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 (i.e., changing from AIA to pre-AIA ) 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.
Response to Arguments
Applicant's arguments filed October 16, 2025 have been fully considered but they are not persuasive.
Regarding the 112(a):
Examiner notes that machine learning algorithm appears in claims 23-24 and 33. The disclosure provides no support for the details of said machine learning algorithm. If it is part of the claimed invention then details would be required. But none are disclosed and as such the term lacks written description. The cited drawings by the Applicant provide no details of what the machine learning algorithm entails. The language appears in claims 23-24 and 33 not in claims 16 and 27, so the 112a is applied to claims 23-24 and 33. A 112d for failing to further limit is not being applied to the terms as it appears Applicant has alluded to in their response. Therefore the 112a remains.
Regarding the 101:
From MPEP 2106.05(g): When determining whether an additional element is insignificant extra-solution activity, examiners may consider the following:
(1) Whether the extra-solution limitation is well known. See Bilski v. Kappos, 561 U.S. 593, 611-12, 95 USPQ2d 1001, 1010 (2010) (well-known random analysis techniques to establish the inputs of an equation were token extra-solution activity); Flook, 437 U.S. at 593-95, 198 USPQ at 197 (a formula would not be patentable by only indicating that is could be usefully applied to existing surveying techniques); Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328-29, 121 USPQ2d 1928, 1937 (Fed. Cir. 2017) (the use of a well-known XML tag to form an index was deemed token extra-solution activity). Because this overlaps with the well-understood, routine, conventional consideration, it should not be considered in the Step 2A Prong Two extra-solution activity analysis.
(2) Whether the limitation is significant (i.e. it imposes meaningful limits on the claim such that it is not nominally or tangentially related to the invention). See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16, 112 USPQ2d 1750, 1755 (Fed. Cir. 2014) (restricting public access to media was found to be insignificant extra-solution activity); Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242, 120 USPQ2d 1844, 1855 (Fed. Cir. 2016) (in patents regarding electronic menus, features related to types of ordering were found to be insignificant extra-solution activity). This is considered in Step 2A Prong Two and Step 2B.
(3) Whether the limitation amounts to necessary data gathering and outputting, (i.e., all uses of the recited judicial exception require such data gathering or data output). See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (presenting offers and gathering statistics amounted to mere data gathering). This is considered in Step 2A Prong Two and Step 2B.
Examiner notes that communicating the breathing channel using a communication channel is merely outputting of data which does not provide significantly more.
Examiner notes the GPS example is not analogous to the claimed invention because that GPS example relies on the generation of pseudoranges which was deemed to not be practically performable in the human mind. Nothing in the claimed invention is analogous to that. The instant claims are claimed at a high level of generality.
Examiner notes further it appears that applicant conflates additional elements and abstract ideas. A motion sensor claimed as generic as in the claimed invention is not anything but a conventional sensor claimed at a high level of generality. Measuring motion with a motion sensor is extra-solutionary data gathering which does not provide significantly more. Measuring motion is not considered an abstract idea in the vein as calculating an absolute position of a GPS receiver. Applicant’s specification does not provide any specifics as to how the motion sensor is anything but a generic and conventional motion sensor. In fact, Applicant’s specification instead clearly shows that the motion sensors are conventional: ‘Small scale linear accelerometers and angular accelerometers or gyroscopes are used in mobile electronic devices such as mobile telephones and similar sensors can be used as sensors 10’ (Page 10, Lines 1-3). Further conventional sensors and processors claimed at a high level of generality are not particular machines. To reiterate, Examiner notes that the measuring steps are considered additional elements which merely invokes a conventional known in the art elements claimed at a high level of generality that are merely used for extra-solution data gathering which would be necessary for performing the abstract idea. They are not considered abstract ideas themselves. All the abstract ideas recited in the claim were identified in the 101 and are identified in the 101 below again. The entire claimed was examined and viewed as a whole. Nothing in the claim is recited beyond the abstract ideas, extra-solutionary data gathering and output and additional elements which are recited at a high level of generality and do not provide significantly more.
Further from MPEP 2106.04(a)(2) III: Examples of claims that recite mental processes include: • a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016); This is what the claimed invention is analogous to. All the claimed invention does it receive information, analyze the information, and then output the results of the analysis. Receiving data from a sensor falls within this. Integrating the data falls within this. Producing an output falls within this. Communicating a result of the data analysis falls within this. There is nothing in the claim that provides significantly more. Examiner notes the mental process grouping is “Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion)”. Receiving data is considered observation. Integrating data is considered evaluation. Producing and communicating data is considered judgment and opinion. Thus, clearly the claims are tied to abstract ideas.
Therefore, Applicant’s arguments are not persuasive and the 101 rejection remains.
Response to Amendment
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 23-24 and 33 are 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 23-24 recites ‘a machine learning algorithm’. The term “machine learning algorithm” is treated as a black box and the specification does not describe the specifics of how to achieve the above-recited function(s) with this algorithm. For example, How many layers are there? How is the data propagated? What logics are programmed to help the machine learning algorithm make a decision? What are the weightings? Are other training concepts used such as regression? The specification only recites only convention attributes to known and conventional machine learning systems but doesn’t provide any details regarding the specific machine learning algorithm to be used in the claimed invention. It is not enough that a skilled artisan could devise a way to accomplish the function because this is not relevant to the issue of whether the inventor has shown possession of the claimed invention. See MPEP 2161.01(I). Therefore, adequate disclosure is needed. This similarly applies to claim 33.
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 16-25 and 27-35 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding Step 1, claims 16-25 and 27-35 are all within at least one of the four categories (claims 16-25 and 35 being apparatuses and claims 27-34 being processes).
Regarding Step 2, the independent claims 16 and 35 recite:
Receiving a value of the time-variable displacement as at least one sensor output signal…the at least one sensor output signal indicating the respiratory motion of the subject;
Integrating the value of the time-variable displacement as the at least one sensor output signal to obtain a measure of the respiration volume; and
producing a respiration measurement output, different to the at least one sensor output signal, that provides the measure of respiration volume of the subject and is quantified as a change relative to a previously determined respiration volume of the subject
determine a breathing pattern of the subject
communicating the breathing pattern
Independent claim 27 recites:
receiving a value of the time-variable displacement as at least one sensor output signal…the at least one sensor output signal indicating the respiratory motion of a chest wall of a subject;
integrating the value of the time-variable displacement as the at least one sensor output signal to obtain a measure of respiration volume; and
producing a respiration measurement output, different to the at least one sensor output signal, that provides the measure of respiration volume of the subject, and is quantified as a change relative to a previously determined respiration volume of the subject
determine a breathing pattern of the subject
communicating the breathing pattern
The above claim limitations are tied to the abstract idea of mental processes in that they are concepts that can be performed in the human mind. This group encompasses concepts performed in the human mind (including an observation, evaluation, judgment, opinion). These limitations describe a mental process (including an observation, evaluation, judgment, opinion) under the broadest reasonable standard, as a skilled practitioner is capable of performing the recited limitations and making a mental assessment thereafter. Examiner notes that nothing from the claims suggests that the limitations cannot be practically performed by a medical, biomedical or engineering professional with the aid of a pen and paper; their knowledge gained from education, background, or experience; or by using a generic computer as a tool to perform mental process steps in real time. Examiner additionally notes that nothing from the claims suggests and undue level of complexity that 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 the mental process steps.
The claimed steps of receiving (observation), producing (evaluation and judgement), integrating (evaluation), determine (evaluation and judgement), and communicating (judgement and opinion) can be practically performed in the human mind using mental steps or basic critical thinking, which are types of activities that have been found by the courts to represent abstract ideas.
Examples of ineligible claims that recite mental processes include:
• a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group, LLC v. Alstom, S.A.;
• claims to “comparing BRCA sequences and determining the existence of alterations,” where the claims cover any way of comparing BRCA sequences such that the comparison steps can practically be performed in the human mind, University of Utah Research Foundation v. Ambry Genetics Corp.
• a claim to collecting and comparing known information (claim 1), which are steps that can be practically performed in the human mind, Classen Immunotherapies, Inc. v. Biogen IDEC.
See p. 7-8 of October 2019 Update: Subject Matter Eligibility.
Regarding the dependent claims, the dependent claims are directed to either 1) steps that are also abstract or 2) additional data output/processing that is well-understood, routine and previously known to the industry. Although the dependent claims are further limiting, they do not recite significantly more than the abstract idea. A narrow abstract idea is still an abstract idea and an abstract idea with additional well-known equipment/functions is not significantly more than the abstract idea.
The additional elements recited include:
-‘at least one processor’ in claims 16-20 and 22-25
-‘at least one non-transitory memory’ in claim 16
-‘a first motion sensor’/‘a motion sensor’ in claims 16, 27, and 35
-‘measuring a time-variable displacement … using the first motion sensor’ in claims 16, 27, and 35
-‘a communication channel’ in claims 16, 27, and 35
-‘an apparatus’ in claims 16, 27, and 35
-‘machine learning algorithm’ in claim 23-24 and 33
-‘unsupervised learning’ in claim 27
-‘supervising learning’ in claim 18
-‘at least one second motion sensors’ in claims 25 and 34
-‘a non-transitory memory’ in claim 27
-‘a processor’ in claim 27
-‘a non-transitory program storage device’ in claim 35
-‘an apparatus’ in claim 35
This judicial exception is not integrated into a practical application because:
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims amount to simply implementing the abstract idea on a computer. For example, the recitations regarding the generic computing components for receiving, producing, integrating, determine, and communicating merely invoke a computer as a tool. Each of the additional element limitations are recited at a high level of generality (i.e., as a generic processor performing a generic computer function or as a generic sensor performing a mere extra-solution data gathering) such that it amounts to no more than mere instructions to apply the judicial exception using a generic computer component or generic sensor component. Examiner notes those in the relevant field of art would recognize the above-identified additional elements as being well-understood, routine, and conventional means for extra solution data-gathering and computing, as demonstrated by the prior art provided below teaching said components. The claimed additional elements “are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a).” Berkheimer Memorandum, III. A. 3. Furthermore, the court decisions discussed in MPEP § 2106.05(d)(ll) note the well-understood, routine and conventional nature of such additional elements as those claimed. See option III. A. 2. in the Berkheimer memorandum. Applicant’s specification clearly shows that the motion sensors are conventional: ‘Small scale linear accelerometers and angular accelerometers or gyroscopes are used in mobile electronic devices such as mobile telephones and similar sensors can be used as sensors 10’ (Page 10, Lines 1-3).
The additional elements do not provide an improvement to a computer or other technology. “The McRO court indicated that it was the incorporation of the particular claimed rules in computer animation that "improved [the] existing technological process", unlike cases such as Alice where a computer was merely used as a tool to perform an existing process.” MPEP 2106.05(a) II. The claims recite a computer that is used as a tool for receiving, producing, integrating, determine, and communicating.
The claims do not apply the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition. Rather, the abstract idea is utilized to determine a relationship among data to provide a medical measurement.
The claims do not apply the abstract idea to a particular machine.
When considered in combination, the additional elements (i.e. the generic computer functions and conventional equipment/steps) do not amount to significantly more than the abstract idea. Looking at the claim limitations as a whole adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
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 PATRICK FERNANDES whose telephone number is (571)272-7706. The examiner can normally be reached Monday-Thursday 9AM-3PM EST.
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/PATRICK FERNANDES/Primary Examiner, Art Unit 3791
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