DETAILED ACTION
This application is being examined under AIA first-to-file provisions.
Status of claims
Canceled:
none
Pending:
1-20
Withdrawn:
none
Examined:
1-20
Independent:
1 and 17-18
Allowable:
none
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"
x
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
x
102, 103
JE
Judicial Exception
x
101 JE(s)
112/a
35 USC 112(a) and similarly for 112/b, etc.
x
101 Other
N:N
page:line
x
Double Patenting
MM/DD/YYYY
date format
Priority
As detailed on the 12/9/2021 filing receipt, this application claims priority to no earlier than 5/27/2020. All claims have been interpreted as being accorded this priority date.
Objection to the specification: title
The title should be amended to more specifically reflect the claims, particularly the independent claims and referencing steps/elements: setting the context of the invention, particular to all claims, and distinguishing the instant application from any related applications. The title should be "descriptive" and "as... specific as possible" (MPEP 606, 1st para. and 37 CFR 1.72; also MPEP 606.01 pertains).
Claim objections
Claims 4, 6-7, 11 and 14 are objected to because of the following informalities. Appropriate correction is required. In each objection the claims are definite with respect to the issues cited here because interpretation would have been sufficiently clear to PHOSITA, but nonetheless the claims are objected to for consistency among the claims or as otherwise indicated. With regard to any suggested amendment below to overcome an objection, in the subsequent examination it is assumed that each amendment is made. However, equivalent amendments also would be acceptable. Any amendments in response to the following objections should be applied throughout the claims, as appropriate.
The following issues are objected to:
Claim
Recitation
Comment
4, 6, 11, 14
comprises... comprises
Some punctuation or alternative language would be preferable to avoid the confusion of this recitation. Possibly not all of the earlier recited element needs to be repeated or another identifier can be added and used.
7
The computer-implemented method of claim 1, identifying
Appears to be missing "wherein" before "identifying."
Claim interpretations
The following claim interpretations apply:
Claim
Recitation
Comment
1
daily
Defined in the specification at [14]
18
that analyzes the biomarker data for an early indication of an illness
Interpreted as intended use; the below 112/b rejection regarding mixed statutory class also pertains.
14-15
machine-learning
classifier
The recitation invokes 112/f and links to [27] of the specification. However, in claim 15, the same recitation does not invoke because claim recites further structure sufficient to preclude invoking.
Claim rejections - 112/b
The following is a quotation of 35 USC 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.
Claims 1-20 are rejected under 112/b, as indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the 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. With regard to any suggested amendment below, for claim interpretation during the present examination it is assumed that each amendment suggested here is made. However equivalent amendments also would be acceptable.
The following issues cause the respective claims to be rejected under 112/b as indefinite:
1, 17, 18
early indication of an illness;
The recited "early" is a term of relative or vague degree or form of association, neither adequately defined in the specification nor having a well-known definition in the art. (MPEP 2173.05(b) pertains.) While the common meaning of "early" is well-known, that common meaning is relative, i.e. relative to an ambiguous threshold as to what is or is not early. The specification does disclose: "The term 'early indication,' as used herein, generally refers to changes in biomarkers that take place before the onset of the more readily identifiable symptoms of an illness." However, this definition also relies on the additional relative condition of "more readily identifiable," and the claim requires no context giving meaning to concepts such as which biomarkers, which symptoms, which illness, etc. Lacking such context, PHOSITA would not know how to interpret the relative term "early." Depending on resolution of this rejection, a 112/a rejection also may apply. Possibly the term should simply be deleted, since it does not appear to be essential to the claim, the objective of the claim requiring primarily any useful indication, as opposed to particularly an "early" indication. Any improvement that results from providing an early or earlier indication could be required through other recitation ensuring this result through a more detailed recitation of steps. Claims 17-18 are rejected similarly.
1, 20
the illness detected by the at least one
wearable device
Lacks clear antecedent. There is no preceding and clearly recited "detected" or detection. This rejection could be overcome, for example, by amending "determining" to "detecting." Similarly, in claim 20, the recited "the early indication of the illness detected by the server" renders that claim indefinite.
9
third-party
The term is not interpretable for lack of recited context (and lacking any clear definition in the specification), e.g. as to the delimiting first and second parties.
10
proximity
This is a term of relative or vague degree or form of association, neither defined in the specification nor having a well-known definition in the art. (MPEP 2173.05(b) pertains.)
18-20
...application... that:
retrieves...; and
sends...
Claim 18 is rejected as directly reciting a machine and a process in the same claim. A claim to a machine, e.g. here a "system," cannot directly recite a process step such as "retrieves" or "sends." MPEP 2173.05(p).II pertains. Possibly such a step may be claimed indirectly via the structure of stored computer instructions. Additionally, it may help to add "configured to" before the process step so as properly focus on claimed structure. Regarding any software-embodied steps, it should be clear whether such steps are in fact software-embodied, and it should be clear whether such software is comprised by the claimed machine or manufacture. MPEP 2173.05(p).II pertains regarding a claim directed to both product and process.
Claims 19-20 are rejected similarly both as depending from claim 18 and in view of their recited process steps.
This contrasts with claim 17 not similarly rejected.
18
A system comprising:
a monitoring application installed on a mobile device
While the "monitoring application" is recited as "installed on a mobile device," it nonetheless is unclear whether the recited "system" must comprise the "mobile device." In a BRI in at least some embodiments, the "system" need not comprise the "device," and there is a related 101 rejection below.
18
monitoring application
The recitation is indefinite under 112/b after invoking 112/f as reciting means (or an equivalent, nonce term, here "application") and function and/or result (here "monitoring") without specifying steps or structure to prevent invoking, and it is not clear that the specification discloses sufficient structure, material, or acts rather than just function (e.g. [13]), noting that any disclosure must be clearly linked to the invoking recitation). Claim 19 attributes sufficient function to the invoking recitation to remedy this rejection with respect to claim 19 only.
18, 20
biomarker data...
wearable device application...
illness
These recitations are not interpretable for lack of context in the absence of any recited person, user, patient, etc. Similarly, in claim 20, the recited "team leader" is not interpretable for lack of recited context as to what constitutes a team and what is the relationship to the recitations identified here. This contrasts with claim 17.
20
team leader application
The recitation is indefinite under 112/b after invoking 112/f as reciting means (or an equivalent, nonce term, here "application") and function and/or result (here "team leader") without specifying steps or structure to prevent invoking, and it is not clear that the specification discloses any related structure, material, or acts clearly attributable to this recitation, noting that any disclosure must be clearly linked to the invoking recitation). The below 112/a rejection also pertains.
20
a computing device
The relationships between this instance of "computing device" and the previously recited "a monitoring application," "a mobile device" and "at least one wearable device application" are unclear. This rejection could be overcome by, as an example, further specifying the "computing device," for example the relationship of this computing device to the "team leader," etc.
Each issue above causes the scope of the claim to be indefinite because it is unclear how the claim elements relate to each other and to the claim as a whole.
Claim Rejections - 112/a
The following is a quotation of 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.
Written Description
Claim 20 is rejected under 112/a as failing to comply with the written description requirement. The claims read on subject matter which is not described in the specification in such a way as to reasonably convey to PHOSITA that the inventors, at the time the application was filed, had possession of the claimed invention. Claims depending from rejected claims are rejected similarly, unless otherwise noted. With regard to any suggested amendment(s) below to overcome a rejection, equivalent amendments also would be acceptable.
Claim 20 recites "...a team leader application..." The specification includes no clearly related disclosure. The specification discloses "leader" ([19-20, 22, 29, etc.]) and "application" (e.g. [12-13, 23, etc.]) but not the two together. Thus, it is not clear that the disclosure provides written description support.
It is insufficient that the original claims recite the term if, as here, the meaning of the term is unclear. MPEP 2161.01.I generally pertains and in particular the 5th paragraph there.
As appropriate, these rejections may be overcome, for example, (i) by amending 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.
Any amendment should be propagated throughout the claims as appropriate.
In general, it is requested that any claim amendment in this regard be accompanied by citations to support in the original disclosure.
MPEP 2163 pertains.
Claim rejections - 35 USC 103
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 is incorrect, any correction of the statutory basis 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.
The following is a quotation of 35 USC 103 which forms the basis for all obviousness rejections set forth in this office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-20
Claims 1-20 are rejected under 35 USC 103 as unpatentable over Paradiso in view of WHO and Powell (US PGPUB 2006-0149597), each as cited on the attached form 892.
Claim 1 recites a method for using a wearable device to monitor a biomarker and determine an early indication of illness.
Paradiso teaches:
wearable device that monitors a biomarker -- title
receiving information about activity of the biomarker -- abstract: "telecommunications" and p. 284, 1st col., 4th para.: "wireless communication"
analyzing the activity for indication of a illness -- §I, 1st para.: "early illness detection" and p. 284, 2nd col., 1st para.: "The use of intelligent -based systems provided to physicians the data to timely detect and manage health risks, early illness diagnose..."
transmitting an alert about the indication -- abstract and p. 283, 1st col., penultimate para.: "alert messages" and p. 283, 2nd col., 2nd para. and p. 284, 1st col., last para.: "alert functions"
To the extent that Paradiso does not explicitly monitor for an illness, then it nonetheless would have been prima facie obvious to apply the methods of Paradiso to monitoring for illness, for example any infectious disease known to affect heart rate, as taught by WHO as, for example, "CRIMEAN-CONGO HAEMORRHAGIC FEVER (CCHF)... clinical signs include tachycardia (fast heart rate)," (WHO: p. 79, §4, 4th bullet; and entire document).
Powell teaches a monitoring application installed on a mobile device (Powell: title; and entire document).
To the extent that the limitations of the claims are not explicitly taught with the recited relationships and sequencing among limitations, for example the inherency or obvious equivalence to the recited "daily activities" and the generation and transmission of some information while other information is only explicitly taught as generated, then in the absence of a secondary consideration to the contrary it would have been prima facie obvious to PHOSITA to try the recited combination of limitations as those limitations are taught individually as described above. Trying the recited combinations would have been examples of combining prior art elements, in some instances elements taught within the same reference, according to known methods to yield predictable results and choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
The art is applied to claims 17-18 as described above for claim 1. The hardware of claims 17-18 is obvious over the hardware of at least Paradiso (Paradiso: abstract; and entire document).
Claim 2 adds alerting the user, which limitation is taught as the "Users feedback" (Paradiso: Fig. 2; §I, 2nd para.; p. 284, 1st col., 3rd para.; and entire document).
Claim 3 adds alerting a team leader, which limitation reads on the "remote monitoring... professional workers engaged in extreme environmental conditions" (Paradiso: §I, 1st para.; and entire document) as well as on the inherent team of user and health care provider (Paradiso: p. 284, 2nd col., 1st para.; and entire document).
Claim 4 adds selecting a specific illness, which limitation is taught as "illness diagnose" (Paradiso: p. 284, 2nd col., 1st para.; and entire document) and "model-based diagnosis" (Paradiso: p. 285, 2nd col., 2nd para.; and entire document).
Claim 5 adds receiving a selection of the illness from a team leader, which limitation is taught as "...feedback and advice to the patient in nontechnical terms" (Paradiso: p. 285, 2nd col., 3rd para; and entire document), in which the recited "leader" reads on the originator of the feedback and advice.
Claim 6 adds comparison to baseline activity, which limitation is taught as "following a long lasting (18 min) normal relaxation period" (Paradiso: p. 285, 1st col., 3rd para; and entire document).
Claim 7 adds particular data routing, which limitations are obvious over Figs. 1-2 of Paradiso (and all of Paradiso).
Claim 8 adds particular biomarkers, at least one of which is taught as "...RR variability..." (Paradiso: p. 285, 1st col., 2nd para; and entire document).
Claim 9 adds an exercise monitor, which limitation is taught as "intensity of physical activity" and "exercising conditions" (Paradiso: p. 284, 1st col., 3rd para.; §IV, 3rd para.; and entire document) and monitoring as otherwise taught by Paradiso. The above 112/b rejection regarding "third-party" also pertains.
Claim 10 adds location sensing, which limitation is taught inherent in "3G (GPRS/UMTS) wireless communication" (Paradiso: p. 284, 1st col., 4th para.; and entire document). Also, Paradiso teaches application to multiple "users" (Paradiso: §I, 1st para.; and entire document). The above 112/b rejection of the term "proximity" also pertains.
Claim 11 specifies multiple biomarkers and wearable devices, which limitations are taught as "distributed sensor... functions" (Paradiso: §I, 2nd para.; and entire document) and multiple biomarkers (Paradiso: §II, 1st para.; and entire document).
Claim 12 specifies daily activities, at least one of which limitations is taught as "intensity of physical activity" and "exercising conditions" (Paradiso: p. 284, 1st col., 3rd para.; §IV, 3rd para.; and entire document) and "sleeping" (Paradiso: §IV, 3rd para.; and entire document).
Claim 13 specifies analysis of readiness for a task, which reads on "...identify the influence of the psycho-emotional state of the subject in the performance of a physical activity..." and "...appropriate feedback can be given to the patient" (Paradiso: p. 286, 1st col., 5th-6th para.; and entire document).
Claims 14-15 adds a machine-learning classifier and convolutional neural network, which limitations, in a BRI, read on the "local intelligence" and "'intelligent' system" (Paradiso: abstract; p. 283, 2nd col., 2nd para.; p. 284, 2nd col., 1st para.; and entire document), the recited convolutional neural network being a prima facie obvious to try choice among known possibilities with predictable outcomes.
Claim 16 specifies wearable devices components, at least one of which limitations would have been obvious over "a number of electrodes positioned on the thorax" (Paradiso: §IV, 1st para.; and entire document).
Claims 19-20 specify display of an alert, which limitations are obvious over "Users feedback" (Paradiso: Fig. 2; §I, 2nd para.; p. 284, 1st col., 3rd para.; and entire document) and "remote monitoring... professional workers engaged in extreme environmental conditions" (Paradiso: §I, 1st para.; and entire document) as well as the inherent team of user and health care provider (Paradiso: p. 284, 2nd col., 1st para.; and entire document). Also, the 112 rejections of claims 19-20 pertain.
Combining Paradiso and WHO
In the absence of a secondary consideration to the contrary, it would have been prima facie obvious for PHOSITA to modify the disease monitoring of Paradiso using the related teaching of WHO. As motivation to combine, an advantage taught by WHO of modifying methods such as those of Paradiso would have been WHO's teaching that "...clinical signs include tachycardia (fast heart rate)..." (WHO: p. 79, §4, 4th bullet; and entire document). Thus, PHOSITA would have been motivated to modify Paradiso using the above techniques of WHO in order to achieve the above advantage. One would have had a reasonable expectation of success in doing so because Paradiso and WHO are generally drawn to related teaching, and PHOSITA would have understood how to and would have been motivated to apply WHO's teaching to the related teaching of Paradiso.
Regarding each of the above claim rejections, to the extent that the limitations within a claim are taught individually but are not explicitly taught with the recited relationships and sequencing among limitations, then in the absence of a secondary consideration to the contrary, it would have been prima facie obvious to PHOSITA to try the recited combination of limitations as those limitations are taught individually as described above. Trying the recited combinations would have been examples of combining prior art elements, in some instances elements taught within the same reference, according to known methods to yield predictable results and choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Combining Paradiso and Powell
In the absence of a secondary consideration to the contrary, it would have been prima facie obvious for PHOSITA to modify the disease monitoring of Paradiso using the related teaching of Powell. As motivation to combine, an advantage taught by Powell of modifying methods such as those of Paradiso would have been Powell's teaching that "It would be desirable to provide a system that is capable of transmitting patient physiological data..." and communicate "...more than a single physiological parameter and could display the same with a discernable resolution on a small display screen such as may be present on a PDA or cellular phone" (Powell: [20]; and entire document). Thus, PHOSITA would have been motivated to modify Paradiso using the above techniques of Powell in order to achieve the above advantage. One would have had a reasonable expectation of success in doing so because Paradiso and Powell are generally drawn to related teaching, and PHOSITA would have understood how to and would have been motivated to apply Powell's teaching to the related teaching of Paradiso.
Regarding each of the above claim rejections, to the extent that the limitations within a claim are taught individually but are not explicitly taught with the recited relationships and sequencing among limitations, then in the absence of a secondary consideration to the contrary, it would have been prima facie obvious to PHOSITA to try the recited combination of limitations as those limitations are taught individually as described above. Trying the recited combinations would have been examples of combining prior art elements, in some instances elements taught within the same reference, according to known methods to yield predictable results and choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Claim rejections - 101
35 USC 101 reads:
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.
For each rejection below, dependent claims are rejected similarly as not remedying the rejection, unless otherwise noted.
Matter belonging to no statutory category -- claims 18-20
Claims 18-20 are rejected under 35 USC 101 because the claimed inventions are directed to non-statutory subject matter.
Claim 18 is to "a... system," which, in this instance, is not interpreted as clearly belonging to any category listed in 101, e.g. a machine or manufacture. In a BRI, the claim reads on software comprising no structure other than software. The claim is not recited as a process, and the claim is not limited to any particular structure as machine or manufacture. In a BRI, the recited "that is installed on a mobile device" does not clearly require the "mobile device" as being comprised by the "system." The claim reads on transitory propagating signals which are not proper patentable subject matter because it does not fit within any of the four statutory categories of invention (In re Nuijten, Federal. Circuit, 2006).
None of the dependent claims remedy this rejection.
As appropriate, this rejection can be overcome by, for example, amending to recite the "mobile device" explicitly as comprised by the "system." More generally, additional structure may be recited such as non-transitory computer-readable recording medium comprising computer instructions that accomplish the recited steps. The above 112/b rejection regarding mixed statutory class pertains.
Judicial exceptions (JE) to 101 patentability
Claims 1-20 are rejected under 35 USC 101 because the claimed inventions are not directed to patent eligible subject matter. After consideration of relevant factors with respect to each claim as a whole, each claim is directed to one or more JEs (i.e. an abstract idea, a natural phenomenon, a law of nature and/or a product of nature), as identified below. Any elements or combination of elements beyond the JE(s) (i.e. "additional elements") are conventional and do not constitute significantly more than the JE(s). Thus, no claim includes additional elements amounting to significantly more than the JE(s), as explained below. See MPEP 706.03(a).II and MPEP 2106.II.
In Alice, citing Mayo and Bilski, two Mayo/Alice questions determine eligibility under 101: First, is a claim directed to a JE? And second, if so, does the claim recite significantly more than the JE?
USPTO Guidance published in the Federal Register and the following USPTO website provide further explanation and case law citations: www.uspto.gov/patent/laws-and-regulations/examination-policy/examination-guidance-and-training-materials.
1st Mayo/Alice question: abstract idea
Preliminarily, at this 1st step of the analysis, elements of independent claim 1 are interpreted as directed to the abstract idea of determining that activity of a biomarker indicates illness including the JE elements of "identifying..." and "determining...," each of which, including all recitation within each listed element, in at least some embodiments within a BRI, involves only manipulation of data. While manipulation of data is not per se directed to an abstract idea, in this instance the above-identified elements are directed to the abstract ideas identified below.
Preliminarily, at this 1st step of the analysis, elements of independent claim 17 are interpreted as directed to the abstract idea of determining that activity of a biomarker indicates illness including the JE elements of "identifying..." and "determining...," each of which, including all recitation within each listed element, in at least some embodiments within a BRI, involves only manipulation of data. While manipulation of data is not per se directed to an abstract idea, in this instance the above-identified elements are directed to the abstract ideas identified below.
Preliminarily, at this 1st step of the analysis, elements of independent claim 18 are interpreted as directed to the abstract idea of determining that activity of a biomarker indicates illness including the JE elements of "analyzes the biomarker data for an early indication of an illness....," each of which, including all recitation within each listed element, in at least some embodiments within a BRI, involves only manipulation of data. While manipulation of data is not per se directed to an abstract idea, in this instance the above-identified elements are directed to the abstract ideas identified below.
BRIs of the claims are analogous to an abstract idea in the form of at least a mental process, at least equivalent to a computer-implemented process, including obtaining and comparing intangible data (e.g. Cybersource, Synopsys and Electric Power Group). In a BRI, it is not clear that the claim embodiments are limited so as to require complexity precluding analogy to a mental process.
The preceding case law examples are cited for the basic form of their identified abstract ideas, and analogy to these example abstract ideas need not be within the same technology field, 101 analysis generally being assumed to be neutral with respect to technology field.
It is not clear that any additional element (or combination of such elements) integrates the exception(s) into a practical application.
Therefore, in answer to the 1st Mayo/Alice question, the above JE elements are directed to abstract ideas.
As in Alice (at 306, as cited in the above USPTO guidance) and Bilski (as cited in Alice, id), an abstract idea may comprise multiple abstract elements or steps (i.e. from Alice: "a series of steps" at 306) and need not be a single equation, relationship or principle.
1st Mayo/Alice question: law of nature
Preliminarily, at this 1st step of the analysis, elements of independent claim 1 are directed to any law of nature of correlating a biomarker to an indication of illness, including the JE element of "determining..."
Preliminarily, at this 1st step of the analysis, elements of independent claim 17 are directed to any law of nature of correlating a biomarker to an indication of illness, including the JE element of "determining..."
Preliminarily, at this 1st step of the analysis, elements of independent claim 18 are directed to any law of nature of correlating a biomarker to an indication of illness, including the JE element of "analyzes the biomarker data for an early indication of an illness...."
A BRI of the instant claims is analogous to a law of nature as found, for example, in Mayo (as cited in the above Guidance). It is not clear than any improvement argument clearly on the record causes a claim not to be directed to a JE for all embodiments within the scope of the claim. It is not clear that the above identified law of nature including the identified elements, taken together and within a BRI, must in all embodiments represent other than a law of nature according to any relevant analysis or case law. Therefore, in answer to the 1st Mayo/Alice question, the above elements are directed to a law of nature.
2nd Mayo/Alice question
Addressing the second Mayo/Alice question, all elements of claims 1 and 17-18 are part of one or more identified judicial exceptions (as described above), except for elements identified here as conventional elements in addition to the above judicial exceptions:
The recited "receiving," "transmitting" and equivalent input/output functions (claims 1 and 17-18) are conventional elements of a laboratory and/or computing environment and/or conventional data gathering/input elements, as exemplified by Figs. 1-2 of Paradiso, and generally it is understood that the examples in the reference are well-known and routine.
The recited "memory," "processors," "server" and equivalent general purpose computer elements (claims 1 and 17-18) are conventional elements of a laboratory and/or computing environment, as exemplified by Figs. 1-2 of Paradiso, and generally it is understood that the examples in the reference are well-known and routine.
It is emphasized that, outside of an improvement argument, analysis of what is conventional generally pertains to the above-identified additional elements and not to elements earlier identified as part of a judicial exception.
It is not clear that any claim improves its technology field by applying an improvement to an additional element of the claim for all claimed embodiments. For example, it is not clear that all embodiments of any claim result in a specific improvement applied via an additional element and in comparison to art of the technology field so as to cause an additional element to be other than conventional and the claim as a whole to be directed to significantly more than the identified judicial exceptions.
Suggestions regarding these distinctions and regarding advancing examination by improvement argument versus non-conventional additional element argument are provided in the bullets at the end of this rejection.
Summary and conclusion regarding claims 1 and 17-18
Summing up the above Mayo/Alice analysis of claims 1 and 17-18, each viewed as a whole and considering all elements individually and in combination, no claim recites limitations that transform the claim, finally interpreted as directed to the identified JE(s), into patent eligible subject matter, and it is not clear that any claim is sufficiently analogous to controlling case law identifying an example of an eligible claim.
Remaining claims
Claims 2-16 and 19-20 add elements which also are part of the identified JEs for the same reasons described above regarding the independent claims and therefore do not provide the something significantly more necessary to satisfy 101. In each of these abstract idea elements, the limitations apply to data types and to process or algorithmic aspects of considering or processing the data.
The further recited "receiving," "transmitting" and equivalent input/output functions are conventional elements of a laboratory and/or computing environment and/or conventional data gathering/input elements, as exemplified by Figs. 1-2 of Paradiso, and generally it is understood that the examples in the reference are well-known and routine.
The further recited "displays" and equivalent general purpose computer elements are conventional elements of a laboratory and/or computing environment, as exemplified by Figs. 1-2 of Paradiso, and generally it is understood that the examples in the reference are well-known and routine.
None of the dependent claim elements provides the something significantly more than the identified JE(s) necessary to satisfy 101.
Nonstatutory double patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine to prevent the improper timewise extension of the "right to exclude" granted by a patent and to prevent multiple suits against an accused infringer by different assignees of the same invention (MPEP 804.II.B, 1st para.). A nonstatutory double patenting rejection is appropriate where the conflicting claims (instant v. reference) are not identical, but an examined-application claim (instant claim) is not patentably distinct from a reference claim because the instant claim is either anticipated by, or would have been obvious over, the reference claim (MPEP 804.II.B, 2nd para.).
In cases of double patenting rejections versus reference claims of pending applications, as opposed to claims of an issued patent, the rejections are provisional because the reference claims have not been patented. Presently, no rejections are provisional.
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 application or patent of the reference claim either is shown to be commonly owned with the instant application or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must comply fully with 37 CFR 3.73(b).
Applicant may wish to consider electronically filing a terminal disclaimer (MPEP 1490.V pertains, along with https://www.uspto.gov/patents-application-process/applying-online/eterminal-disclaimer). Electronic filing may lead to faster approval of the disclaimer. Also, if filing electronically, Applicant is encouraged to notify the examiner by telephone so that examination may resume more quickly.
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.
Double patenting rejections of instant claims 1-20
Instant claims 1-20 are rejected on the grounds of nonstatutory double patenting as unpatentable over one or more claims in reference patent 11,158,426 (from application 16/884,043) in view of Paradiso, WHO and Powell (US PGPUB 2006-0149597), each as cited on the attached form 892.
The reference patent as well as the instant application recite claims which involve a wearable device monitoring a user's biomarker for an indication of illness.
Although the reference claims are not identical to the instant claims, in a BRI they also are not patentably distinct from the instant claims: either (i) because the instant claims recite obviously equivalent or broader limitations in comparison to the reference claims or (ii) because the instant claims recite limitations which are obvious over the cited art. It is not clear that the instant claims recite limitations which are narrower than limitations in the reference claims.
It would have been obvious in view of the cited art to modify reference claims to arrive at the rejected instant claims. Either the instant limitations are interpreted as reading on a reference limitation, or the instant limitations would have been obvious in view of the cited art. That is, to the extent that any instant claims are narrower than reference claims, then any such narrowing would have been obvious over the cited art.
Citations to art
In the above citations to documents in the art, rejections refer to the portions of each document cited as example portions as well as to the entirety of each document, unless otherwise noted in the situation of lengthy, multi-subject documents. Other passages not specifically cited within a document may apply as well.
Conclusion
No claim is allowed.
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/G. STEVEN VANNI/Primary patents examiner, Art Unit 1686
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