Al\/IENDl\IENT
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`Serial Number: l0/940,214
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`Page 35 of 43
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`283.
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`(Presently Presented) The system of Claim 282, wherein said processing unit is
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`further configured to utilize said energy expenditure data to track and predict changes in the
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`individual’s human physiological parameters.
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`284.
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`(Currently amended) The system of Claim 286, wherein the system is configured
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`for use in the management of at least one of sleep, pregnancy; diabetes. cardiovascular disease.
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`wellness, and stress.
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`285.
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`(Previously Presented) The system of Claim 286, wherein said sensor device
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`comprises at least one of a weight scale and a glucose monitor.
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`286.
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`(Currently amended) A system to provide feedback for an individual’s weight-
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`loss goal, said system comprising:
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`a. a wearable sensor device for detecting data of at least one of a physiological
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`and contextual parameter of said individual; and
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`b. a processing unit in electronic communication with said sensor device, said
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`processing unit configured to [[—]] accomplish the following steps, thus providing said feedback:
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`(i) prompt said individual to establish a weight—loss goal;
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`(ii) generate a first suggestion to engage in an activity to assist said
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`individual to achieve said weight—loss goal;
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`(iii) determine weight—loss ;
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`(iv) generate a second suggestion to engage in an activity to assist said
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`individual to achieve said weight;loss goal if said weight—loss is not progressing toward the goal;
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`wherein said second suggestion is based upon a determination of whether or not the
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`individual complied with said first suggestion; and
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`wherein said determination of whether or not the individual complied with said first
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`suggestion is based on data generated by the sensor device.
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`1001 of 1348
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`Al\/IENDl\IENT
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`Serial Number: 10/940,214
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`Page 36 of 43
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`Dkt: Weight Mgr US
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`REMARKS
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`1. Claims 1-88, 90-154, and 156-286 are pending in the application. Claims 89 and 155
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`have been cancelled. Claims 1-88, 90-118, 123-150, 156-178 and 193-278 have been withdrawn
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`from consideration. Claims 119-122, 151-154, 179-192 and 280-286 are rejected. Claims 122,
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`191, 192, 281 and 286 are objected to because of informalities with respect to antecedent basis.
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`The claims have been amended to correct antecedent basis without narrowing the claims by
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`positively reciting the feedback which is the subject of the dependent claims. Claims 119-122,
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`151-154, 179-192 and 280-286 are rejected under 35 U.S.C. § 112, second paragraph, as being
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`indefinite. Claims 120, 122, 152-154 188-190 280-281 and 284 are rejected under 35 U.S.C. §
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`112, fourth paragraph, as being improper dependent claims for failing to further limit the subject
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`matter of the claim from which they depend. Claims 179-190 are rejected under 35 U.S.C. § 101
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`as being directed to non-statutory subject matter. Claims 119-122, 151-153, 179-192 and 280-
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`286 are rejected as anticipated under 35 U.S.C. § 102(b) by U.S. Pat. No. 5,673,691 to Philip
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`Abrams et al. (“Abrams”). Claim 154 is rejected as obvious under 35 U.S.C. § 103(a) in View of
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`Abrams and further in View of U.S. Pat. No. 6.478.736 to James Mault et al. (Mault”). Claim
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`286 is rejected as obvious under 35 U.S.C. § 103(a) in view of U.S. Pat. No. 6,478,736 to James
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`Mault et al. (Mault”) and further in view of U.S. Pat. No. 5,954,510 to David Merrill (“Merrill”).
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`2. Claims 119-122, 151-154, 179-192 and 280-286 are rejected under 35 U.S.C. § 112,
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`second paragraph, as being indefinite. The rejection states that it is unclear how the processing
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`unit of Claim 286 is capable of determining weight loss without means operatively connected to
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`such processing unit to measure or weigh, or how to determine a weight loss.
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`As noted in the application, the individual can enter many inputs into the processing unit,
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`including the individual’s weight. The system can also receive data from weight scales.
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`In this
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`the processing unit is configured to determine weight loss from these measurements.
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`Moreover, the system accepts inputs such as caloric consumption and the activities and times
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`used for energy expenditure.
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`It is noted in the application that weight gain or weight loss will
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`depend upon the balance of calorie consumption vs. calorie expenditure.
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`See application
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`generally and Table 4 as filed (shown below), showing how calorie expenditure and calorie
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`1002 of 1348
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`A1\/IENDIVIENT
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`Serial Number: 10/940,214
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`Page 37 of 43
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`Dkt: Weight Mgr US
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`consumption are balanced. The application also notes that the constant that changes calories into
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`pounds of weight gain or weight loss is 3500, i.e., 3500 calories is equivalent to 1 pound.
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`Application as filed, paragraph bridging pp. 106-107.
`Table 4
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`Calculation
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`(energy expenditure — daily calorie intake) > 40
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`-40 < (energy expenditiire :dailyWcaloric intake) < 40
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`40 < (energy expenditure — daily calorie intake)
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`Claim 286 is a system claim, not a method claim. Applicants have claimed the system
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`Applicants believe is the invention of Claim 286 and have added functional limitations within the
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`claim to better explain and define the invention. The invention is then further explained by the
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`detailed description provided in the instant application, including a lengthy written description.
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`While the claims are not limited by the specification. the specification does give a much fuller
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`description of the applicants’ invention and thus breathes both life and enablement into the
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`claims. Applicants submit that the claim is not indefinite, in that the major elements of the
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`claim, a sensor and a processing unit, are quite definite, and they are further defined by the many
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`functional limits contained within the claims. Claims 119-122, 151-154, 179-192 and 280-285
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`depend from Claim 286 and are not indefinite because they depend from Claim 286.
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`As to Claim 182, Claim 182 depends ultimately from Claim 286, which recites “a
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`wearable sensor device for detecting data.” Claim 182 states that the database of Claim 179 then
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`includes “said detected data,” referring to this antecedent. Claims 186 and 187 have been
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`amended in a non-narrowin g manner to more correctly claim that the results of prediction are to
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`predict future data, not future detected data. The Examiner is thanked for pointing out the
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`discrepancies.
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`The Examiner is respectfully requested to withdraw rejections of Claims 119-122, 151-
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`154, 179-192 and 280-286 under 35 U.S.C. § 112, second paragraph and to allow the claims.
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`3. Claims 120, 122, 152-154, 188-190, 280-281 and 284 are rejected under 35 U.S.C.
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`§ 112, fourth paragraph, as being improper dependent claims for failing to further limit the
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`subject matter of the claims from which they depend. The rejection admits that the independent
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`1003 of 1348
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`Al\/IEND1\IENT
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`Serial Number‘: 10/940,214
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`Page 33 of 43
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`Dkt: Weight Mgr‘ US
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`claim, Claim 286, is directed to a system comprising a sensor device and a processing unit.
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`Claim 179 also adds a database comprising data. Claim 119 recites that the processing unit is
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`further configured to derive energy balance from data detected by the elements of Claim 286.
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`As is well known to the Office, one can claim elements explicitly, such as the sensor
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`device and processing unit, and one can also claim elements functionally. Thus, Claim 119
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`includes a functional limitation that the processing unit is “further configured” to do something.
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`In one embodiment, Claim 119 could instead have recited a computer program or the algorithm
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`described in the specification, which can perform the function of deriving an energy balance.
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`According to the M.P.E.P., a functional limitation is an attempt to define something by
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`what it does, rather than by what it is (e.g., as evidenced by its specific structure or‘ specific
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`ingredients). M.P.E.P. 2173.05(g). There is nothing inherently wrong with defining some part
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`of an invention in functional terms. Functional language does not, in and of itself, render a claim
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`improper.
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`ld., citing In re Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971). Functional
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`elements must be evaluated and considered, just like any other elements of the claim, for what
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`they fairly convey to a person of ordinary skill in the pertinent art in the context in which it is
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`ln particular, the M.P.E.P. states that a functional limitation is often used in association
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`with an element, ingredient, or step of a process “to define a particular capability or purpose that
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`is served by the recited element, ingredient or step.” M.P.E.P. 2173.05(g).
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`Thus, functional limitations that purport to define a particular purpose are proper.
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`In the
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`present application, the claims rejected under section 112, paragraph 4, further limit a positively
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`recited element of the claim, e. g., the processing unit or the sensor. Applicants therefore submit
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`that Claims 120, 122, 152-154, 188-190, 280-281 and 284 are in proper dependent format. The
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`Examiner is respectfully requested to withdraw the rejections of Claims 120, 122, 152-154, 188-
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`190, 280-281 and 284,under 35 U.S.C. § 112, fourth paragraph.
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`4. Claims 179-190 are rejected under 35 U.S.C. § 101 as being directed to non—statutory
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`subject matter. The Office Action states that Claims 179-182 are merely a compilation or
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`arrangement of data and are thus non-functional descriptive material, and that Claims 183-190
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`are rejected as being based on rejected base Claim 179.
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`1004 of 1348
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`

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`Al\/IENDl\IENT
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`Serial Number: 10/940,214
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`Page 39 of 43
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`Dkt: Weight Mgr US
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`a. Applicants traverse the rejection. Claims 179, 180 and 181 recite a database, a
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`database with physiological data, and a database with contextual data. As described in the
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`application, the database is an essential part of the claimed subject matter. See Application as
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`filed, p. 23, lines 6-20, describing a database with physiological and contextual data. This data
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`may be produced by the claimed sensor and may be used by the claimed processing unit in
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`accomplishing its goals. A database is not an abstract idea, a law of nature or a natural
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`phenomenon, nor merely nonfunctional descriptive material, which constitute the limits of non-
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`statutory subject matter. When functional descriptive material
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`is recorded on a computer-
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`readable medium, it becomes structurally and functionally interrelated to the medium and will be
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`statutory in most cases since use of technology permits the function of the descriptive material to
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`be realized. M.P.E.P. 2106. Such material may be non—statutory only if it is claimed per se, i.e.,
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`the arrangement of data itself.
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`Id., citing In re Warmerdam, 33 F.3d 1354, 1360-61 (Fed. Cir.
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`1994) (claim to computer having a specific data structure stored in memory held statutory
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`product—by—process claim).
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`In the present application, the data itself is not claimed, but rather a database that includes
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`data as part of the Claim 286 system; the system includes a processing unit that uses the database
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`and its data. Thus, the database is clearly functional and complies with both 35 U.S.C. § 101 and
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`the M.P.E.P. The Examiner is respectfully requested to withdraw the rejections of Claims 179-
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`190 under 35 U.S.C.§ 101.
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`b. The rejection further states that the functions of microprocessors, microcontrollers and
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`peripheral devices are well known, as are their abilities and functions, such as interconnecting
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`and communicating. Office Action, p. 10.
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`It is therefore the Examiner’s position, states the
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`rejection, that a change in the arrangement of these well known elements within a device does
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`not carry any patentable weight. Applicants traverse these assertions.
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`If the Examiner believes
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`that the claimed invention is well—known, the rejection should be made under 35 U.S.C. § 102 for
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`anticipation rather than § 101, which deals with non—statutory subject matter. As Applicants
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`have shown above, the rejection under § 101 is not well—founded. Applicants address the § 102
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`issues below, in which a reference is cited against the claims of the application.
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`1005 of 1348
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`Al\/IENDl\IENT
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`Serial Number: 10/940,214
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`Page 40 of 43
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`Dkt: Weight Mgr US
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`If the Examiner wishes to make an additional rejection under § 102 on the grounds that
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`the elements of the claims are well known, the Examiner is requested to supply a reference, as
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`required by 37 C.F.R. § l04(d)(2).
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`5. Claims 119-122, 151-153, 179-192 and 280-286 are rejected as anticipated under 35
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`U.S.C. § 102(b) by U.S. Pat. No. 5,673,691 to Philip Abrams et al. (“Abrams”). The rejection
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`states that the invention of Claim 286 is found in Abrams in passages at col. 1, lines 1-15, col. 6,
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`lines 25-33, col. 3,
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`lines 55-57 and 64-67, col. 12,
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`lines 1-2 and Figs. 3-4,
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`including a
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`microcontroller at numeral 100 in Fig. 4. The Office Action also cites col. 1 1, lines 8-12 and 29-
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`42, with reference to Fig. 3; col. 17, lines 28-33 and col. 5, lines 18-20; and Figs. 5 and 66.
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`a. The rejection states that Abrams teaches a hand-held device rather than a wearable
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`sensor device. Office Action, p. 11, lines 9-11. The Office Action cites Figs. 3 and 4 and
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`passages from col. 33,
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`lines 55-57 and 64-67, as teaching sensors and transducers. Office
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`Action, p. 11, lines 15-18. The Office Action does not assert, and Abrams does not teach, a
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`wearable sensor device as claimed. Accordingly, Abrams does not teach or suggest all elements
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`b. Claim 286 requires that the processing unit generate a second suggestion to engage in
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`an activity to assist said individual to achieve said weight-loss goal if said weight-loss is not
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`progressing toward the goal, “wherein said determination is based upon data generated by the
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`sensor device,
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`the determination being whether of not
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`the individual complied with the
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`computer’s first suggestion.
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`As noted in the application as filed, pp. 63-66, an embodiment includes a feedback and
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`coaching engine that analyzes the data accumulated by the sensor device and processing unit.
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`The processing unit receives feedback on whether or not the individual is making progress
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`toward his or her weight-loss goal, based on the data generated by the total energy expenditure
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`and daily caloric intake calculations. Appl. as filed, p. 63, lines 4-6. The processing unit may
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`then generate suggestions to engage in an activity to assist the individual to achieve his or her
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`weight-loss goal if the weight-loss is not progressing toward the goal, the second suggestion
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`based upon a determination of whether or not the individual complied with the first suggestion.
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`Id. at lines 7-13. The suggestion may include advice to decrease daily calorie intake, to generate
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`1006 of 1348
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`Al\/IENDIVIENT
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`Serial Number: l0/940,214
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`Page 41 of 43
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`Dkt: Weight Mgr US
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`a new meal plan consistent with the decreased caloric intake,
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`to increase total energy
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`expenditure, and to generate an exercise plan to guide the user to the goals.
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`Id. at lines 16-19.
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`For example, a suggestion may be provided to a user who needs to work off 100 calories to take
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`a 30-minute walk.
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`Id. at p. 75, line 14 to p. 76, line 2. Note that these suggestions are based on
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`the system’s calculation of calorie balance, using the wearable sensor device and in which the
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`determination is based on data generated by the sensor device.
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`In finding that Abrams teaches this element of Claim 286, the Office Action states that
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`the wearable sensor may be Abram’s blood glucometer. Office Action, p. 12, lines 5-7. As
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`noted, however, the sensor must also meet the functional limitation “wherein said determination
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`is based upon data generated by the sensor device.’ Whether or not the individual is losing
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`weight, the processing unit or computer is required to be “based upon a determination of whether
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`or not the individual complied with said first suggestion,” and as noted, this determination “is
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`based on data generated by the sensor device.” The Office Action asserts that Abrams can give a
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`recommendation, p. 14, lines 3-5, but does not assert that the processing unit is what makes the
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`determination and no mention whatsoever that the determination is based on data generated by
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`the sensor. Accordingly, Abrams does not teach or suggest the invention of Claim 286 and
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`therefore does not anticipate Claim 286.
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`C. Dependent Claims 119-122, 151-153, 179-192 and 280-285 are allowable because
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`they depend from allowable Claim 286.
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`In addition, a number of the dependent claims are
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`separately allowable because Abrams does not teach or suggest the element of the particular
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`dependent claim. For example, Claim 119 requires that the processing unit be configured to
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`derive an energy balance from detected data, i.e., the data detected using the sensors of Claim
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`286, the claim from which Claim 119 depends, while Claim 120 requires that the energy balance
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`be derived from daily caloric intake and energy expenditure. Claims 119-120 require that the
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`energy balance and the data used to derive the energy balance be acquired from the at least one
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`sensor of Claim 286. Abrams does not make this claim — the passage cited from Abrams as
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`anticipating Claims 119-120, col. 17, lines 38-45, makes it clear that the user may simply enter
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`calories consumed or expended and then make the appropriate adjustment. Thus, the link to data
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`from the sensors is not seen in Abrams and Claims 119-120 are not anticipated.
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`1007 of 1348
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`

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`Al\/IENDIVIENT
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`Serial Number: 10/940,214
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`Page 42 of 43
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`Dkt: Weight Mgr US
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`Claim 121 uses the same energy balance cited in Claim 119, which is not anticipated.
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`The Office Action cites Abrams’ BMEX as also teaching Claim 121, but the passage cited,
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`Abrams col. 18, lines 49-63, uses the person’s entry of calories consumed and exercise periods,
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`not the sensor data as claimed. Accordingly, Claim 121 is also not anticipated. As for Claims
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`281-282, Abrams cols. 35-36 make it clear that the calorie expenditure is entered into the
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`computer via the user by selecting an exercise and a time for exercising, and thus calculating an
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`energy expenditure, rather than using a wearable sensor to detect activity and thus calories
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`actually consumed by the user. Thus, Abrams Fig. 47 calorie expenditure does not arise from
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`data detected by the at least one sensor, but rather from data entered by the user. Claims 281 -282
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`are also not anticipated by Abrams.
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`The Examiner is respectfully requested to withdraw the rejections of Claims 119-122,
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`151-153, 179-192 and 280-286 under 35 U.S.C. § 102(b).
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`6. Claim 154 is rejected as obvious under 35 U.S.C. § 103(a) in View of Abrams and
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`further in View of U.S. Pat. No. 6,478,736 to James Mault et al. (Mault”). Claim 154 is
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`allowable at least because it depends from allowable Claim 286. The Examiner is respectfully
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`requested to withdraw the rejections of Claim 154 under 35 U.S.C. § lO3(a).
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`7. Claim 286 is rejected as obvious under 35 U.S.C. § 103(a) in View of U.S. Pat. No.
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`6,478,736 to James Mault et al. (Mault”) and further in View of U.S. Pat. No. 5,954,510 to David
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`Merrill (“Merrill”). Claim 286 is not obvious in View of the references because the references do
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`not teach or suggest all the elements of the claims.
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`The Office Action admits that Mault does not teach generating a second suggestion, and
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`cites Merrill as teaching this element, citing Merrill col. 4, lines 5-15 and col. 5, lines 5-55. The
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`claim, however, requires that the second suggestion be based “upon a determination of whether
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`or not the individual complied with said first suggestion.” Neither the Office Action nor the
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`references make this link, that is, that the second suggestion is determined by non-compliance
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`with the first suggestion, said determination of noncompliance based on data from the wearable
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`sensor as claimed. Mault admittedly does not provide it; Merrill simply teaches entering
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`1008 of 1348
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`

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`Al\/IENDIVIENT
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`Serial Number: 10/940,214
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`Page 43 of 43
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`Dkt: Weight Mgr US
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`information about regular weighings, calorie consumption and exercise data, but does not teach
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`providing the second suggestion.
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`As also stated in the Office Action, Mer1ill’s metrics (weighings, calorie consumption,
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`exercise data) are then employed to generate a performance analysis which is provided as
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`feedback to the user. Office Action, p. 22, lines 5-7. Claim 286 requires, however, that the
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`second suggestion be both: 1) based on a determination of whether or not
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`the individual
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`complied with the first suggestion; and 2) that the determination is based on data generated by
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`the sensor device. The Office Action does not point out how Merrill teaches either of these
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`elements because Merrill teaches neither of these, and thus cannot supply the second suggestion.
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`Applicants submit that the references do not teach or suggest the element of Claim 286
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`and that Claim 286 is thus allowable. The Examiner is respectfully requested to withdraw the
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`rejections of Claim 286 under 35 U.S.C. § 103(a).
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`8. Based upon the foregoing, Claims 119-122, 151-154, 179-192 and 280-286 are in
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`condition for allowance. Reconsideration is requested. If an interview or telephone conversation
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`is deemed necessary or prudent by the Examiner, she is requested to Contact the undersigned.
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`Respectfully submitted,
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`Christopher Pacione et al.
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`By their Representatives,
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`Customer No. 87084
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`Date:
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`June 30 2011
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`:
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`/David W. Okey/
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`David W. Okey
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`GTC Law Group LLP & Affiliates
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`Reg. No. 42,959
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`Telephone No. 312-404-9102
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`1009 of 1348
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`Electronic Patent Application Fee Transmittal
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`Filing Date:
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`13-Sep-2004
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`Title of Invention:
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`System for monitoring and managing body weight and other physiological
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`conditions including iterative and personalized planning, intervention and
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`reporting capability
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`First Named Inventor/Applicant Name:
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`Christopher Pacione
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`Filer:
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`David W. Okey/Jennifer Sammartin
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`Attorney Docket Number:
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`Weight-Mgr.-US
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`Utility under 35 USC 11 1 (a) Filing Fees
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`Description
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`Claims:
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`Miscellaneous-Filing:
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`Patent-Appeals-and-Interference:
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`Post-Allowance-and-Post-lssuance:
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`Extension-of-Time:
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`Extension-3months with $0 paid
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`1253
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`Total in USD (S)
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`1110
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`1011 of 1348
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`Electronic Acknowledgement Receipt
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`10431632
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`Confirmation Number:
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`Title of Invention:
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`System for monitoring and managing body weight and other physiological
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`conditions including iterative and personalized planning, intervention and
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`reporting capability
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`First Named Inventor/Applicant Name:
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`Christopher Pacione
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`Customer Number:
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`87084
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`Filer Authorized By:
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`David W. Okey
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`Attorney Docket Number:
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`Weight—Mgr.—US
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`Filing Date:
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`Time Stamp:
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`13-SEP-2004
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`17:02:48
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`Application Type:
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`Utility under 35 USC 111(a)
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`503912
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`1012 of 1348
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`Amendment/Req.Reconsideration—After WeightManagerAmendmentp—
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`Non—Fina| Reject
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`Information:
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`Information:
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`Fee Worksheet (SB06)
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`fee—info.pdf
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`185191
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`69h418dh7(76fah40atI7a§a(a7rIad7rhP44
`923019
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`L91eI.196L10764496¢I343Z9d0Zd416el8Ll5U
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`Total Files Size (in bytes)
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`215461
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`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
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`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
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`Post Card, as described in MPEP 503.
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`New Applications Under 35 U.S.C. 111
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`lfa new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
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`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
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`Acknowledgement Receipt will establish the filing date ofthe application.
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`National Stage of an International Application under 35 U.S.C. 371
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`lfa timely submission to enter the national stage of an international application is compliant with the conditions of 35
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`U.S.C. 371 and other applicable requirements a Form PCT/DO/E0/903 indicating acceptance of the application as a
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`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
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`New International Application Filed with the USPTO as a Receiving Office
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`lfa new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP