DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 03/12/2026 has been entered.
Response to Amendment
This Office Action is responsive to the amendment filed 03/12/2026 (“Amendment”). Claims 26-28, 30, 33, 38, 41, 45, 49, 50, 54, and 55 are currently under consideration. The Office acknowledges the amendments to claims 26-28, 30, 33, 38, 41, 45, 49, 50, 54, and 55, as well as the cancellation of claims 32 and 53. Claims 34-37, 39, 40, and 42-44 remain withdrawn.
The objection(s) to the drawings, specification, and/or claims, the interpretation(s) under 35 USC 112(f), and/or the rejection(s) under 35 USC 101 and/or 35 USC 112 not reproduced below has/have been withdrawn in view of the corresponding amendments.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “processing unit” in claim 26, “oscillometry measurement device” in claims 26 and 54, and “forced oscillometry apparatus” in claim 54.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof (e.g. for “processing unit,” a computer as described in ¶ 0069 of the specification as filed; for “oscillometry (measurement) device” and “forced oscillometry apparatus,” the components described in ¶ 0069 with respect to device A).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 26-28, 30, 33, 38, 41, 45, 49, 50, 54, and 55 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 of the subject matter eligibility test (see MPEP 2106.03).
Claims 26-28, 30, 33, 38, 41, 45, 49, 50, 54, and 55 are directed to a “system,” which describes one of the four statutory categories of patentable subject matter, i.e., a machine.
Step 2A of the subject matter eligibility test (see MPEP 2106.04).
Prong One: Claim 26 recites (“sets forth” or “describes”) the abstract idea of a mental process and a mathematical concept substantially as follows:
identifying, using the at least one processor of the oscillometry measuring system, parameters in the repeated oscillometry measurements; calculating, using the at least one processor of the oscillometry measuring system, at least one objective function from a combination of the parameters of the repeated oscillometry measurements, the at least one objective function capturing variability between the repeated oscillometry measurements, evaluating, using the at least one processor of the oscillometry measuring system, the at least one objective function capturing variability as a function of at least one predetermined threshold; accepting or rejecting, using the at least one processor of the oscillometry measuring system, the repeated oscillometry measurements from the evaluating.
The identifying, calculating, evaluating, and accepting or rejecting steps can be practically performed in the human mind, with the aid of a pen and paper, but for performance on a generic computer, in a computer environment, or merely using the computer as a tool to perform the steps. If a person were to see a printout of e.g. the repeated oscillometry measurements, they would be able to identify parameters therefrom, perform calculation and evaluation based on thresholds, and accept or reject measurements based thereon. There is nothing to suggest an undue level of complexity in the objective function. Therefore, a person would be able to perform these steps mentally or with pen and paper.
The identifying, calculating, evaluating, and accepting or rejecting steps also involve the mathematical concepts of parametrization, calculation of a function, evaluation based on a threshold, and filtering based on the evaluation. These steps correspond to “[w]ords used in a claim operating on data to solve a problem [that] can serve the same purpose as a formula.” See MPEP 2106.04(a)(2)(I). Appellants themselves acknowledge the mathematical nature of the steps when they discuss the function as an optimization process, a calculation that would not be able to be performed in situ, etc.
Prong Two: Claim 26 does not include additional elements that integrate the mental process or mathematical concept into a practical application. Therefore, the claims are “directed to” the mental process and mathematical concept. The additional elements merely:
recite the words “apply it” (or an equivalent) with the judicial exception, or include instructions to implement the abstract idea on a computer, or merely use the computer as a tool to perform the abstract idea (e.g. a processing unit, a non-transitory computer-readable memory, at least one processor, etc.), and
add insignificant extra-solution activity (data-gathering via: generating at least one oscillometry recording, using a generic data-gathering device (an oscillometry measurement device), receiving oscillometry measurements from the recording, and prompting the user to perform at least one other oscillometry recording if the repeated oscillometry measurements are rejected; and data-outputting via: outputting oscillometry data).
As a whole, the additional elements merely serve to gather and feed information to the abstract idea, while generically implementing it on a computer. There is no practical application because the abstract idea is not applied, relied on, or used in a meaningful way. No improvement to the technology is evident, and the outputting of the oscillometry data remains in a processing “black box” (i.e., it can be outputted to another processing component and not to e.g. a display). Therefore, the additional elements, alone or in combination, do not integrate the abstract idea into a practical application.
Step 2B of the subject matter eligibility test (see MPEP 2106.05).
Claim 26 does not include additional elements, alone or in combination, that are sufficient to amount to significantly more than the judicial exception (i.e., an inventive concept) for the same reasons as described above.
Dependent Claims
The dependent claims merely further define the abstract idea and are, therefore, directed to an abstract idea for similar reasons: they merely
further describe the abstract idea (e.g. identifying e.g. impedance (claim 33), calculating an average of coefficients of variation (claims 38 and 41), grading the measurements (claim 50), etc.), and
further describe the extra-solution activity (or the structure used for such activity) (e.g. receiving measurements based on breathing episodes (claims 27, 28, 30) or over breathing cycles (claim 55), controlling the number of measurements (claims 45 and 49), further describing the generic data-gathering device (claim 54), etc.).
With respect to e.g. claims 26 and 54, there is insufficient structural detail for the “oscillometry measurement device” or “forced oscillometry apparatus” to be considered a “particular machine,” and it is merely involved in extra-solution activity.
Taken alone and in combination, the additional elements do not integrate the judicial exception into a practical application at least because the abstract idea is not applied, relied on, or used in a meaningful way. They also do not add anything significantly more than the abstract idea. Their collective functions merely provide computer/electronic implementation and processing, and no additional elements beyond those of the abstract idea. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. There is no indication that the combination of elements improves the functioning of a computer, output device, improves another technology, etc. Therefore, the claims are rejected as being directed to non-statutory subject matter.
Allowable Subject Matter
Claims 26-28, 30, 33, 38, 41, 45, 49, 50, 54, and 55 are allowable over the prior art. Therefore, they will be allowed if related 35 USC 101 rejections are overcome.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record fails to teach or fairly suggest an oscillometry measuring system that uses an oscillometry measurement device to generate a recording and receive repeated oscillometry measurements, identify parameters in the repeated measurements, calculate an objective function from a combination of the parameters, the objective function capturing variability between the repeated measurements, evaluate the objective function capturing variability as a function of at least one predetermined threshold, accepting or rejecting the measurements from the evaluating, prompting the user to perform another recording if the repeated measurements are rejected, and outputting oscillometry data using the accepted measurements, in combination with all other recited limitations.
AAPA does not teach determining the CV with respect to an objective function, which has a minimizing or maximizing aspect to it.
Response to Arguments
Applicant’s arguments and amendments filed 03/12/2026 have been fully considered, but they are not persuasive.
The added oscillometry measurement device configured to generate a recording is merely involved in extra-solution data-gathering activity. Indeed, the Board’s position was that such elements, and Appellant’s related arguments, did not overcome the Examiner’s characterization of them as being directed to pre- or extra-solution data-gathering activity.
Regarding the temporal aspects related to the limitation “during the clinical testing session,” Applicant has not addressed why a human mind would not be able to perform the calculations with sufficient speed. The claims do not require complicated processing, as was acknowledged by the Board. The parameters and combination of parameters need not be complex. Neither do the objective function capturing variability, or comparison with a threshold. Even if Applicant’s argument was persuasive, it does not address the abstract idea of a “mathematical concept.” I.e., the claims are still directed to a patent-ineligible abstract idea.
As for prompting additional measurements, this is simply the extra-solution activity of obtaining additional measurements/data to feed to the abstract idea. And, it is unclear why the human mind would not be able to perform calculations quickly enough to prompt a patient for additional measurements. The human mind can observe the data, note signal morphology and parameters based thereon, calculate a function, and compare results to a threshold, even within the confines of a single clinical testing session.
Further, it is unclear what the alleged improved technological process is. The improvement must stem from the claim’s “additional elements,” since an improvement in an abstract idea itself is still an abstract idea. It is unclear which additional elements provide this improvement, since they are only directed to data gathering and outputting. The patient-prompting is simply a way to get more data. And, it stops the automation argued by Applicant (which in any case, is insufficient to confer eligibility).
The claims do not amount to significantly more than the abstract idea. As noted above, Applicant’s additional elements are merely directed to extra-solution activity. This includes use of a generic “oscillometry measurement device.” It is not a specialized piece of equipment, since it is merely data-gathering equipment, defined only by its function. Applicant does not claim a particular device or particular structure.
Further, if Applicant intends to argue an improvement to the technology, they must point to where in the specification the improvement is discussed, and make sure this improvement is reflected in the claims (while noting that improvements in an abstract idea itself are insufficient, automation of a manual process is generally insufficient, etc.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREY SHOSTAK whose telephone number is (408) 918-7617. The examiner can normally be reached Monday - Friday 7 am - 3 pm PT.
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/ANDREY SHOSTAK/Primary Examiner, Art Unit 3791