DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
Applicant's arguments filed 8/14/2025 have been fully considered but they are not persuasive.
Regarding double patenting, the examiner acknowledges the Applicants position that the claims are rejected under 101 and does not know the final state of claims that would be indicated as allowable. Therefore, the double patenting rejection remains until such point a terminal disclaimer is filed or the claims are amended to overcome the double patenting rejection.
Regarding 101, the Applicant identifies that one of the references used to show that a helmet/cap with dry or wet sensors and optical fibers are well understood, routine and conventional became a patent. The Applicant argues that the helmet/cap is significant for capturing data of the patient. The examiner respectfully disagrees that this is sufficient to overcome the 101 rejection, but does agree that the helmet/cap is used for data gathering (capturing data of the patient). MPEP 2106.05(a)(II) states that gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48 is not an improvement to technology and is therefore not “significantly more”. The examiner also notes that the merits of the other case (US Patent 9,005,126) are not being examined in this instance and may not contain an abstract idea, or may have been allowed before Alice guidance. Based on the evidence in the current application, capturing data using a cap/helmet is conventional and therefore not significantly more than the judicial exception.
The applicant argues the pending claims are similar to Powerblock Holding claims. The instant claims recite a method for both gathering using a non-invasive helmet/cap, processing for use with the data, and “at least one electronic report including the placement instructions for the patient”. The examiner respectfully disagrees that Powerblock is similar to the instant claims. Powerblock included a “adjuster” to change the weight of dumbbell. The instant claims do not have an adjuster. The data used is to generate “at least one report” and not transform the cap/helmet into another structure. The instant system does not automatically move the electrodes in the cap to the generated placement based on the generated instructions and is not identical to Powerblock. The instant invention does not include significantly more than the abstract idea.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 19-26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a mental process of collecting and analyzing electrophysiological data to generate a report on placement instructions for a helmet/cap without significantly more. The claim(s) recite(s) a non-invasive brain stimulation or modulation helmet/cap with dry or wet sensors and optical fibers (claim 20) and a processing device with a memory device. This judicial exception is not integrated into a practical application because helmet/cap with dry or wet sensors and optical fibers are insignificant extra-solution activity, mere data gathering, in conjunction with the mental activity and a processing device with a memory device are generic computing components used to perform the mental activity. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because helmet/cap with dry or wet sensors and optical fibers are well understood, routine and conventional as evidenced by Beach et (US Publication 2008/0275340) teaches that it is known to use a cap with sensors including Functional Near Infrared Spectroscopy to sense cerebral cortical blood flow as set forth in Paragraphs 4-6, 63, 95, 102, 104 and 136 to provide a helmet for holding the sensors to acquire cerebral cortical blood flow. Imagent (ImagentTM Functional Near Infrared Imaging System (fNIRS) Brain Imaging Using Infrared Photons. ISS Inc., 8 pages [Retrieved on Oct. 14, 2005]. Retrieved from the internet: <URL http://www.iss.com/products/imagent/Imagent.pdf>; cited by other) (image also provided in application 10/418,796) and Chenier et al (F. Chenier and M. Sawan, "A New Brain Imaging Device Based on fNIRS," 2007 IEEE Biomedical Circuits and Systems Conference, Montreal, QC, Canada, 2007, pp. 1-4, doi: 10.1109/BIOCAS.2007.4463294) discloses a fNIRS composed of a LED and photodetector placed on the scalp of the patient using a helmet. Additionally, the use of generic computing equipment does not integrate the abstract idea into significantly more than the judicial exception.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 19-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 10,548,501. Although the claims at issue are not identical, they are not patentably distinct from each other because following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claims 19-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-20 of U.S. Patent No. 9,629,568. Although the claims at issue are not identical, they are not patentably distinct from each other because following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claims 19-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-18 of U.S. Patent No. 9,165,472. Although the claims at issue are not identical, they are not patentably distinct from each other because following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William J Levicky whose telephone number is (571)270-3983. The examiner can normally be reached Monday-Thursday 8AM-5PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Hamaoui can be reached at (571)270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM J LEVICKY/Primary Examiner, Art Unit 3796