DETAILED ACTION
Note: The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s arguments filed in the reply on March 16, 2026 were received and fully considered. Claims 1, 28, and 29 were amended. Claims 30-33 are new. Please see corresponding rejection headings and response to arguments section below for more detail.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on March 16, 2026 has been entered.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-5 and 21-33 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. A streamlined analysis of claim 1 follows.
Regarding claim 1, the claim recites a system for an EEG-based anesthetic monitoring device for age-compensated monitoring of a patient experiencing an administration of at least one drug having anesthetic properties. Thus, the claim is directed to a product, which is one of the statutory categories of invention.
The claim is then analyzed to determine whether it is directed to any judicial exception. The following limitations set forth a judicial exception:
“transform, in real time... the EEG data from the plurality of EEG sensors into signal markers; determine... a patient age by comparing signal markers from the EEG data with signal markers or signatures associated with reference EEG data, and generate, in real time... a report including at least the EEG data adjusted for the patient age based on at least one of the signal markers, wherein the EEG data is adjusted for an amplifier gain, and a regimen for anesthetic care, post-anesthesia care, or intensive care based on the EEG data adjusted for the patient age.”
These limitations describe a mental process as the skilled artisan is capable of analyzing EEG data and making a mental assessment thereafter. Furthermore, nothing from the claims and/or accompanying specification suggest that the identified judicial exception cannot be practically performed mentally, or using simple pen/paper.
Next, the claim as a whole is analyzed to determine whether any element, or combination of elements, integrates the identified judicial exception into a practical application.
For this part of the 101 analysis, the following additional limitations are considered:
“...a plurality of EEG sensors configured to acquire EEG data from the patient while receiving the at least one drug having anesthetic properties; at least one processor configured to: acquire EEG data from the plurality of EEG sensors...”
These additional limitations do not integrate the judicial exception into a practical application. Rather, the additional limitations are each recited at a high level of generality such that it amounts to insignificant pre-solution activity, e.g., mere data gathering steps necessary to perform the mental process.
Furthermore, the additional limitations do not add significantly more to the judicial exception as they pertain to widely known techniques in prior patient monitoring systems. For instance, the limitation “a plurality of EEG sensors” amounts to a conventional and widely known means for obtaining EEG data.
Independent claims 28 and 29 are also not patent eligible for substantially similar reasons.
Dependent claims 2-5 and 21-33 also fail to add something more to the abstract independent claims as they merely further limit the abstract idea and/or recite additional limitations that do not integrate the identified judicial exception into a practical application for substantially similar reasons set forth above.
Therefore, claims 1-5 and 21-33 are not patent eligible under 35 USC 101.
Response to Arguments
Applicant's arguments filed with respect to the 35 USC 101 rejections raised in the previous office action have been fully considered, but they are not persuasive. Applicant appears to raise the following main arguments:
The claim recites a particular transformation and, thus, ins integrated into a practical application (remarks, pgs. 6-8, 10-11, 12);
The claimed invention pertains to an improvement in technology and, thus, is integrated into a practical application (remarks, pgs. 8-9);
The claims invention recites a concrete technical step that cannot be performed mentally (remarks, pgs. 9-10, 11); and
The claimed invention is integrated into a practical application, citing USPTO Example 37 (remarks, pgs. 12-14).
Examiner respectfully disagrees.
First, Applicant appears to argue that “transforming the EEG data from the plurality of EEG sensors into signal markers… wherein the EEG data is adjusted for an amplifier gain, and a regimen for… care based on the EEG data adjusted for the patient age” integrates a judicial exception into a practical application. Examiner is not convinced that applying a mathematical transformation, as set forth in the instant claims, integrates the recited judicial exception into a practical application; and is not significantly more the identified judicial exception. Rather, Examiner argues that the purported “transformation” corresponds to the judicial exception itself. Moreover, purely mental processes (Note: Examiner maintains the claims recite a mental process) are not considered an eligible transformation1. Therefore, applicant’s “particular transformation” arguments are not persuasive.
Second, Examiner maintains that applicant’s “improvement to technology” argument is not persuasive. Applicant appears to argue that the claims recite an improvement “in operation of a medical device” (remarks, pg. 9). However, the operation of the device (generically recited processor and EEG sensors) is not being improved. Rather, the processor is generically recited and merely being utilized as a tool (to implement the identified judicial exception); while a plurality of EEG sensors is recited at a high level of generality to obtain known EEG data, which ultimately amounts to pre-solution activity, data gathering, etc. As the purported improvement appears to lie within the judicial exception itself, Examiner maintains the claims are not patent eligible2. Therefore, applicant’s “improvement” arguments are not persuasive.
Applicant goes on to argue that the claims do not recite a mental process by appearing to highlight the “real-time” aspects of the claim (remarks, pg. 10). Examiner respectfully disagrees and maintains that nothing from the instant claims suggest that the skilled artisan would not be able to practically perform the limitations corresponding to the judicial exception mentally, or using simple pen/paper (having first obtained data from conventional EEG sensors). Therefore, these arguments are not persuasive.
Lastly, applicant argues that utilizing the recited display, as set forth in independent claim 29, amounts to a practical application, relying on USPTO Example 37. Examiner respectfully disagrees. Examiner does not find USPTO Example 37 to be on point with respect to the instant claims. Moreover, Examiner argues the use of a display, as set forth in claim 29, amounts to insignificant extra solution activity (MPEP 2106.05(g)). The recited display is also highly generalized and is not being improved, but rather being used as means for outputting the result of a calculation. Therefore, these arguments are not persuasive.
For at least these reasons, the 35 USC 101 rejections are maintained. Please see corresponding rejection heading above for more detail.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PUYA AGAHI whose telephone number is (571)270-1906. The examiner can normally be reached M-F 8 AM - 5 PM.
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, Alexander Valvis can be reached at 5712724233. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PUYA AGAHI/Primary Examiner, Art Unit 3791
1 MPEP 2106.05(c) “Purely mental processes… are not considered an eligible transformation”
2 MPEP 2106.05(a) “the judicial exception alone cannot provide the improvement.”
Prosecution Insights