DETAILED ACTION
This application is being examined under AIA first-to-file provisions.
Status of claims
Canceled:
9-10
Pending:
1-8 and 11-22
Withdrawn:
none
Examined:
1-8 and 11-22
Independent:
1 and 22
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"
112/b "Means for"
BRI
Broadest Reasonable Interpretation
112/a Enablement,
Written description
CRM
"Computer-Readable Media" and equivalent language
112 Other
IDS
Information Disclosure Statement
x
102, 103
JE
Judicial Exception
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
As detailed on the 11/3/2022 filing receipt, this application claims priority to as early as 12/2/2020. At this point in examination, all claims have been interpreted as being accorded this priority date.
Withdrawal / revision of objections and/or rejections
In view of the amendment and remarks:
The objection to the title is maintained.
The previous claim objections are withdrawn, however new objections are applied.
The previous 112/b rejections are withdrawn, except as noted, and new rejections are applied.
The 101 rejection is withdrawn, and the claims are interpreted as patent eligible.
Rejections and/or objections not maintained from previous office actions are withdrawn. The following rejections and/or objections are either maintained or newly applied. They constitute the complete set applied to the instant application.
Objection to the specification: title
The title should be amended to more specifically reflect the claims, particularly referencing steps/elements: setting the context of the invention, particular to all claims, and distinguishing the instant application from any related applications, for example terms such as: physical, physiological, user data, hand, wrist, arm, measurements, etc. The title should be "descriptive" and "as... specific as possible" (MPEP 606, 1st para. and 37 CFR 1.72; also MPEP 606.01 pertains). This objection is maintained.
Claim objections
Claims 1 and 22 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
1
comprising:... colleting
"collecting"
22
...combination of, hand measurements...
Inappropriate comma
22
arms, hand, or wrists
Possibly, "hand" should read "hands," for consistency among the list elements and versus claim 1.
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 1-8 and 11-22 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:
Claim
Recitation
Comment (suggestions in bold)
1
wherein a software application or web-based software program is provided on the
electronic device
In claim 1, the structural relationships are unclear between the "system," the "electronic device," the "software application" and the "web-based software program."
Claim 1 is to a 101 machine or manufacture, i.e. a "system" in this instance, interpreted by statute according to its claimed physical structure, but it is not clear what is the physical structure associated with the recited elements of "a software application" and "a web-based software program" as well as each of the subsequently recited, possibly software-embodied, process steps. MPEP 2106.03, 5th-6th paras. pertain.
The recited "system" and "electronic device" are interpreted as not clearly requiring structure linking the "system" to the other elements and steps in a structural sense appropriate to a claim to a machine or manufacture. PHOSITA may understand some recited elements generally to comprise electronics, but physical structure should be recited specifically corresponding to the above elements and steps. While these elements may comprise software storage in some embodiments, it is not clear that all embodiments of these elements must comprise software storage corresponding to the recited process steps. This rejection might be overcome by, for example, reciting a storage device, comprised by the "system," and instructions stored therein and configured according to the recited "software application," "web-based software program" and subsequently recited, software-embodied, process steps. Support should be identified for any such amendment. MPEP 2173.05(p).II pertains regarding a claim directed to both product and process.
Additionally, and for example, the terminology of the recited "web-based software program" would cause PHOSITA to believe that, at least in some embodiments, this "program" resides in the web. Thus, it is not clear that the "system" comprises structure corresponding to the program and therefore it is unclear whether the claim is limited according to the program. Furthermore, the recited "provided on the electronic device" appears to be inconsistent with the recited "web-based," particularly given the lack of specific structure comprised by the "electronic device" and embodying the recited software.
5
measurements are is/are calculated
Repeated text
5,
11-20
The system according to claim 1 wherein...
measurements are... calculated...
Claim 5 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 "calculated." MPEP 2173.05(p).II pertains. Possibly such a step may be claimed indirectly via the structure of stored computer instructions. Or, it may suffice 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.
Claims 10-20 are rejected similarly regarding process steps recited as verbs in those claims. The present claim recitations are as for a process claim, but these claims are not to a process; they are to a 101 machine/manufacture.
The above contrasts with claim 21, already amended to recite "the software configured to enable," which construction does not render the claim indefinite for the reasons above.
13
a camera
The relationship is unclear between this newly instantiated "camera" and the "one or more cameras" of claim 1.
14
...a patient...
the patient's body...
The claim 14 recitations of "...a patient will receive..." and "...position... the patient's body..." are inconsistent with the claim 1 recitations of "user data" and "...measurement from a user" and "...instructions to a user..." Possibly only "user" and not "patient" should be recited, or possibly some equivalent of "wherein the user is a patient" should be recited.
14
the user's or the patient's body
Each instance requires but lacks clear antecedent. Possibly "a user's... body"
16
the waist and height data of the user
Requires but lacks clear antecedent
16
the user's specifications
Requires but lacks clear antecedent. This rejection is maintained.
17
a waist circumference and/ or height measurement
The relationship is unclear to the similar recitations in claim 13 at least because these nouns are recited in claim 17 as newly instantiated when possibly they should refer to the same nouns in claim 13. This rejection is maintained.
21
the software
Requires but lacks clear antecedent, noting that in claim 1 "software" is an adjective modifying the nouns "application" and "program." An adjective does not provide clear antecedent.
21
the user's electronic device
Requires but lacks clear antecedent, noting that the "electronic device" of claim 1 is not recited as belonging to the user. This rejection is maintained.
22
...the method comprising:...
The subsequently recited list renders the claim indefinite for lack of a conjunction defining the relationship among the list elements, e.g. "or" vs. "and." As presently recited, the claim reads on embodiments in which only one of the list elements is required, i.e. embodiments in which "or" defines the list relationship.
22
the arms, hand, or wrists
Requires but lacks clear antecedent, noting that previously these terms were recited as adjectives
Claim interpretations
The following claim interpretations apply to all instances of the following terms throughout all claims:
Claim
Recitation
Comment
1, 22
wherein a software application or web-based software program is provided...
wherein the software application, via the electronic device, is configured to provide...
It is noted that the second "wherein" clause addresses only the "software application" and not the "web-based software program." Relatedly, each of the recited "software application" and "web-based software program" is interpreted as an optional element when the other is present, due to the recited "or."
A similar interpretation applies to claim 22.
1
wherein...
and configured to utilize one or more cameras on the electronic device
In a BRI, the claim reads on embodiments in which the "system" is not required to comprise a "camera." First, the recitation to the left here occurs within a "wherein" clause, and the claim does not explicitly recite the "system" as comprising a "camera." Second, the recitation requires that either the "software application" or the "web-based software program" is "configured to utilize" a "camera," but this is not the same as and does not limit the claimed "system" to comprise a camera. Third, as noted under 112/b above, it is not clear that the "web-based software program" is comprised by the "system" such that it is not clear that it limits the system.
22
the method comprising:
As presently recited and noting the above, related 112/b rejection, the claim reads on embodiments in which only one of the "comprising" list elements is required, i.e. embodiments in which "or" defines the list relationship.
1
any one, or any combination of, hand measurements, wrist measurements and/or arm measurements
In a BRI, the claim reads on embodiments requiring only one of the listed measurements. Dependent claims are interpreted accordingly.
Claim rejections - 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-8 and 11-22
Claims 1-8 and 11-22 are rejected under 35 USC 102(a)(1) as anticipated by Rigazio (as cited on the attached "Notice of References Cited" form 892).
Regarding claims 1-2, and consistent with the above claim interpretations, the recited "system" reads on "A system and method for identifying a user of a handheld device" (Rigazio: abstract; and entire document) and "hand size" (Rigazio: [47]; and entire document). In a BRI, the claim reads on embodiments in which a "camera" is not required, as discussed in the above claim interpretations. The claim also reads on embodiments in which the "software application" is optional, and the "web-based software program" is web-based, not comprised by and not limiting the "system."
Regarding claim 22, as noted in the above claim interpretations, the claim reads on embodiments in which only one of the recited steps is required, e.g. just the "...device measuring..." step, such that the art is applied to the claim as described for claim 1.
Regarding claim 6, the recited "mobile communication" reads on "a handheld device, e.g. remote control systems" (Rigazio: [2]; and entire document) and "Any type of communication interface between the handheld remote control 12 unit and the electronic product can be utilized" (Rigazio: [34]; and entire document).
Regarding claims 7-8, Rigazio teaches "cell phones" (Rigazio: [81]; and entire document).
Regarding claims 3-5 and 11-21, consistent with the above 112/b rejections and claim interpretations, it is not clear that any of claims 5 and 11-20 limit the structure of the recited system. Also, Rigazio teaches hand measurement (Rigazio: [47]; and entire document), such that dependent claims limiting other measurements are optional. Therefore, the art is applied to claims 3-5 and 11-21 as described for claims 1-2, 6-8 and 22 above.
101 -- patent eligible claims -- no rejection
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.
Referring to 101 analysis as organized in MPEP 2106, the 101 rejection is withdrawn at least in view of the analysis Step 2A, 1st prong regarding claim interpretation leading to identification of judicial exceptions (JEs) (MPEP 2106.04), claims 1-8 and 11-22 being interpreted as not directed to any JEs.
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.
Applicant's amendments necessitated the new grounds for rejection in this 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 extension fee 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 date of this final action.
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The examiner for this Office action, G. Steven Vanni, may be contacted at:
(571) 272-3855 Tu-F 8-7 (ET).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Larry D. Riggs, II, may be reached at (571) 270-3062.
/G. STEVEN VANNI/Primary patents examiner, Art Unit 1686