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 .
Response to Amendment
Claims 1-17 are currently pending. Claims 14-17 remain withdrawn. Claims 1-9, 11, and 12 have been amended. Claim 1 has been amended to overcome the claim objections and claim 2 has been amended to overcome the 35 U.S.C. 112(b) rejections set forth in the Non-Final Office Action mailed on 09 July 2025.
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 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. A streamlined analysis of claim 1 follows.
STEP 1
Regarding claim 1, the claim recites a series of structural components, including a power supply to supply a driving power by being configured to be mounted on a test subject for use. Thus, the claim is directed to a machine, which is one of the statutory categories of invention.
STEP 2A, PRONG ONE
The claim is then analyzed to determine whether it is directed to any judicial exception. The steps of a controller controlling the first and second light emitters and the controller controls the second light emitter in response to a size of the neural signal detected through the neural signal detector, set forth a judicial exception. These steps describe a concept performed in the human mind (including an observation, evaluation, judgment, opinion). Thus, the claim is drawn to a Mental Process, which is an Abstract Idea.
It is noted that these steps are performed by a controller. However, the controller is a generic computer part. According to section 2106.05(f) of the MPEP, merely using a computer as a tool to perform an abstract idea does not integrate the Abstract Idea into a practical application
STEP 2A, PRONG TWO
Next, the claim as a whole is analyzed to determine whether the claim recites additional elements that integrate the judicial exception into a practical application. The claim fails to recite an additional element or a combination of additional elements to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limitation on the judicial exception. Claim 1 recites a first light emitter outputting a colored light for position tracking; a second light emitter outputting a colored light for neural signal display; and the first emitter and the second light emitter outputting mutually different colors of light, which are merely adding insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g)). The outputting of a colored light for position tracking, a colored light for neural signal display, and mutually different colors of light does not provide an improvement to the technological field, the method does not effect a particular treatment or effect a particular change based on the outputted lights, nor does the method use a particular machine to perform the Abstract Idea.
STEP 2B
Next, the claim as a whole is analyzed to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the exception. Besides the Abstract Idea, the claim recites additional steps of a power supply to supply a driving power by being configured to be mounted on a test subject for use and a neural signal detector detecting a neural signal of the test subject. The supplying and detecting steps are well-understood, routine and conventional activity for those in the field of medical diagnostics (see [0229] of Armitage et al. ‘245 (US Pub No. 2021/0093245 – previously cited)). Further, the supplying and detecting steps are each recited at a high level of generality such that it amounts to insignificant presolution activity, e.g., mere data gathering step necessary to perform the Abstract Idea. When recited at this high level of generality, there is no meaningful limitation, such as a particular or unconventional step that distinguishes it from well-understood, routine, and conventional data gathering and comparing activity engaged in by medical professionals prior to Applicant's invention. Furthermore, it is well established that the mere physical or tangible nature of additional elements such as the obtaining and comparing steps do not automatically confer eligibility on a claim directed to an abstract idea (see, e.g., Alice Corp. v. CLS Bank Int'l, 134 S.Ct. 2347, 2358-59 (2014)).
Consideration of the additional elements as a combination also adds no other meaningful limitations to the exception not already present when the elements are considered separately. Unlike the eligible claim in Diehr in which the elements limiting the exception are individually conventional, but taken together act in concert to improve a technical field, the claim here does not provide an improvement to the technical field. Even when viewed as a combination, the additional elements fail to transform the exception into a patent-eligible application of that exception. Thus, the claim as a whole does not amount to significantly more than the exception itself. The claim is therefore drawn to non-statutory subject matter.
The same rationale applies to claim 9. It is noted that the test box does not add anything significantly more to the abstract idea, the photographing part performs the pre-solution activity of data gathering, and the analyzing performs the grasping and analyzing steps that are considered mental processes.
Regarding claim 1, the device recited in the claim is a generic device comprising generic components configured to perform the abstract idea. The recited power supply part and neural signal detector are generic sensors configured to perform pre-solutional data gathering activity, the first and second light emitters are configured to perform WURC light outputting, and the controller is configured to perform the Abstract Idea. According to section 2106.05(f) of the MPEP, merely using a computer as a tool to perform an abstract idea does not integrate the Abstract Idea into a practical application.
The dependent claims also fail to add something more to the abstract independent claims. Claim 2 recites a step that could be performed mentally or by hand. Claims 3, 4, and 6 recite additional elements that are not significantly more. Claim 5 recites a step that is configured to perform the pre-solution activity of data gathering. Claims 7 and 8 recite steps that are extra-solution activity. Claims 10 and 11 recite details of the test box and the photographing part that do not add anything significantly more. Claim 12 recites a step that are extra-solution activity. Claim 13 recites a step that performs the pre-solution activity of data gathering. The steps recited in the independent claims maintain a high level of generality even when considered in combination with the dependent claims.
Response to Arguments
Applicant argues that the steps of claim 1 cannot be performed in the human mind. Examiner respectfully disagrees, as the detecting step could merely be a user reviewing data being collected by the neural signal detector and “detecting” that a neural signal is being measured. The controlling steps could merely be a user turning on/off the light emitters. The outputting steps could merely be a user turning on a light based on a position tracking or neural signal display. Furthermore, it is noted that according to section 2106.05(f) of the MPEP, merely using a computer as a tool to perform an abstract idea does not integrate the Abstract Idea into a practical application.
Regarding Applicant’s arguments on pages 10-14, it is noted that the steps recited in claim 1 are not analogous to the examples mentioned on pages 10-14. Claim 1 merely recites a neural signal detector detecting a neural signal, light emitters outputting colored lights, and a controller controlling the light emitters. As mentioned above, these steps could be performed mentally or by hand. It is noted that the outputting steps could also be seen as organizing human activity, which is also an Abstract Idea.
It is noted that the claims merely recite turning on/off lights based on whether or not movement and a neural signal are detected. There is no improvement or technological change recited based on the turning on/off the light emitters. Examiner suggests to include in the claims what is being improved/changed based on the outputted lights.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lanfermann et al. ‘680 (International Pub No. WO 2007/141680) teaches LEDs that turn on in specific colors based on the magnetic of a neural signal.
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 AURELIE H TU whose telephone number is (571)272-8465. The examiner can normally be reached [M-F] 7:30-3:30.
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/AURELIE H TU/ Primary Examiner, Art Unit 3791