the individual is active or at rest).
Accordingly, we sustain the Examiner’s rejection of claim 23 under
pre-AIA 35 U.S.C. § 112, first paragraph.

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c. “identify fraudulent use of the data collection unit”
Claim 24 depends from claim 23 and recites “wherein the at least one
server unit is configured to use the bio signature to identify fraudulent use of
the data collection unit.” The Examiner finds the Specification merely
mentions that the server may be configured to recognize unusual or “out of
range” data and flag such data as possibly being associated with fraudulent
use, but fails to suggest “how the Applicant has programmed their computer
to determine an ‘expected range for the particular individual’ based on the
historic data, [and] does not suggest how an expected range would relate to a
bio signature.” Non-Final Act. 20–21.
Appellant asserts adequate written description support because the
Specification states the system “may be able to detect whether certain
measured values or average values are outside of expected ranges for a
particular individual.” Appeal Br. 24–25 (quoting Spec. ¶ 74). In other
words, if the detected readings for a particular individual are outside the
“expected range” for the individual, the system may flag the account as
potentially including fraudulently generated data. See Appeal Br. 25.
We agree with the Examiner that the Specification fails to reasonably
convey to those skilled in the art that Appellant had possession of the
claimed subject matter as of the filing date. As described above, the
determination of a bio signature lacks adequate written description support.
Moreover, we agree with the Examiner that there is inadequate written
description for how Appellant would determine the “expected rages for a
particular individual,” which is used to trigger a potentially fraudulent use
indication. As such, there is not adequate written description support to use
the bio signature to identify fraudulent use of the data collection unit.
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Accordingly, we sustain the Examiner’s rejection of claim 24 under
pre-AIA 35 U.S.C. § 112, first paragraph.

Rejection under pre-AIA 35 U.S.C. § 112, second paragraph
The Examiner concludes claim 17 is indefinite under pre-AIA
35 U.S.C. § 112, second paragraph, because “the received data,” as recited
in the claim, lacks antecedent basis. Non-Final Act. 22.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
Although, as a general matter, we agree with the Examiner that
consistency of terminology should be maintained throughout the claims (see
Ans. 17), we agree with Appellant that, in context of the rest of the claim,
one of ordinary skill in the art would understand that “the received data”
refers to the data acquired by the data collection portal. See Appeal Br. 26.
Accordingly, we do not sustain the Examiner’s rejection of claim 17
under pre-AIA 35 U.S.C. § 112, second paragraph.

Rejections under pre-AIA 35 U.S.C. § 103(a)
a. Claims 17–23 and 25
In rejecting claim 17, the Examiner finds, in relevant part, Shimada
teaches identifying a baseline fitness level unique to the individual
comprising baseline body temperature and baseline pulse rate; determining a
physical activity score based on the identified baseline fitness level and at
least one of a monitored pulse rate and monitored body temperature; and
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determining and storing an amount of time in which the physical activity
score exceeds a predetermined threshold. Non-Final Act. 24–25 (citing
Shimada ¶¶ 10, 70, 78, 131–142, 146, 168–169, Fig. 4). The Examiner
relies on Stubbs to teach, inter alia, a data collection unit including a blood
oxygenation level sensor. Non-Final Act. 26–27 (citing Stubbs, col. 3,
ll. 38–45, col. 4, ll. 1–14, col. 6, ll. 56–60, col. 8, ll. 6–30, col. 9, ll. 40–45,
col. 10, ll. 35–55, claim 26). In addition, the Examiner relies on Amano to
teach determining the baseline fitness level based on outputs from the pulse
sensor and at least one of the body temperature sensor and blood oxygen
sensor. Non-Final Act. 28–29 (citing Amano, col. 2, ll. 24–26, col. 6, ll. 29–
44, col. 17, ll. 5–60, col. 26, ll. 28–67).
Appellant asserts “there is no indication in Shimada of determining
the claimed baseline fitness level, the claimed physical activity score for the
particular individual or for determining and storing an amount of time that
the individual exhibits a physical activity score that exceeds a predetermined
threshold.” Appeal Br. 28. Appellant asserts “Amano describes a device for
measuring calorie expenditure, not a baseline fitness level unique to the
individual or a physical activity score in view of the claimed sensor outputs
and the determined baseline fitness level.” Appeal Br. 29.
As an initial matter, it is well settled that mere attorney arguments and
conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(attorney argument is not evidence).
Appellant’s arguments that Shimada fails to teach determining the
claimed physical activity score or determining and storing an amount of time
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that the physical activity score exceeds a threshold is unsupported by
persuasive evidence or argument. Accordingly, we are unpersuaded of
Examiner error.
As to the limitation of “determin[ing] the baseline fitness level unique
to the particular individual . . . ,” we do not find Appellant’s arguments
persuasive of Examiner error. As set forth above, the Examiner relies on the
combined teachings of Shimada, Stubbs, and Amano to teach this limitation.
Appellant’s arguments merely attack the references individually. See Keller,
642 F.2d at 426 (holding that non-obviousness cannot be established by
attacking references individually where the ground of unpatentability is
based upon the teachings of a combination of references).
Rather than merely disclosing “a device for measuring calorie
expenditure” (see Appeal Br. 29), Amano additionally describes a device
comprising a basal metabolic state specifying element that specifies an
individual’s basal metabolic state from the individual’s body temperature,
and a correlation storing element to store respective regression formulas
showing a correlation between pulse rate and calorie expenditure when the
individual is active and at rest. Amano, Abstract. As the Examiner explains,
the basal metabolic state of Amano corresponds to the baseline fitness value
“because these are baseline values [(i.e., the resting pulse rate and resting
body temperature of an individual, both of which are captured by respective
sensors in Amano)] reflective of the users [sic] overall fitness.” Non-Final
Act. 28–29. Further, as the Examiner finds, Shimada teaches determining
baseline body temperature and baseline pulse rate during a resting condition
for an individual. Non-Final Act. 23–24. The Examiner relies on Stubbs to
teach also collecting blood oxygen levels “because blood oxygenation level
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can provide an indication of an individual’s exertion level during activities
(e.g. their metabolic levels) and therefore collecting this information may be
used for tracking physical activity and for determining a physical activity
level of a particular individual.” Non-Final Act. 26–28. In addition to
finding that one of ordinary skill in the art would appreciate including
measurement(s) of blood oxygen level to provide an indication of an
individual’s exertion level during activities, the Examiner notes that the
proposed combination is simply “a combination of old elements, and in the
combination each element merely would have performed the same function
as it did separately, and one of ordinary skill in the art would have
recognized that the results of the combination were predictable.” Non-Final
Act. 27; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”).
Accordingly, we are unpersuaded the Examiner erred in determining the
combined teachings of Shimada, Stubbs, and Amano teaches or reasonably
suggests the claimed “determin[ing] the baseline fitness level unique to the
particular individual . . . .”
Appellant additionally argues the Examiner’s proposed combination
(particularly that of Shimada and Stubbs) appears to be based on improper
hindsight. Appeal Br. 28–30. We disagree.
As set forth in the Non-Final Office Action, the Examiner provides
articulated reasoning with rational underpinning to support the proposed
combination. See Non-Final Act. 27, 29–31; see also In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418)
(holding the relevant inquiry in an obviousness analysis is whether the
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Examiner has set forth “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”). Moreover,
the Examiner basis for combining the references is not drawn from
Appellant’s Specification, but rather the cited prior art references. See In re
McLaughlin, 443 F.2d 1392 1313–14 (CCPA 1971) (“Any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning, but so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s disclosure,
such a reconstruction is proper.”).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 17. Additionally, we sustain the Examiner’s rejection of claims 18–23
and 25, which depend directly or indirectly therefrom and were not argued
separately. See Appeal Br. 30; see also 37 C.F.R. § 41.37(c)(1)(iv).

b. Claims 24 and 26
Appellant asserts that the additional references cited by the Examiner
(i.e., Ando and Tchao) fail to remedy the alleged deficiencies in the base
combination of Shimada, Stubbs, and Amano with respect to independent
claim 17. Appeal Br. 30–31. As discussed above, we are unpersuaded of
Examiner error or deficiencies of Shimada, Stubbs, and Amano related to
independent claim 17. Accordingly, we sustain the Examiner’s rejections of
dependent claims 24 and 26, which were not argued separately. See
37 C.F.R. § 41.37(c)(1)(iv).

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CONCLUSION
We reverse the Examiner’s decision rejecting claims 17–26 under the
doctrine of obviousness-type double patenting.
We affirm the Examiner’s decision rejecting claims 17–26 under
35 U.S.C. § 101.
We reverse the Examiner’s decision rejecting claims 17, and 18 under
pre-AIA 35 U.S.C. § 112, first paragraph.
We affirm the Examiner’s decision rejecting claims 23 and 24 under
pre-AIA 35 U.S.C. § 112, first paragraph.
We reverse the Examiner’s decision rejecting claim 17 under pre-AIA
35 U.S.C. § 112, second paragraph.
We affirm the Examiner’s decision rejecting claims 17–26 under pre-
AIA 35 U.S.C. § 103(a).

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17–26 Obviousness-type
Double Patenting
17–26
17–26 Provisional
Obviousness-type
Double Patenting5

17–26 101 Eligibility 17–26
17, 18, 23,
24
112, first
paragraph
Written
Description
23, 24 17, 18
17 112, second
paragraph
Indefiniteness 17
17–23, 25 103(a) Shimada, Stubbs,
Amano
17–23
24 103(a) Shimada, Stubbs,
Amano, Ando
24
26 103(a) Shimada, Stubbs,
Amano, Tchao
26
Overall
Outcome
17–26

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

5 As discussed above, because the application on which this provisional
rejection was based has been abandoned, this rejection is moot.