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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/9/26 has been entered.
Response to Arguments
Applicant’s amendments and arguments, see claims and remarks, filed 1/9/26, with respect to the 112 written description rejection and the enablement have been fully considered and are not persuasive. The Applicant argues that the claims are clearly support and comply the with written description requirement and are enabled. To support this the Applicant points to paragraphs 21, 49 and 62, that broadly states that the muscle fatigue can be tracked by accurately and reliably using only a cell phone and a BioStampRC in a point-of-care solution. The Applicant further argues that the diminution of the compression over time shows that a phone can track loss of strength due to fatigue. However, none of the cited portions disclose generating a muscular fatigue signal by just measuring accelerometer signals from two axes and the time delay of the measured EMG. The written description further fails to explicitly state how measuring the parameters results in a generated muscle fatigue signal. The specification further fails to provide any support for how a single parameter is used to generate a muscular fatigue signal let alone how a combination of more than one parameter, including the three that are claimed are combined to form a single signal. Therefore, the claiming of measuring parameters to form a singular muscular fatigue signal would require and undue amount of experimentation to recreate the claimed invention. Without knowing how the parameters being sensed alone, creates a muscular fatigue signal, without being processed to create muscular fatigue signal, there is a lack of enablement for the claimed invention.
Therefore, the rejections stand.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 7-11, 13 and 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AlA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV.
When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary (5th ed., 2002). Applicant may “express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) {internal citation omitted).It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015).
Claims 7-11, 13 and 17 fail to sufficiently describe the usage of a computer-readable instructions for generating a muscular fatigue signal in enough detail for one skilled in the art to understand how the inventor intended the function to be performed. The independent claim recites “a memory component (302) comprising computer-readable instructions for: generating a muscular fatigue signal by measuring”. The mere statement and recitation of the usage of computer readable instructions of the instant specification provides insufficient detail to the algorithm used in the memory to generate muscular fatigue by measuring and combining. The claim states that a muscular fatigue signal is generated by measuring a first and second axial measurements from a tri-axial accelerometer along with activation time delays of muscle activity measure by the EMG, but fails to explicitly state how measuring the parameters results in a generated muscle fatigue signal. Sensing an accelerometer signal provides an acceleration signal and sensing an EMG provides an EMG signal. It is unclear how the sensing of those two signals generates a muscular fatigue signal. It seems from the specification that some sort of processing would be required to analyze the signals to generate a new signal. However, the specification is silent as to how measuring the parameters results in a generated muscle fatigue signal. Further, even if the claim required more than measuring, the specification is silent as to the processing of two axes of an acceleration signal combined with EMG to form a muscular fatigue signal. Therefore, claims 7-11, 13 and 17 do not provide sufficient detail for one to replicate and understand the intended function that’s being performed.
Claims 7-11, 13 and 17 fail to sufficiently describe the usage of a first and second axial measurement from an accelerometer and a time delay of muscle activity measured by the EMG to determine a decrease in muscle strength corresponding to the first and second axial measurements and a decrease in muscle action potential velocity corresponding to the activation of time delay of muscle activity. The claim states that a muscular fatigue signal is generated by measuring a first and second axial measurements from a tri-axial accelerometer along with activation time delays of muscle activity measure by the EMG, but fails to explicitly state how those measured signals represent a decrease in muscle strength corresponding to the first and second axial measurements and a decrease in muscle action potential velocity corresponding to the activation of time delay of muscle activity. It is unclear how the sensing of those two signals generates a muscular fatigue signal. Therefore, claims 7-11, 13 and 17 do not provide sufficient detail for one to replicate and understand the intended function that’s being performed.
Claims 7-11, 13 and 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The claims generically state the system generates a muscle fatigue signal by just sensing first and second axes of an accelerometer and sensing an activation time delay of muscle activity, but fails to disclose how sensing alone generates the fatigue signal. Factors to be weighed when evaluating whether a disclosure satisfies the enablement requirement and whether any necessary experimentation is “undue” (i.e., “Wands” factors): In this case the claims include, without support, a combination of different parameters that are measured to form a muscular fatigue signal. Currently there are numerous known methods of determine muscular fatigue but none are generated from measuring data alone. The specification broadly lists the parameters but fails to specifically state how they are used and combined to form a single muscular fatigue signal. While the specification states that the system generates a muscle fatigue signal, it doesn’t describe how the just sensing a first and second axial measurement from an accelerometer along with an activation time delay of the muscle activity generates said signal. Further specification fails to describe how one would combine the different parameters to create a single muscular fatigue signal. The specification fails to provide any support for how a single parameter is used to generate a muscular fatigue signal let alone how a combination of more than one parameter, including the ones claimed are combined to form a single signal. Therefore, the claiming of the sensing of parameters to form a singular muscular fatigue signal would require and undue amount of experimentation to recreate the claimed invention. Without knowing the way in which the parameters are sensed to generate the fatigue signal, the exact formula, the exact combination and exact way to determine the fatigue from the combined signals, there is a lack of enablement for the claimed invention. Claims 8-10, 13 and 17 are rejected for inheriting the same deficiencies as claim 7.
Claims 7-11, 13 and 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The newly amended claims state that the accelerometer measures first and second axial measurements and further wherein the muscular fatigue signal represents a decrease in muscle strength corresponding to the first and second axial measurements. The Specification is silent as to the accelerometer measuring two axes and further using the sensed two axes for determining a muscular fatigue signal.
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 7-10, 13 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.
Claim 7 recites the limitation "the tri-axial accelerometer" in line 37. There is insufficient antecedent basis for this limitation in the claim.
Claims 8-10, 13 and 17 are rejected for inheriting the same deficiencies as claim 7.
Conclusion
The claims are rejected under 112 only.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REX R HOLMES whose telephone number is (571)272-8827. The examiner can normally be reached Monday-Thursday 7:00AM-5:30PM.
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/REX R HOLMES/Primary Examiner, Art Unit 3796