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 .
Claim Objections
Claims 1 are objected to because of the following informalities:
Claim 1, line 8: “a contractile” should be replaced with –the contractile–;
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 3, 10-12, and 17 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.
Claims 3, 10, and 11 recite “the muscle section”. There are insufficient antecedent bases for these limitations in the claims. For the purposes of examination, the recitations will be interpreted to be “the contractile cross section area”.
Claim 12 is rejected by virtue of tis dependence from claim 11.
Claim 17 recites “each muscle section (S) of the body part being determined according to claim 1”. It is unclear what it means to determine a muscle section. Are parameters of the muscle determined? Is the location or composition of the muscle section determined? Although ¶ [0090] of the published application recites “The muscle section is also known by a skilled person as contractile Cross Section Area (cCSA)”, the recitation does not clearly redefine the term. Additionally, claim 1 does not include determining a muscle section, so it is unclear what claim 17 is referring to. For the purposes of examination, the recitation of “one or more muscle sections (S) of the body part, each muscle section (S)” will be interpreted to be –one or more contractile cross section areas of the body part, each of the one or more contractile cross section areas–.
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, 3, 6, 8-20, and 22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 1-19 do not include additional elements that integrate the exception into a practical application of the exception or that are sufficient to amount to significantly more than the judicial exception for the reasons provided below which are in line with the 2014 Interim Guidance on Patent Subject Matter Eligibility (Federal Register, Vol. 79, No. 241, p 74618, December 16, 2014), the July 2015 Update on Subject Matter Eligibility (Federal Register, Vol. 80, No. 146, p. 45429, July 30, 2015), the May 2016 Subject Matter Eligibility Update (Federal Register, Vol. 81, No. 88, p. 27381, May 6, 2016), the 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No. 4, p. 50, January 7, 2019), and the 2024 Guidance Update on Patent Subject Matter Eligibility (Federal Register, Vol. 89, No. 137 p. 58128, July 17, 2024).
The analysis of claim 1 is as follows:
Step 1: Claim 1 is directed to a process, which is a statutory category.
Step 2A - Prong 1: Claim 1 is directed to an abstract idea in the form of a process that, under its broadest reasonable interpretation, covers performance of the limitations in the mind but for the recitation of generic computer components. Additionally or alternatively, claim 1 is directed to an abstract idea in the form of mathematical concepts.
In particular, claim 1 recites the following limitations:
[A1]: determining the contractile cross section area as a function of a sum of a term of conductivity and a corrective term;
[B1]: the term of conductivity is a product of an electrical resistance gradient
δ
R
δ
z
between said at least two electrodes and a muscle conductivity constant (σ)
[C1]: the corrective term comprises a product of the electrical resistance gradient
δ
R
δ
z
and the square of a muscle permittivity constant (ε).
These elements [A1]-[C1] of claim 1 are directed to an abstract idea because they are processes that, under their broadest reasonable interpretation, are mere steps that are capable of being mentally performed with the aid of pen and paper. For example, a skilled artisan is mentally determining a cross section area using the mathematical formula of ¶ [0118] of the published application. Additionally or alternatively, the elements [A1]-[C1] are directed to an abstract idea because they are mathematical algorithms and/or formulas. See at least ¶ [0118] of the published application with regards to the mathematical nature of the determination of the muscle section.
Step 2A - Prong Two: Claim 1 does not recite additional elements that integrate the judicial exception into a practical application. Claim 1 recites the following additional elements:
[A2]: measuring, by means of a bioelectrical impedance analyzer, at least two electrical resistance values from at least three electrodes located on different locations of the body, wherein at least two of said at least three electrodes are located along said body part and are part of an electrode array adapted for measuring electrical potentials, wherein at least one electrode of the at least three electrodes are located on another part of the body that is different from the body part of which the contractile cross sectional area is determined; and
[B2]: determining, by means of a processing unit.
The element [A2] does not integrate the judicial exception into a practical application because it amounts to adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea. See MPEP 2106.04(d) and 2106.05(g).
The element [B2] does not integrate the judicial exception into a practical application because it amounts to mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - See MPEP 2106.04(d); MPEP 2106.05(f).
Accordingly, each of the additional elements do not integrate the abstract into a practical application because they do not impose any meaningful limitations on practicing the abstract idea.
Step 2B: Claim 1 does not recite additional elements that amount to significantly more than the judicial exception itself. Claim 1 recites the following additional elements:
[A2]: measuring, by means of a bioelectrical impedance analyzer, at least two electrical resistance values from at least three electrodes located on different locations of the body, wherein at least two of said at least three electrodes are located along said body part and are part of an electrode array adapted for measuring electrical potentials, wherein at least one electrode of the at least three electrodes are located on another part of the body that is different from the body part of which the contractile cross sectional area is determined; and
[B2]: determining, by means of a processing unit.
The element [A2] does not amount to significantly more than the judicial exception because it amounts to adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea. See MPEP 2106.05(g). Additionally, the element is well-understood, routine, and conventional. For example, the element is taught by US 4649932 A (Smith) (previously cited) in Fig. 1 and Col.4 , lines 47-68; US 5,309,917 A (Wang) (Previously cited) in Fig. 1 and Col. 5, lines 32-47; and US 2005/0177062 A1 (Skrabal) (previously cited) in Fig. 9. The plurality of disclosures indicate the well-understood, routine, and conventional nature of the element.
The element [B2] does not amount to significantly more than the judicial exception because it amounts to significantly more than the judicial exception because the elements amount to mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - See MPEP 2106.04(d); MPEP 2106.05(f); Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network)) and/or a claim to an abstract idea requiring no more than being stored on a computer readable medium which is a well-understood, routine and conventional activity previously known in the industry (See MPEP 2106.05(d)(II); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93).
In view of the above, the additional elements individually do not amount to significantly more than the above-judicial exception (the abstract idea). Looking at the limitations as an ordered combination (that is, as a whole) adds nothing that is not already present when looking at the elements taking individually. There is no indication that the combination of elements improves the functioning of a computer, for example, or improves any other technology. There is no indication that the combination of elements permits automation of specific tasks that previously could not be automated. There is no indication that the combination of elements includes a particular solution to a computer-based problem or a particular way to achieve a desired computer-based outcome. Rather, the collective functions of the claimed invention merely provide conventional computer implementation, i.e., the computer is simply a tool to perform the process.
Claims 3, 6, and 8-22 depend from claim 1, and they recite the same abstract idea as claim 1. Furthermore, these claims only contain recitations that further limit the abstract idea (that is, the claims only recite limitations that further limit the mental process or mathematical algorithm) and/or append abstract ideas (that is, the claims only recite limitations that add further mental processes or mathematical algorithms) except for the following limitations.
Claim 11 recites “at least one pair of electrical resistance values being measured at a single measurement frequency or at different measurement frequencies”. However, this element does not integrate the exception into a practical application of the exception or amount to significantly more than the judicial exception because the element amounts to adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea. See MPEP 2106.05(g). Additionally, the element is well-understood, routine, and conventional and evidenced by US 8,026,731 B1 (Emery)(previously cited) in Col. 1, lines 21-57, which discloses that in prior art approaches, multiple frequencies may be employed, and/or currents may be passed through multiple electrodes at once. Claim 20 recites similar limitations which do not integrate the exception into a practical application of the exception or amount to significantly more than the judicial exception for similar reasons.
Claim 12 recites “a first or second location of the locations of the body part at which respectively first and second electrical resistance values of the at least one pair of electrical resistance values are measured is identical to another first or second location of the locations of the body part at which respectively a first and a second electrical resistance values of another pair of electrical resistance values are measured”. However, this element does not integrate the exception into a practical application of the exception or amount to significantly more than the judicial exception because the element amounts to adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea. See MPEP 2106.05(g). Additionally, the element is well-understood, routine, and conventional and evidenced by US 8,026,731 B1 (Emery) (previously cited) and US 2005/0043895 A1 (Schechter) (previously cited). Emery teaches prior art approaches to the problem of electrical impedance tomography have typically involved passing currents between various pairs of electrodes arrayed around the periphery of the object to be imaged (Col. 1, lines 21-57), which results in pairs of electrical resistance values. Schechter teaches that it is conventional to repeat measurements over time to generate a time dependent impedance curve Z(t) (¶ [0081]), which results in measurements taken at the same locations. Claim 22 recites similar limitations which do not integrate the exception into a practical application of the exception or amount to significantly more than the judicial exception for similar reasons.
Claim 19 recites “a computer program product comprising a non-transient, machine-readable medium storing instructions which, when the program is executed by a program, cause the computer to…” However, this element does not integrate the exception into a practical application of the exception or amount to significantly more than the judicial exception because the element amounts to mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - See MPEP 2106.04(d); MPEP 2106.05(f); Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network)) and/or a claim to an abstract idea requiring no more than being stored on a computer readable medium which is a well-understood, routine and conventional activity previously known in the industry (See MPEP 2106.05(d)(II); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93).
In view of the above, the additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the above-judicial exception (the abstract idea). Looking at the limitations as an ordered combination (that is, as a whole) adds nothing that is not already present when looking at the elements taking individually. There is no indication that the combination of elements improves the functioning of a computer, for example, or improves any other technology. There is no indication that the combination of elements permits automation of specific tasks that previously could not be automated. There is no indication that the combination of elements includes a particular solution to a computer-based problem or a particular way to achieve a desired computer-based outcome. Rather, the collective functions of the claimed invention merely provide conventional computer implementation, i.e., the computer is simply a tool to perform the process.
Response to Arguments
Claim Objections
There are new grounds of claim objections necessitated by the claim amendments filed 06/22/2026.
Claim Rejections under 35 U.S.C. §112
There are new grounds of claim objections under 35 U.S.C. § 112(b) necessitated by the claim amendments filed 06/22/2026.
Claim Rejections under 35 U.S.C. §101
Applicant's arguments filed 06/22/2026 have been fully considered but they are not persuasive.
On pages 8-11 of the Remarks filed 06/22/2026, the Applicant asserts that, because the Office Action relies on assertions that the “claimed hardware” is conventional and the USPTO Guidance expressly identifies conventionality as an inquiry separate from the practical-application analysis, the Office Action does not adequately rebut the Applicant’s arguments. Page 13 of the Remarks includes similar arguments.
These arguments are not persuasive.
The Examiner notes that the Applicant’s previous arguments were directed to whether the electrode arrangement amounts to a particular arrangement that provides a practical application, citing Thales Visionix. Page 10 of the Remarks filed 02/11/2026.
Thales Visionix indicates that “the claims are directed to systems and methods that use inertial sensors in a non-conventional manner to reduce errors in measuring the relative position and orientation of a moving object on a moving reference frame” and “the claims specify a particular configuration of inertial sensors and a particular method of using the raw data from the sensors in order to more accurately calculate the position and orientation of an object on a moving platform”. Therefore, Thales Visionix considers whether the elements are conventional or particular. The Office’s response to the Applicant’s arguments also considered whether the elements were conventional or particular.
Additionally, the Office Action indicated that the additional element is recited at a high level of generality (e.g., using a generic bioelectrical impedance analyzer with generic electrodes) using conventional elements applied in conventional arrangements. Pages 14-15 of the Non-Final Rejection of 03/19/2026.
MPEP 2106.05(b)(I) discusses the particularity or generality of elements in relation to the degree to which the machine in the claim can be specifically identified (not any and all machines). The Examiner asserts that the arrangement is generic because the use of at least two electrodes along a body part (e.g., as two measurement electrodes) and another electrode located on another part of the body (e.g., as a reference electrode) covers any and all electrode arrangements for arriving at an electrical resistance gradient. Specifically, an electrical resistance gradient requires at least two voltage measurements obtained using at least two measurement electrodes spaced from a reference electrode. The claim does not provide any details regarding the electrodes, spacing of the electrodes, method for arriving at the gradient, etc., which would make the arrangement particular.
On page 12 of the Remarks filed 06/22/2026, the Applicant asserts that the Examiner does not address the “claim as a whole argument” because there is no substantive analysis of the interaction among the claimed elements.
This argument is not persuasive because they amount to a general allegation that no substantive analysis was presented. However, the Examiner considered the interaction of the electrical measurements and electrode arrangement with the remaining claim elements. See page 17 of the Non-Final Rejection mailed 03/19/2026. The remaining claim elements (i.e., the determination of the contractile cross section area using the corrective term and conductivity) do not use any of the electrical resistance values measured by the electrode arrangement, which means that the electrical measurements and electrode arrangement are not relevant to the determination. Even if one were to interpret the electrical resistance values as being related to the electrical resistance gradient, there is no indication that the electrode arrangement amounts to anything more than mere data gathering. See MPEP 2106.05(g) which indicates that necessary data gathering is still insignificant extra-solution activity.
On page 13 of the Remarks filed 06/22/2026, the Applicant asserts:
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This argument is not persuasive because they amount to a general allegation of a specific and concrete physiological measurement methodology while citing CardioNet v Infobionic. The Applicant does not discuss any of the similarities between the claims at issue in CardioNet v Infobionic and the current claims. And the Applicant does not address how the claimed electrode arrangement improves physiological measurement technology. Instead, the applicant appears to assert that the claims are “specific” like the claims in Cardionet v Infobionic for the same reasons that the claimed elements are “particular”. However, the additional elements are not particular for the reasons listed above.
Accordingly, for all of the above reasons, the Applicant’s arguments regarding the claims being directed to patentable subject matter are unpersusasive, and the rejections of these claims under §101 were maintained.
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.
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/S.C.K./Examiner, Art Unit 3791
/JACQUELINE CHENG/Supervisory Patent Examiner, Art Unit 3791
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