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 Arguments
Applicant's arguments filed 10 December 2024 have been fully considered but they are not persuasive. While applicant's amendments have overcome . Such claim limitation(s) is/are “a computing device” recited in claim 1. See 35 USC 112(f) claim interpretation section below.
Regarding applicant’s arguments with regards to the rejection of the claims under 35 USC 112(b), indefiniteness issues remain within the claims. Specifically with regards to claim 1, it is unclear if “the carbon” recited at line 24 is the same as or different than the “carbon” recited at line 13. Furthermore, it is unclear whether the claim is referring to carbon (as in the element) or carbon dioxide exhaled from a patient/subject. See 35 USC 112(b) rejection section below.
Regarding applicant’s arguments with regards to the rejection of the claims under 35 USC 101, applicant’s arguments are unpersuasive because the recitation of the specific devices that take readings to derive a mass of the carbon in exhaled breath do not add any meaningful limitations as to how the abstract idea is performed. Instead, those details pertain to pre-solution data gathering activity that is required to perform the abstract idea. Therefore, the rejection still stands. See 35 USC 101 rejection section below.
Regarding applicant’s arguments with regards to the rejection of the claims under 35 USC 103 over Mault 213 in view of Mault 389 and in further view of Tripathi, applicant’s arguments have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly found prior art references in view of applicant's arguments made to the previous rejection of the claims. See 35 USC 103 rejection section below.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a computing device in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. As described in the specification the computing device includes a processor and a display.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 & 4-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “determine a mass of the carbon exhaled in the breath” at line 24. It is unclear if “the carbon” recited at line 24 is the same as or different than the “carbon” recited at line 13. Furthermore, it is unclear whether the claim is referring to carbon or carbon dioxide exhaled from a patient/subject. For examination purposes, it will be interpreted that both recitations of “carbon” are referring to a mass of carbon dioxide in exhaled breath that is determined by the computing device from a received volume of expelled air and a concentration of carbon dioxide in the breath.
Claims 4-7 are similarly rejected as their base claim.
Claim Rejections - 35 USC § 101
8. Claims 1 & 4-7 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.
Regarding claim 1, the claim recites a system for monitoring respiration that performs a series of steps or acts, including determining a mass of carbon in exhaled breath. Thus, the claim is directed to a machine, which is one of the statutory categories of invention.
The claim is then analyzed to determine whether it is directed to any judicial exception. The step of determining a mass of carbon in exhaled breath sets forth a judicial exception. This step describes 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.
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. The determination of a mass of carbon in exhaled breath 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 determined mass of carbon in exhaled breath, nor does the method use a particular machine to perform the Abstract Idea. In fact, a generic computing device is recited as performing the abstract idea.
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 receiving a volume of air expelled during a breath, receiving a concentration of carbon dioxide in the breath, receiving volumetric changes in the chest and/or abdomen during the breath, and correlating a volumetric change in the chest and/or abdomen with an amount of air expelled during the breath. Each of the receiving steps and the correlating step are 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 each of the receiving steps and the correlating step 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.
Furthermore, the device recited in claim 1 is a generic device comprising generic components configured to perform the abstract idea. The recited spirometer, capnometer, and respiratory volume sensor are generic sensors configured to perform pre-solutional data gathering activity, and the computing device 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 claim as they generally recite method steps pertaining to data gathering and the display of data. The receiving and correlating steps recited in the independent claim maintain a high level of generality even when considered in combination with the dependent claims.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 & 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 20020138213 --as previously cited--, hereinafter referenced as "Mault 213" in view of US Patent Application Publication 20040186389 --as previously cited--, hereinafter referenced as "Mault 389" and in further view of US Patent 6085582 --as previously cited--, hereinafter referenced as “Tripathi”, and US Patent Application Publication 20130053655, hereinafter referenced as “Castellanos”.
With respect to claims 1 & 4, Mault 213 teaches a system for monitoring respiration (see Mault 213, par 0046), comprising:
a spirometer 1 configured to detect a volume of air expelled during a breath (see Mault 213, fig. 1, par 0018, 0028) and a capnometer 52 configured to detect a concentration of carbon dioxide in the breath (see Mault 213, fig. 1, par 0044-0045);
a respiratory volume sensor incorporated into apparel or to be worn by itself around a chest and/or abdomen 54 (i.e., a physiological monitor that is a chest strap that estimates breath volume of a user by transmitting an electrical signal representative of chest expansion/contraction to a processor), the respiratory volume sensor configured to detect volumetric changes in the chest and/or abdomen during breathing (see Mault 213, par 0051, fig. 1);
and a computing device 20 (i.e., a processor) (see Mault 213, fig. 1, par 0030, 0034-0035, 0045, 0049), configured to execute a first algorithm to:
receive the volume of air expelled during the breath from the spirometer (i.e., the spirometer obtains a volume of air expelled during a breath of a user that the processor uses to determine a respired gas volume for a user using the exhaled gas volume and a metabolic rate for an individual from a respired volume) (see Mault 213, abstract, par 0018, 0028, 0044-0045),
receive the concentration of carbon dioxide in the breath from the capnometer (i.e., the capnometer provides a signal correlated with carbon dioxide concentration within gases flowing through the spirometer that the processor uses to determine a respired gas volume for a user using the exhaled gas volume and a metabolic rate for an individual from a respired volume) (see Mault 213, abstract, par 0044-0055),
receive the volumetric changes in the chest and/or abdomen during the breath (i.e., the chest strap transmits an electrical signal representative of chest expansion/contraction to a processor to determine a respired gas volume for a user using the exhaled gas volume and a metabolic rate for an individual from a respired volume) (see Mault 213, par 0051),
and correlate a volumetric change in the chest and/or abdomen with an amount of air expelled during the breath (see Mault 213, par 0051).
Mault 213 does not teach that the computing device determines a mass of the carbon dioxide exhaled in the breath using the received volume of expelled air and concentration of carbon dioxide in the breath, nor that the computing device determines a mass of the carbon dioxide exhaled in the breath using the correlated change in chest and/or abdomen volume and concentration of carbon dioxide in the breath.
Mault 389 teaches determining a mass of carbon dioxide exhaled from a subject in order to generate a respiratory quotient of a user that can be used to evaluate physiological parameters of the subject, such as their metabolic rate (see Mault 389, abstract, par 0005-0006, 0010, 0014, 0074, claim 22 & claim 23).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Mault 213 to determine a mass of carbon dioxide exhaled in the breath of a user because it would improve the system of Mault 213 by enabling a respiratory quotient of a user to be generated, which can be used to determine the metabolic rate of a user (see Mault 389, par 0005-0006).
Mault 213 in view of Mault 389 does not teach that the mass of carbon dioxide in the exhaled breath of a user is calculated from volume and concentration measurements of the carbon dioxide exhaled in the breath of a user.
Tripathi teaches determining a mass emission of component gases such as carbon dioxide in the exhaust of a vehicle by using both the volume of the gases exhausted and a concentration of each component gas in the exhaust (i.e., mass, volume, and concentration are each connected to one another, can one can be calculated from the other) (see Tripathi, Col. 4, lines 45-55).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Mault 213 in view of Mault 389 to calculate a mass of carbon dioxide in the exhaled breath of a user using a measured volume and concentration of carbon dioxide since the intrinsic relationship between concentration, volume, and mass of gases enables the determination of a mass of carbon dioxide using obtained measurements of volume and concentration of the carbon dioxide exhaled in the breath of a user (see Tripathi, Col. 4, lines 45-55).
Mault 213 as modified by Mault 389 and Tripathi fails to teach that the determination of the mass of carbon exhaled in the breath is from using both the volume of expelled air measured by the spirometer and the correlated change in chest and/or abdomen volume and concentration of carbon dioxide in the breath.
Castellanos teaches a mobile vascular health evaluation device that comprises one or more of a chest strap and spirometer (see Castellanos, par 0017). The device uses a combination of sensors, such as a chest strap and spirometer in order to generate summative health status information of a user’s vascular or overall health (see Castellanos, par 0026).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Mault 213 as modified by Mault 389 and Tripathi such that it comprises using both the volume of expelled air measured by the spirometer and the correlated change in chest and/or abdomen volume and concentration of carbon dioxide in the breath to determine a mass of carbon exhaled in breath because the combination of sensors such as a chest strap and spirometer provides a summative indication of the health status of a user (see Castellanos, par 0026).
With respect to claim 5, Mault 213 does not teach that the computing device comprises at least one of a smart phone, a smart watch, tablet, laptop, or desk computer.
Mault 389 teaches that a computation unit 120 (i.e., a computing device) (see fig. 1, abstract, par 0034-0037) can be implemented using a conventional personal computer (i.e., a laptop or a desk computer) (see Mault 389, par 0036).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the computing device of Mault 213 such that it comprises a conventional personal computer because it would merely be the substitution of one computing device (the conventional personal computer as taught by Mault 389) for another (the processor of Mault 213) to obtain predictable results (processing obtained data such as measured volumes and concentrations of carbon dioxide).
With respect to claim 6, Mault 213 in view of Mault 389 and in further view of Tripathi and Castellanos further teaches that the computing device is integrated into a home or office appliance or incorporated into an automobile (i.e., laptop or desk computer is a home/office appliance) (see Mault 389, par 0036).
With respect to claim 7, Mault 213 in view of Mault 389 and in further view of Tripathi and Castellanos further teaches that the computing device is configured to present a user interface presenting information relating to the mass of carbon exhaled (i.e., a display used as a user interface presents information to a user such as measured metabolic rate, wherein the combination of Mault 213 in view of Mault 389 and in further view of Tripathi and Castellanos demonstrates that the measured metabolic rate is related to the mass of carbon exhaled from a user) (see Mault 213, par 0045, 0049).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office 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 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Destiny J Cruickshank whose telephone number is (571)270-0187. The examiner can normally be reached M-F, 9am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Marmor II can be reached on (571) 272-4730. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.J.C./ Examiner, Art Unit 3791
/ETSUB D BERHANU/Primary Examiner, Art Unit 3791