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 .
Examiner’s Note
In accordance with the request of the applicant and the verbal agreement described in the Examiner’s Interview Summary on 10/08/2025, Applicant’s amendments and arguments were presented to a Quality Assurance Specialist (TQAS) for Tech Center 3700 of the United States Patent and Trademark Office. The TQAS recommended maintaining the rejection under 35 U.S.C. § 101.
Response to Arguments
Applicant’s arguments filed 02/07/2025 have been fully considered but are not persuasive.
Regarding the rejection of all pending claims (Claims 2, 4, 6, 8-15, 17, 19-23, and 30-36) under 35 U.S.C. § 101, the applicant has cited MPEP 2104.06(a)(2)(III)(A) and asserted “Applicant claims using a touch sensor in the mobile device to obtain a dataset of pressure measurements of individual finger strength from the subject. Axiomatically, this recitation cannot be performed in the human mind since a pressure sensor is required to accurately measure pressure.” (Page 6). However, this limitation was considered as part of insignificant extra-solution activity to the judicial exception (e.g. mere data gathering) and not the judicial exception itself (the limitations required to be performed in the human mind using pen and paper or generic computing components).
Therefore, the rejection of the claims under 35 U.S.C. § 101 is maintained.
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.
Claim 30 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.
Regarding Claim 30, the claim recites method of assessing spinal muscular atrophy (SMA) in a subject. Thus, the claim is directed to a process, which is one of the statutory categories of invention (Step 1).
The claim is then analyzed to determine whether it is directed to any judicial exception (Step 2A, Prong One). The following limitations set forth a judicial exception:
b)…the ring-a-bell test and/or the carry-the-egg test
c)…determine at least one performance parameter from the dataset of pressure measurements of individual finger strength, wherein the individual finger strengths are evaluated independently of each other to obtain the performance parameter, wherein the performance parameter is stored or displayed in real time
d)…compare the determined at least one performance parameter to a reference
e) assessing SMA as a function of the pressure measurements of individual finger strength
These limitations describe a mathematical calculation and/or a mental process as the skilled artisan is capable of performing the recited limitations and making a mental assessment thereafter. Examiner also notes that nothing from the claims suggest that the limitations cannot be practically performed by a human with the aid of a pen and paper, or using a generic computer as a tool to perform mathematical calculations and/or mental process steps in real time. Examiner also notes that nothing from the claims suggests an undue level of complexity that the mathematical calculations and/or the mental process steps cannot be practically performed by a human with the aid of a pen and paper, or using a generic computer as a tool to perform mathematical calculations and/or mental process steps.
For example:
A human is capable of manually/mentally performing the ring-a-bell test and/or a carry-the-egg test using a generic computing device.
A human is capable of manually/mentally determining at least one performance parameter from the dataset of pressure measurements of individual finger strength, wherein the individual finger strengths are evaluated independently of each other to obtain the performance parameter, wherein the performance parameter is stored (e.g., memorized) or displayed (e.g., written down using pen and paper) in real time.
A human is capable of manually/mentally comparing the determined at least one performance parameter to a reference.
A human is capable of manually/mentally assessing SMA as a function of the pressure measurements of individual finger strength.
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 (Step 2A, Prong Two).
The following limitations amount to insignificant extra-solution activity to the judicial exception, e.g. mere data gathering and/or output. See MPEP 2106.05(g).
b) using a touch sensor in the mobile device to obtain a dataset of pressure measurements of individual finger strength from the subject, wherein the pressure measurements are taken during the ring-a-bell test and/or the carry-the-egg test
The following limitations amount to a recitation of the words "apply it" (or an equivalent) and/or nothing more than mere instructions to implement the abstract idea on a generic computer. See MPEP 2106.05(f).
a) providing software for executing a ring-a-bell test and/or a carry-the-egg-test on a mobile device
c) using a processor to determine at least one performance parameter from the dataset of pressure measurements of individual finger strength, wherein the individual finger strengths are evaluated independently of each other to obtain the performance parameter
d) using the processor to compare the determined at least one performance parameter to a reference
Therefore, these additional limitations do not integrate the judicial exception into a practical application.
Next, the claim as a whole is analyzed to determine whether any element, or combination of elements, amounts to significantly more than the identified judicial exception (Step 2B):
The following limitations do not amount to significantly more than the abstract idea for substantially similar reasons applied in Step 2A, Prong Two.
a) providing software for executing a ring-a-bell test and/or a carry-the-egg-test on a mobile device
b) using a touch sensor in the mobile device to obtain a dataset of pressure measurements of individual finger strength from the subject, wherein the pressure measurements are taken during the ring-a-bell test and/or the carry-the-egg test
c) using a processor to determine at least one performance parameter from the dataset of pressure measurements of individual finger strength, wherein the individual finger strengths are evaluated independently of each other to obtain the performance parameter
d) using the processor to compare the determined at least one performance parameter to a reference
The following limitations is/are considered to be well-understood, routine, and conventional (WURC).
The mobile device is considered to be well-understood, routine, and conventional based on statement from the applicant's specification filed 06/17/2020 (“Particular well suited as mobile devices according to this disclosure are smartphones, portable multimedia devices or tablet computers”, [0061]).
The touch sensors are considered to be well-understood, routine, and conventional based on statement from the applicant's specification filed 06/17/2020 (“Typical sensors used as means for data acquisition are sensors such as gyroscope, magnetometer, accelerometer, proximity sensors, thermometer, humidity sensors, pedometer, heart rate detectors, fingerprint detectors, touch sensors, voice recorders, light sensors, pressure sensors, location data detectors, cameras, sweat analysis sensors, GPS, Balistocardiography, and the like.”, [0020]).
The processor is considered to be well-understood, routine, and conventional based on statement from the applicant's specification filed 06/17/2020 (“The evaluation unit typically comprises a processor and a database as well as software which is tangibly embedded to said device and, when running on said device, carries out the method of this disclosure.”, [0019]).
Dependent Claims 2, 8-13, 17, 20, 26-29, 31, and 35-36 also fail to add subject matter qualifying as significantly more to the abstract independent claims as they merely further limit the abstract idea.
Dependent Claims 4, 6, 14-15, 19, 21-23, and 32-34 also fail to add subject qualifying as significantly more to the abstract independent claims as they recite limitations that do not integrate the claims into a practical application for substantially similar reasons as set forth above.
Dependent Claims 4, 6, 14-15, 19, 21-23, and 32-34 also fail to add subject matter integrating the judicial exception or qualifying as significantly more to the abstract independent claims as they do not recite significantly more than the identified abstract idea for substantially similar reasons as set forth above.
Therefore, Claims 2, 4, 6, 8-15, 17, 19-23, and 30-36 are not patent eligible under 35 U.S.C. § 101.
Examiner’s Note
The Examiner notes that Claims 30-36 are not currently rejected under prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN EPHRAIM COOPER whose telephone number is (571)272-2860. The examiner can normally be reached Monday-Friday 7:30AM-5:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jacqueline Cheng can be reached at (571) 272-5596. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN E. COOPER/Examiner, Art Unit 3791
/JACQUELINE CHENG/Supervisory Patent Examiner, Art Unit 3791