DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1-18 are pending.
Claims 1-2 and 11 are under examination.
Claims 3-10 and 12-18 are directed to non-elected species and therefore withdrawn.
Claims 1-2 and 11 are rejected.
Claim 1 is independent.
No claims are canceled or new.
Office Action Outline
Rejections applied
Abbreviations
X
112/b Indefiniteness
PHOSITA
"a Person Having Ordinary Skill In The Art before the effective filing date of the claimed invention"
112/b "Means for"
BRI
Broadest Reasonable Interpretation
X
112/a Enablement,
Written description
CRM
"Computer-Readable Media" and equivalent language
112 Other
IDS
Information Disclosure Statement
102, 103
JE
Judicial Exception
X
101 JE(s)
112/a
35 USC 112(a) and similarly for 112/b, etc.
101 Other
N:N
page:line
Double Patenting
MM/DD/YYYY
date format
Priority
Claims 1-18 are each afforded the benefit of priority to U.S provisional application 62/876,587, filed on 19 July 2019.
Overview of Withdrawal/Revision of Objections/Rejections
In view of the amendment and remarks received 12/17/2025:
• The related 112(a) and 112(b) rejections for a "processor" are withdrawn. The "processor" has been deleted from the claims.
• The 112(b) rejections for undefined terms of Equations 1 and 2 (in claim 1) are maintained with revision.
• The 101 rejection is maintained with revision.
• Note, the 103 rejection was withdrawn in the 06/18/2025 non-final Office action (see p.13-14, ¶ 45).
Declaration pursuant to 37 C.F.R. § 1.132
The Declaration received 12/17/2025 is acknowledged, and while helpful, is not persuasive in overcoming the 112(b) (for undefined terms) and 101 rejections.
Briefly, regarding the 101 rejection, while it is evident that the EQL of the claimed invention at least provides an enhancement in the abstract idea of extrapolating, reconstructing, and regenerating data with higher accuracy as compared to the CNN, it is not clear that increasing longevity of neuro-prosthetics is adequately explained in the Claims, in the Declaration, or in the Specification, as there does not appear to be data showing, e.g., time measurements for longevity of neuro-prosthetics, or even data concerning neuro-prosthetics. Therefore, there is no nexus between the abstract idea of data analysis and a real-world application of improving longevity of faulty or aging neuro-prosthetics. See full discussion in the 101 rejection below.
Regarding the 112(b) rejections for undefined terms, the Declaration is helpful, but not yet persuasive. All terms of equations should be defined in the claims or the Specification. In the Declaration, Applicant discusses an are the weights and parameters associated with each function (p.8, ¶ 4), however, weights and parameters are not disclosed in the Specification.
Note regarding Withdrawn Claims
Looking toward the possibility of allowance and rejoinder, it may be helpful to begin amending the withdrawn claims if needed according to examination of the elected claims.
In particular, when considering rejoining the withdrawn claims, it may become necessary to amend the withdrawn claims to better reflect their connection to independent claim 1. When considering 101 and the withdrawn claims (claims 3-10 and 12-18), the disclosure does not appear to have sufficient support to show any of the considerations at Step 2A Prong Two of the 101 analysis (these considerations include an improvement to technology, a particular therapy, a particular machine, and a transformation); as such it appears it would be difficult to overcome a 101 rejection of withdrawn claims which were rejoined.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 2, and 11 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims depending from rejected claims are rejected similarly, unless otherwise noted, and any amendments in response to the following rejections should be applied throughout the claims, as appropriate.
The last element of claim 1 recites "increasing the longevity of the neuro-prosthetics." Specification paragraphs [005] and [0029] disclose longevity of neural interfaces; [0041] discloses longevity of neuro-prosthetics; and [0044] discloses longevity of network; however, the written description provided is not clearly commensurate with the recited "increasing the longevity," as a link is not clear between longevity and compensating for data loss, compensating for degrading channels, and data compression/extrapolation. As appropriate, these rejections may be overcome, for example, (i) by narrowing to clearly supported embodiments and/or (ii) by clarifying on the record where support can be found and how that support relates to the recitations. It is requested that any claim amendment in this regard be accompanied by citations to support in the original disclosure. MPEP 2163 generally pertains.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, and 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Maintained 112(b) rejections:
Claim 1 recites "Equation 1) I1= Σn anf(x)n ." The terms "I1" and "an" of equation 1 are not defined in the claims or the specification, leaving the claim indefinite.
Claim 1 recites "Equation 2) C = ΣbmIm + ΣdmIm2 + Σnmfm,n Im In ". The term "C" of equation 2 is not defined in the claims or the specification, leaving the claim indefinite.
Regarding the terms above not defined in the claims or Specification, the Declaration is helpful, but not yet persuasive. All terms of equations should be defined in the claims and the Specification. In the Declaration, Applicant discusses an are the weights and parameters associated with each function (p.8, ¶ 4), however, weights and parameters are not disclosed in the Specification.
New 112(b) rejections:
In the first two elements and the last two elements of claim 1, the connection is unclear between the "faulty and/or aging neural interfaces" and the "neuro-prosthetics" as there is no recited relationship between the "faulty and/or aging neural interfaces" and the "neuro-prosthetics." Possibly amending to establish the connection would be helpful in overcoming the 112(b) rejection.
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, 2, and 11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to one or more judicial exceptions without significantly more.
MPEP 2106 details the following framework to analyze Subject Matter Eligibility:
• Step 1: Are the claims directed to a category of statutory subject matter (a process, machine, manufacture, or composition of matter)? (see MPEP § 2106.03)
• Step 2A, Prong One: Do the claims recite a judicially recognized exception, i.e. an abstract idea, a law of nature, or a natural phenomenon? (see MPEP § 2106.04(a)). Note, the MPEP at 2106.04(a)(2) & 2106.04(b) further explains that abstract ideas and laws of nature are defined as:
• mathematical concepts, (mathematical formulas or equations, mathematical relationships and mathematical calculations);
• certain methods of organizing human activity (fundamental economic practices or principles, managing personal behavior or relationships or interactions between people);
• mental processes (procedures for observing, evaluating, analyzing/ judging and organizing information);
• laws of nature and natural phenomena are naturally occurring principles and/or relations that are naturally occurring or that do not have markedly different characteristics compared to what occurs in nature.
• Step 2A, Prong Two: If the claims recite a judicial exception under Prong One, then is the judicial exception integrated into a practical application? (see MPEP § 2106.04(d))
• Step 2B: If the claims do not integrate the judicial exception, do the claims provide an inventive concept? (see MPEP § 2106.05)
Step 1:
Claims 1, 2, and 11 are directed to a 101 process, here a method, which falls under a category of statutory subject matter. (See MPEP § 2106.03). (Step 1: Yes.)
Step 2A, Prong One:
The claims are found to recite abstract ideas in the form of mental processes and mathematical concepts, as follows:
Independent claim 1 recites mental processes of: identifying faulty and/or aging neural interfaces; considering the input and output training data; considering the equation learning (EQL) algorithm uses a many-to-one function to compress the data (also considered a mathematical concept); considering the redundancy of the set of inputs is reduced by the equation learning (EQL) algorithm by establishing key variables and components that affect the at least one output, thereby allowing prediction of the at least one output from a fewer number of set of inputs (also considered a mathematical concept); and considering the EOL algorithm compensates for data loss in faulty and aging neural interfaces and increases the longevity of neuro-prosthetics.
Independent claim 1 recites mathematical concepts of: providing an equation learning (EQL) algorithm comprising: Equation 1) I1= Σn anf(x)n , wherein summation over all sensors is performed; and/or Equation 2) C = ΣbmIm + ΣdmIm2 + Σnmfm,n Im In, wherein Im is mth simple response basis set; bm is a linear term, dm is an auto-correlation coefficient, and fm,n is a cross-correlation coefficient, wherein Eqn 2 is a second order complex response and comprises generating higher order of complex stimuli by increasing auto and cross-correlation terms; process(ing) the set of inputs using the equation learning (EQL) algorithm to generate extrapolated or compressed output data points from the set of inputs; using the processor to processing process one or more of the extrapolated or compressed output data points to generate at least one output for each of a set of inputs (these limitations are also considered to recite a mental process).
Dependent claim 2 recites mental processes of: considering the EQL algorithm compensates for data loss in faulty and aging neural interfaces and increases the longevity of neuro-prosthetics by data compression up to 10,000 folds and by extrapolation, so that the data can be efficiently transmitted through the neural interfaces with low power consumption. The EQL algorithm compensating and increasing longevity by data compression and by extrapolation is also considered a mathematical concept.
Dependent claim 11 recites mental processes and mathematical concepts of considering the EQL algorithm features employ the combination of an image recognition-based feature extraction, optionally shape and/or size, to classify aspects of image recognition from a relatively small amount of training data.
Step 2A Prong One Summary: Claims 1, 2, and 11 recite mathematical concepts, and mental processes. The mathematical concepts are recited in claim 1 in the step for providing an equation learning (EQL) algorithm, which comprises: Equation 1) I1= Σn anf(x)n ; and/or Equation 2) C = ΣbmIm + ΣdmIm2 + Σnmfm,n Im In . These equations are disclosed in Specification para. [0036], and are used to generate extrapolated or compressed data; it is further noted that only one equation of the two recited is required by the claim. Regarding the generation of extrapolated or compressed data using either or both equations, such computations performed mentally, or with paper and pencil, may take considerable time and effort, and although a general-purpose computer can perform these calculations at a rate and accuracy that can far exceed the mental performance of a skilled artisan, the nature of the activity is essentially the same, and therefore also is considered to constitute a mental process.
Therefore, the claims recite elements that constitute a judicial exception in the form of an abstract idea (Step 2A, Prong One: Yes).
Step 2A, Prong Two:
In Step 2A, Prong One above, claim steps and/or elements were identified as part of one or more judicial exceptions (JEs). Here at Step 2A, Prong Two, any remaining steps and/or elements not identified as JEs are therefore in addition to the identified JE(s), and are considered additional elements. Because the claims have been interpreted as being directed to judicial exceptions (abstract ideas in this instance) then Step 2A, Prong Two provides that the claims be examined further to determine whether the judicial exception is integrated into a practical application [see MPEP § 2106.04(d)]. A claim can be said to integrate a judicial exception into a practical application when it applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception.
MPEP § 2106.04(d)(I) lists the following five example considerations for evaluating whether a judicial exception is integrated into a practical application:
(1) An improvement in the functioning of a computer or an improvement to other technology or another technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a).
(2) Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2).
(3) Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b).
(4) Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c).
(5) Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e).
The claims recite additional elements as follows:
Additional elements of data gathering including outputting data: Independent claim 1 recites additional elements of providing data, receiving data, and outputting data. Data gathering steps are additional elements which perform functions of inputting, collecting, and outputting the data needed to carry out the abstract idea. These steps are considered insignificant extra-solution activity, and are not sufficient to integrate an abstract idea into a practical application as they do not impose any meaningful limitation on the abstract idea or how it is performed, nor do they provide an improvement to technology (see MPEP § 2106.04(d)(I)).
Additional elements of computer components or neuro-prosthetics: Independent claim 1 recites additional elements of neuro-prosthetics. The claims require only generic neuro-prosthetics, which do not improve neuro-prosthetic technology, and do not integrate the recited judicial exception into a practical application (see MPEP § 2106.04(d)(1) and MPEP § 2106.05(f)).
Step 2A Prong Two summary: The claims have been further analyzed with respect to Step 2A, Prong Two, and no additional elements have been found, alone or in combination, that would integrate the judicial exception into a practical application. At this point in examination, it is not yet the case that any of the Step 2A Prong Two considerations enumerated above clearly demonstrates integration of the identified JE(s) into a practical application. Referring to the considerations above, none of: (1) an improvement, (2) a treatment, (3) a particular machine, or (4) a transformation is clear in the record. For example, regarding the first consideration for improvement at MPEP 2106.04(d)(1), the record, including the Specification, does not yet clearly disclose an explanation of improvement over the previous state of the technology field, and the claims do not yet clearly result in such an improvement.
While it is evident that the method using the EQL of the claimed invention at least provides an enhancement in the abstract idea of extrapolating, reconstructing, and regenerating data with higher accuracy as compared to the CNN, it is not clear that increasing longevity of neuro-prosthetics is shown in the Claims, in the Declaration, or in the Specification, as there does not appear to be data showing, e.g., time measurements for longevity of neuro-prosthetics, or even data concerning neuro-prosthetics. Therefore, there is no nexus between the abstract idea of data analysis and a real-world application of improving longevity of faulty or aging neuro-prosthetics. (Step 2A, Prong Two: No).
Applicant is encouraged to request an interview to discuss this and other issues if it may be helpful.
Step 2B analysis:
Because the additional claim elements do not integrate the abstract idea into a practical application, the claims are further examined under Step 2B, which evaluates whether the additional elements, individually and in combination, amount to significantly more than the judicial exception itself by providing an inventive concept. An inventive concept is furnished by an element or combination of elements that is recited in the claim in addition to the judicial exception, and is sufficient to ensure that the claim, as a whole, amounts to significantly more than the judicial exception itself (see MPEP § 2106.05).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims recite additional elements that are well-understood, routine, and conventional. Those additional elements are as follows:
Additional elements of data gathering, inputting, and outputting steps: The additional elements of providing data, receiving data, and outputting data (claim 1), do not cause the claims to rise to the level of significantly more than the judicial exception. The courts have recognized receiving or transmitting data over a network; storing and retrieving information in memory; [see MPEP§2106.05(d)(II)], as well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as extra-solution activity.
Additional elements of computer components or neuro-prosthetics: Independent claim 1 recites the additional element of neuro-prosthetics, which does not cause the claims to rise to the level of significantly more than the judicial exception, and as such do not provide an inventive concept; neuro-prosthetics are conventional and well-understood, as shown by the following reference:
Lebedev, (Physiological reviews, vol. 97(2), pp.767-837 (2017); cited on the attached form PTO-892), presents a review on brain machine interfaces and shows neuroprostheses throughout entire document.
All limitations of claims 1, 2, and 11 have been analyzed with respect to Step 2B, and none provides a specific inventive concept, as they all fail to rise to the level of significantly more than the identified judicial exception, and thus do not transform the judicial exception into a patent eligible application of the exceptions. (Step2B: NO.)
Therefore, the claims, when the limitations are considered individually and as a whole, are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Response to Applicant Arguments - 35 USC § 101
The Applicant's arguments filed 12/17/2025 have been fully considered but they are not yet persuasive.
The Applicant asserts (p.8-10), regarding n improvement to technology and an inventive concept:
• "...claim 1 comprises an inventive concept and amounts to significantly more..." (p.8, ¶ 4).
• "the amendments presented to claim 1...explicitly recite an improvement to technology, having a practical application..." (p.8, ¶ 5).
• "the method of amended Claim 1 solves the real-world problems of compensating for data loss in faulty and aging neural interfaces and increasing the longevity of neuro-prosthetics...Conventional neural decoding approaches require access to a substantial fraction of ...raw measurements from intact
electrodes/sensors to maintain optimal functional performance" (p.8, ¶ 6).
• "... Equation Learning Network (EQL)...results in an extreme order-of-magnitude compression" (p.9, ¶ 1).
• "With loss of signal, the longevity of the neural signal measurement is compromised. However,...the EQL can detect the missing information; hence, it increases longevity and increases signal to noise ratio with a smaller amount of data, which enhances the compression of the data" (p.9, ¶ 1).
• "Since the learned equations remain valid even as individual electrodes degrade, the claimed method does not require retraining or hardware replacement upon channel failure...This enables continued operation of the neural interface well beyond the point at which conventional decoding
methods experience catastrophic performance collapse. Accordingly, these examples demonstrate that the method of amended Claim 1 extends the effective operational lifetime of neural interfaces and neuro-prosthetic systems by (i) compressing ...and (ii) regenerating lost or corrupted signals as electrodes progressively fail over time..." (bridging p.9-10, emphasis added by examiner).
Specifically, the arguments are, while compelling, are not yet persuasive because:
While it is evident that the method using the EQL of the claimed invention at least provides an enhancement in the abstract idea of extrapolating, reconstructing, and regenerating data with higher accuracy as compared to the CNN, it is not yet clear that increasing longevity of neuro-prosthetics is shown in the Claims, in the Declaration, or in the Specification, as there does not appear to be data showing, e.g., time measurements for longevity of neuro-prosthetics, or even data concerning neuro-prosthetics. Therefore, there is no nexus between the abstract idea of data analysis and a real-world application of improving longevity of faulty or aging neuro-prosthetics. It is noted that Applicant's remarks regarding extending the operational lifetime of neural interfaces and neuro-prosthetic systems could be strengthened in future remarks, and may include evidence external to the disclosure.
General remarks regarding showing an improvement to technology: In the case of the instant claims, the record, including the Specification, does not yet clearly disclose an explanation of improvement over the previous state of the technology field, and the claims do not yet clearly result in such an improvement. (See MPEP 2106.04(d)(1).) Regarding showing an improvement to technology, a detailed explanation of a technical improvement may help to overcome a 101 rejection, (see MPEP 2106.04(d) and (d)(1), as well as MPEP 2106.05(a)). The explanation might include a concise statement of the improvement, including improvement over the previous state of the technology field; identification of the technology field; explanation of how the claims deliver the improvement and that reasonably all embodiments within the claim scope also will result in the asserted improvement, and extension of the explanation to persuasively demonstrate the nexus of integration of the judicial exceptions into a practical application. As further examples, argument may clearly and adequately explain cause and effect leading to improvement or, for example when such cause and effect explanation is not possible, then may include evidence (e.g. experimental data) comparing a claimed result to conventional results. Also, arguments and evidence may be extrinsic to the original disclosure, including references available after the priority date, as long as it is clear that an argument applies to all embodiments of a properly supported claim. In the present invention, the nexus between the JEs of data compression/extrapolation using the EQL and the improvement of increasing longevity of neuro-prosthetics is missing, and the 12/17/2025 arguments and Declaration do not yet persuasively explain the improvement.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Meredith A Vassell whose telephone number is (571)272-1771. The examiner can normally be reached 8:30 - 4:30.
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, KARLHEINZ SKOWRONEK can be reached at (571)272-9047.
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/M.A.V./Examiner, Art Unit 1687
/G. STEVEN VANNI/Primary patents examiner, Art Unit 1686
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