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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/16/2026 has been entered.
Response to Arguments
With respect to the rejections under 35 U.S.C. § 101, Applicant’s remarks on pp. 10-12 of the Remarks dated 2/2/2026 is not persuasive. The amendments do not overcome the rejections under 35 U.S.C. § 101 for being directed to a judicial exception without significantly more.
With respect to 101, on p. 11, Applicant first alleges that the claims “recite features that cannot practically be performed mentally”, therefore do not recite a mental process.
Applicant refrains from explaining which features cannot practically be performed mentally, therefore, the Examiner considers that the identified abstract idea is performable mentally, using additional elements such as a primary sensor device, a finger probe, and an accelerometer, a display, an input interface, and (implicitly) a remote physician computing device, and performing the test in a home of a patient, as indicated below. Applicant’s position may be that these additional elements involve a specific use of a computer, and computer functions that are not performed in a human mind because they are performed by a computer or other device. This is not found persuasive, because the Examiner’s position is that these elements are only nominally tied to the recited abstract idea. These recited additional elements are either providing functions prior to the execution of the abstract idea (such as data collection via sensors) or providing functions after the execution of the abstract idea (such as output or display). None of the elements alone or in combination are integrated with the abstract idea as recited.
With respect to 101, on p. 11, Applicant alleges that the claims as whole (in combination) recite “an inventive concept” and “add features that are not well-understood, routine, or conventional activity in the field.”
It is noted that a showing that the claim elements are well-understood, routine, or conventional is not a requirement for the claims to be rejected under 101. Instead, the inquiry is whether the claim elements individually or in combination amount to significantly more than the abstract idea identified by reciting an inventive concept. Applicant has refrained from identifying any such inventive concept, instead generally alleging that the claim as a whole is not well-understood, routine, or conventional activity in the field.
The Examiner’s conclusion in the rejection below is that not only are each individual element extra-solution activity, a generic computer, and/or elements that are well-understood, routine, or conventional, but that also the ordered combination does not contribute more than what was already present when the steps/elements were considered separately. In the instant case, the claimed additional elements simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
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 1-9, 11, 13-18, and 20-31 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more.
This analysis in view of 35 U.S.C. § 101 is based on MPEP § 2106, please see
this section of the MPEP for additional information.
First, the broadest reasonable interpretation of the claim as a whole is
established:
Claims 1 and 13-14 claim a method, non-transitory computer readable medium, system for performing a remote sleep apnea, the test performed in a home of a patient including determining the end of the sleep apnea test from sensor data obtained during the test, rendering a question for the test subject on a user interface within an amount of time based on an input from a physician computing device, capturing the response of the test subject, and transmitting a notification to a remote physician computing device.
Claims 2-6, 8, 13-17, and 21-29 include additional algorithmic processes for determining timing and content of questions for the test subject delivered via the user interface and responses received from the test subject via the user interface.
Claims 7, 9, 11, 18, and 20 include possible sensors and sensor configurations, and a database.
Step 1 of the analysis is the question: “Is the claim to a process, machine,
manufacture, or composition of matter?” and the answer is determined to be yes, as the
claims as a whole are directed to a manufacture and a method.
For Step 2, the preliminary question is whether the eligibility of the claim is self-
evident. The answer is determined to be no, as the claim is not immediately self-evident
as statutory.
Step 2A Prong One: Is the claim directed to a law of nature, a natural phenomenon (product of nature) or an abstract idea?
A claim is directed to a judicial exception when a law of nature, a natural
phenomenon, or an abstract idea is recited (i.e., set forth or described) in the claim.
While the terms “set forth” and “describe” are thus both equated with “recite”, their
different language is intended to indicate that there are different ways in which an
exception can be recited in a claim. For instance, the claims in Diehr set forth a
mathematical equation in the repetitively calculating step, the claims in Mayo set forth
laws of nature in the wherein clause, meaning that the claims in those cases contained
discrete claim language that was identifiable as a judicial exception. The claims in Alice
Corp., however, described the concept of intermediated settlement without ever explicitly using the words “intermediated” or “settlement.”
Claim 1 (and equivalently in claim 13/14) recites the following limitations:
“receiving…at least one post-test question for the patient”
“determining…an end of the sleep apnea test, based on removal of one or more sensors, or movement corresponding to the patient being awake”
“rendering at least one post-test question after the end of the sleep apnea test is determined, wherein the at least one post-test question is made unavailable after a predetermined period of time since the at least one post-test question is rendered” and
“capturing at least one…response to the rendered at least one post-test question before the at least one post-test question is made unavailable after the predetermined period of time”
The above identified elements comprise an explicit claim recitation of an abstract idea. Therefore, rather than merely involve a judicial exception, the claims are directed to the identified judicial exception.
This claim language is identified as an abstract idea, because in MPEP §
2106.04(a)(2) III B. this language is similar to concepts relating to organizing or
analyzing information in a way that can be performed mentally or are analogous to
human mental work. For example, Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 120 USPQ2d 1473 (Fed. Cir. 2016). In Synopsys, the patentee claimed methods
of logic circuit design, comprising converting a functional description of a level sensitive
latch into a hardware component description of the latch. 839 F.3d at 1140; 120 USPQ2d at 1475. Although the patentee argued that the claims were intended to be
used in conjunction with computer-based design tools, the claims did not include any
limitations requiring computer implementation of the methods and thus do not involve
the use of a computer in any way. 839 F.3d at 1145; 120 USPQ2d at 1478-79. The
court therefore concluded that the claims “read on an individual performing the claimed
steps mentally or with pencil and paper,” and were directed to a mental process of
“translating a functional description of a logic circuit into a hardware component
description of the logic circuit.” 839 F.3d at 1149-50; 120 USPQ2d at 1482-83.
In the instant case, the identified abstract idea is similar to Synopsys because the
language reads on an individual clinician performing the claimed determination and patient questioning/follow-up questioning mentally or with a pencil and paper. They do not require any specific computer function for implementation and therefore are directed to a mental process of questioning a patient before and after a sleep assessment and observing and evaluating the patient during a sleep assessment.
Yes. The claim is directed to an abstract idea.
Step 2A Prong Two: Does the claim recite additional elements that integrate the judicial exception into a practical application?
First, the additional elements are identified.
In claim 1/13/14: primary sensor device, finger probe, and accelerometer, sensor measurements generated during a sleep apnea test from at least one sensor, display/rendering, input interface for physician computer and patient, processing circuitry, memory, generating and transmitting a notification to a remote physician computing device.
In claims 2, 7, 9, 11, 15, 18, and 20: sensors.
In claims 3, 8, and 16: user interface
In claim 9: transmitting to a database
The sensors are recited without reference to a sensor structure or particular data acquired. The finger probe and primary sensor device don’t specify what type of sensor or data is obtained. The accelerometer, while referencing a particular type of sensor, is only nominally tied to the abstract idea and the data acquisition is all performed as pre-solution activity to the abstract idea claimed. Therefore the claimed sensors amount to mere data gathering and considered an insignificant extra-solution activity.
The processing circuitry, memory, display, input interface, transmitting, user interface, and database appears to be an addition of a general purpose computer post-hoc to an abstract idea and is therefore not considered to transform the abstract idea into patent eligible subject matter. Use of a display is considered to be insignificant extra-solution activity as to displaying certain aspects of the abstract idea. These additional elements appear to use the typical functions of a general purpose computer to facilitate the normal interaction between the physician and patient, but do not rely on any specific computer functions or computer technology. Therefore they appear to be directed to merely implementing the identified abstract idea on a general purpose computer, rather than improving a technology or integrating the abstract idea with a particular machine or technical field.
The remaining features in the claims are directed to further specifying the intended use but do not impose further limits to the recited system because they are generally linking the use of the judicial exception to a particular field of use or technological environment.
Step 2B: Does the claim recite additional elements that amount to significantly
more than the judicial exception?
The additional elements were identified in the above section under Step 2A Prong Two.
The sensors are recited without reference to a sensor structure or particular data acquired. The finger probe and primary sensor device don’t specify what type of sensor or data is obtained. The accelerometer, while referencing a particular type of sensor, is only nominally tied to the abstract idea and the data acquisition is all performed as pre-solution activity to the abstract idea claimed. Therefore the claimed sensors amount to mere data gathering and considered an insignificant extra-solution activity.
The processing circuitry, memory, display, input interface, transmitting, user interface, and database appears to be an addition of a general purpose computer post-hoc to an abstract idea and is therefore not considered to transform the abstract idea into patent eligible subject matter. Use of a display is considered to be insignificant extra-solution activity as to displaying certain aspects of the abstract idea. These additional elements appear to use the typical functions of a general purpose computer to facilitate the normal interaction between the physician and patient, but do not rely on any specific computer functions or computer technology. Therefore they appear to be directed to merely implementing the identified abstract idea on a general purpose computer, rather than improving a technology or integrating the abstract idea with a particular machine or technical field.
The remaining features in the claims are directed to further specifying the intended use and results but do not impose further limits to the recited system because they are generally linking the use of the judicial exception to a particular field of use or technological environment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA L STEINBERG whose telephone number is (303)297-4783. The examiner can normally be reached Mon-Fri 8-4.
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/AMANDA L STEINBERG/ Examiner, Art Unit 3792