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, 7-9, 13-14, and 44-46 are pending. Claims 1, 7-9, 13-14, and 44-46 are rejected under new grounds due to amendments.
Claim Rejections - 35 USC § 101
Claims 1-4, 7-14, and 44-46 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 steps or acts, including detecting whether sharp wave ripple activity is above a set threshold. Thus, the claim is directed to mathematical concept, 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 step of detecting whether sharp wave ripple activity is above a set threshold and allowing a subject to notice, identify, and continue with the mental strategies, thereby increasing their own SWR activity, hippocampal replay, and memory performance sets forth a judicial exception. This step describes a concept that is a mathematical operation or an act of calculating using mathematical methods to determine a SWR number above a threshold. Thus, the claim is drawn to a Mathematical Calculation, which is an Abstract Idea. The steps of noticing, identifying, and continuing steps are also directed to a Mental Process, which is also an Abstract Idea.
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 providing feedback based on the SWR activity meeting threshold criteria and wherein the feedback comprises visual and/or auditory cues, which is merely adding insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g)). The provided feedback 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 feedback, 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 recording a plurality of signals and filtering the recorded signals. Recording and filtering data from the recorded data is well-understood, routine and conventional activity for those in the field of medical diagnostics. Further, the recording and filtering 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 recording, filtering, and extracting information 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 dependent claims also fail to add something more to the abstract independent claims as they generally recite method steps pertaining to data gathering and processing. The recording, filtering, and extracting information steps recited in the independent claims maintain a high level of generality even when considered in combination with the dependent claims.
Examiner’s Note
The prior art of record fails to teach or suggest, providing a cue to the subject when the SWR activity above the set threshold is detected in the filtered plurality of signals, wherein the cue is a visual cue, an auditory cue, or a combination thereof.
However, due to the 35 U.S.C. 101 rejection stated above, claims are not in condition for allowance.
Response to Arguments
Applicant's arguments filed 05/07/2026 have been fully considered but they are not fully persuasive.
Applicant contends that Example 29 is analogically similar to the present claims, on pages 6-8 of the Remarks. Applicant’s argument is unpersuasive and misguided. Applicant analogizes that the fictious disease (Julitis) with memory performance, however, Julitis is a disease and memory performance is a symptom associated with many diseases, medication states, drug states, etc. Applicant further analogizes diagnosing Julitis with determining whether a brain signal parameter (SWR) is above a threshold, however, the determination is not a diagnosis. Instead, the determination is merely a mathematical calculation for determining whether a signal parameter is above a threshold. In this case, SWR activity is not correlated to a specific diagnosis. Lastly, Applicant analogizes administering a specific medication for a specific disease with providing a cue to a subject, however, these are materially different. How is the cue similar to medication? What specific disease/condition is being treated, not the symptom, e.g. memory loss, of many diseases/conditions? Example 29 includes the medication type and disease. In this case, there is no medication, teachings how the alleged medication improves memory based on subject conditions like disease, drugs, damage, or the like, nor how the treatment is tracked, e.g. increase in memory. Therefore, the analogical reasoning of Example 29 with the present claims is unfounded.
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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARTIN NATHAN ORTEGA whose telephone number is (571)270-7801. The examiner can normally be reached M-F 7:10 am - 5:00 pm.
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, Robert (Tse) Chen can be reached at (571) 272-3672. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARTIN NATHAN ORTEGA/Examiner, Art Unit 3791
/AURELIE H TU/Primary Examiner, Art Unit 3791
Prosecution Insights