DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-7 are under examination.
Claim Rejections - 35 USC § 112
2. 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 1-7 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.
Instant claims 1 and 4 recite “a message receiving unit configured to receive at least one selected…” It is unclear to what “one” is referring. It appears that “one” may be referring to a message. Clarification via clearer claim language is required.
CLAIM INTERPRETATION
3. 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 message receiving unit”, “an information registration unit”, “a risk signal generation unit”, “a risk alarm generation unit” in claim 4.
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.
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 § 101
4. 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 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite.
Claims 1-7 are directed to method of determining a manager. As described in Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 573 U.S._, 134 S. Cr. 2347, 110 U.S.P.Q.2d 1976 (2014), a two-step analysis is required in considering the patent eligibility of the claimed subject matter. The first step requires determining if the claimed subject matter is directed to a judicial exception. The instant claims require the determining a manager according to a risk signal in claims 1 and 4, and determining a recipient group of the risk alarm message in claim 6. These steps are drawn to mental steps as both steps may be performed in the human mind. Mental steps are a judicial exception. Thus, the instant claims are drawn to a judicial exception.
This judicial exception is not integrated into a practical application. The instant claims do not recite an element that reflects an improvement in the functioning of a computer or other technology, an element that applies the judicial exception to effect a particular treatment, an element that implements the judicial exception with a particular machine, or an element that effects a transformation of a particular article to a different state or thing. The instant claims recite receiving data, receiving risk alarm information, receiving a risk signal, receiving device state message, receiving a payment link, and transmitting a risk alarm. However, these steps are extra solution data gathering steps. Extra solution data gathering steps do not impart a practical application to the judicial exception. The instant claims also recite a user terminal, message receiving unit, information registration unit, risk signal generation unit, and a risk alarm generation unit. However, the instant claims do not recite any structural limitations of these elements, and they are not drawn to a particular machine. The instant claims do not integrate the judicial exception into a practical application.
The second part of the analysis requires determining if the claims include additional elements that are sufficient to amount to significantly more than the judicial exception. The instant claims recite the additional elements of receiving data, receiving risk alarm information, receiving a risk signal, receiving device state message, receiving a payment link, and transmitting a risk alarm. However, the courts have found receiving and transmitting data to be well-understood, conventional and routine (MPEP §2106(d)(II)). The instant claims also recite a user terminal, message receiving unit, information registration unit, risk signal generation unit, and a risk alarm generation unit. However, these elements are well-known, conventional, and routine (Specification, pages 25-26). The steps of receiving information and retrieving information from a database are well-understood, routine, and conventional data gathering steps. Reciting such well-understood, routine, and conventional data gathering steps do not transform a judicial exception into patent eligible subject matter. In addition, the recitation of the specific types of data, as in instant claims 2 and 5, to be used in the judicial exception does not transform the abstract idea into a non-abstract idea. (See buySAFE, Inc. v Google, Inc. 765 F.3d 1350, 112 U.S.P.Q.2d 1093 (Fed.Cir.2014)). Furthermore, the elements taken as a combination are also well-understood, routine, and conventional, since the elements are merely specifying the types of data for a data gathering step. Thus, the instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Claim Rejections - 35 USC § 102
5. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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 1-2 and 4-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Starr et al. (US 9,807,174 B2).
Regarding claim 1, Starr et al. teach installing a drug injection program received from a management server (column 1, line 66 – column 2, line 29; column 4, lines 33-47)); receiving biometric value measurement, drug injection message, device state message, or data of the drug injection device (column 4, lines 48-53; column 6, lines 55-65); receiving an input of a risk alarm setting information from a user and transmitting the risk alarm setting information to the controller (column 5, lines 7-32); receiving a risk signal corresponding to the risk alarm setting information from the controller (column 5, lines 7-32); determining a manager according to the risk signal and transmitting a risk alarm message to a terminal of the manager according to the risk signal or risk management center (column 5, lines 7-32).
Regarding claim 2, Starr et al. teach where the alarm message includes location information (column 4, lines 54-65; column 6, lines 4-23) and an additional alarm is implemented to be generated at a preset time (column 4, lines 54-65; column 9, lines 1-19).
Regarding claim 4, Starr et al. teach a message receiving unit configured to receive at least one selected from the group consisting of biometric value measurement, drug injection message, device state message, or data of the drug injection device (column 4, lines 48-53; column 6, lines 55-65); an information registration unit configured to register a risk alarm setting information (column 5, lines 7-32); a risk signal generation unit configured to receive a risk signal corresponding to the risk alarm setting information determined from biometric value measurement, drug injection message, device state message, or data of the drug injection device (column 4, lines 48-53; column 6, lines 55-65). (column 5, lines 7-32); determining a manager according to the risk signal and transmitting a risk alarm message to a terminal of the manager according to the risk signal or risk management center (column 5, lines 7-32).
Regarding claim 5, Starr et al. teach where the alarm message includes location information (column 4, lines 54-65; column 6, lines 4-23) and an additional alarm is implemented to be generated at a preset time (column 4, lines 54-65; column 9, lines 1-19).
Regarding claim 6, Starr et al. teach where the risk alarm generation unit determines a recipient group of the risk alarm message according to a risk code of a risky situation and kind of risk (column 11, lines 48-56).
Regarding claim 7, Starr et al. teach where the program is stored in a computer readable storage medium (column 10, lines 50-67).
Claim Rejections - 35 USC § 103
6. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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 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.
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Starr et al. (US 9,807,174 B2) as applied to claims 1-2, and 4-7 above, and further in view of Binier et al. (US 2011/0021140 A1).
Starr et al. is applied as above.
While Starr et al. teach receiving a device state message and usage data of the drug injection device to the management during a drug non-injection period (column 5, lines 7-23; column 9, lines 1-31), Starr et al. does not teach a payment link of usage fee.
Binier et al. teach receiving a payment link of a usage fee corresponding to the usage data and executing the drug injection program on completing payment and approval of the usage fee (paragraphs [0039], [0042], and [0050]).
It would have been obvious for one of ordinary skill in the art, at the time of filing, to combine the reference of Binier et al. with Starr et al. Binier et al. teaches that their method offers the advantage of managing automated sensors into a network (paragraphs [0003] and [0025]). One of ordinary skill in the art seeking to integrate the sensors and drug injection devices of Starr et al. into a healthcare network, would have been motivated to integrate the system of Starr et al. into the teachings of Binier et al. Furthermore, one of ordinary skill in the art would have had a reasonable expectation of success, since Biner et al. teach that sensors may be readily paired into their system (paragraph [0027]).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JERRY LIN whose telephone number is (571)272-2561. The examiner can normally be reached T-F 7am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Olivia Wise can be reached at (571) 272-2249. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JERRY LIN/Primary Examiner, Art Unit 1685