DETAILED ACTION
This action is responsive to the claim amendments and Applicant’s Remarks filed 18 August 2026. The Examiner acknowledges the amendments to claims 1, 3, 9, 11, 17-18, and 20-21. Claims 1-7, 9-15, and 17-22 are pending.
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 Interpretation
Examiner Notes: currently, NO limitation invokes interpretation under § 112(f).
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.
Claim(s) 1-7, 9-15, and 17-22 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. Each claim has been analyzed to determine whether it is directed to any judicial exceptions.
Representative claim(s) 9 [representing all independent claims] recite(s):
A system for assessing a biological movement performed by a subject, the system comprising:
a sensor of a mobile computing device, the sensor configured to acquire kinematic data as the mobile computing device is operated by the subject to perform the biological movement;
a processing unit; and
a non-transitory computer-readable medium having stored thereon program code executable by the processing unit for:
receiving, from the sensor, an analog signal indicative of the kinematic data;
digitizing the analog signal to generate a digital signal representing the biological movement performed by the subject, the digital signal comprising a sequence of samples obtained at a sampling rate of at least 100 Hz; and
processing the sequence of samples continuously, as the biological movement is performed by the subject, by segmenting the digital signal into multiple layers having different resolutions, the processing comprising:
determining a set of initial parameters from the digital signal, the initial parameters comprising trajectory, speed, acceleration and direction data for the sequence of samples;
segmenting, independently of a number of velocity peaks in the digital signal, the digital signal into first layer segments based on changes in the direction of the trajectory of the sequence of samples, the first layer segments being trajectory data units between two changes of direction points;
segmenting the first layer segments into second layer segments based on the acceleration data of the sequence of samples;
determining target points of the second layer segments using parameters from the second layer segments;
segmenting the first layer segments into third layer segments based on the changes in the direction of the trajectory or the acceleration data of the sequence of samples;
determining a set of output parameters based on the segmenting and the target points, the set of output parameters comprising timing information and command information that characterize the biological movement, the command information indicative of a brain input command and represented by a distance in each third layer segment corresponding to an intended distance to be covered by a lognormal pulse and by angles between the third layer segments, and the timing information indicative of a time of occurrence of the brain input command;
assessing, based on the set of output parameters, a status of a neuromuscular system of the subject; and
diagnosing a neurodegenerative disease in the subject based on detecting a deviation of the status of the neuromuscular system of the subject from a norm.
(Emphasis added: abstract idea, additional element)
Step 2A Prong 1
Representative claim(s) 9 recites the following abstract ideas, which may be performed in the mind or by hand with the assistance of pen and paper:
“processing the sequence of samples continuously, as the biological movement is performed by the subject, by segmenting the digital signal into multiple layers having different resolutions, the processing comprising: determining a set of initial parameters from the digital signal, the initial parameters comprising trajectory, speed, acceleration and direction data for the sequence of samples” – may be performed by applying known mathematical equations or formulas to already known or previously collected data to calculate at least a limited amount of data under no particular time constraint [see Applicant’s Specification ¶¶0032-0041 regarding equations and formulas used]; wherein the Examiner notes that reciting that the processing is performed “continuously, as the biological movement is performed by the subject” merely defines when the determination is performed and is not considered to impart any limitations [time constraints] that may prevent the determination from being performed when the at least limited amount of data is acquired; and wherein the Examiner notes that the sampling rate being at least 100 Hz is not considered to impart any particular limitations to the amount of data that may be processed in the mind or by hand, as there are no limitations defining a minimum amount of samples
“segmenting, independently of a number of velocity peaks in the digital signal, the digital signal into first layer segments based on changes in the direction of the trajectory of the sequence of samples, the first layer segments being trajectory data units between two changes of direction points” – may be performed by merely observing already known or previously collected data and drawing conclusions therefrom [Segmenting the trajectory comprises finding the relevant changes of direction over the sequence of samples in the first layer, and the points d1,s where there are relevant changes of direction in the trajectory (Applicant’s Specification ¶0044)]
“segmenting the first layer segments into second layer segments based on the acceleration data of the sequence of samples” – may be performed by merely applying known mathematical equations/formulas/relationships to already known or previously collected data to calculate at least a limited amount of data under no particular time constraint [see Applicant’s Specification ¶¶0046-0048, Figures 4A-C regarding equations/formulas/relationships applied]
“determining target points of the second layer segments using parameters from the second layer segments” – may be performed by applying known mathematical equations or formulas to already known or previously collected data to calculate at least a limited amount of data under no particular time constraint [see Applicant’s Specification ¶¶0049-0051 regarding equations and formulas used]
“segmenting the first layer segments into third layer segments based on the changes in the direction of the trajectory or the acceleration data of the sequence of samples” – may be performed by merely applying known mathematical equations/formulas/relationships to already known or previously collected data to calculate at least a limited amount of data under no particular time constraint [see Applicant’s Specification ¶¶0052-0054 regarding equations/formulas/relationships applied]
“determining a set of output parameters based on the segmenting and the target points, the set of output parameters comprising timing information and command information that characterize the biological movement, the command information indicative of a brain input command and represented by a distance in each third layer segment corresponding to an intended distance to be covered by a lognormal pulse and by angles between the third layer segments, and the timing information indicative of a time of occurrence of the brain input command” – may be performed by merely applying known mathematical equations/formulas/relationships to already known or previously collected data to calculate at least a limited amount of data under no particular time constraint [see Applicant’s Specification ¶¶0056-0077 regarding equations/formulas/relationships applied], and wherein the additional limitations regarding the command information and the timing information are considered to merely limit any mental conclusions drawn therefrom from the calculated data
“assessing, based on the set of output parameters, a status of a neuromuscular system of the subject” – may be performed by merely drawing mental conclusions based on known or derived data or information [Applicant’s Specification ¶0080]
“diagnosing a neurodegenerative disease in the subject based on detecting a deviation of the status of the neuromuscular system of the subject from a norm” – may be performed by merely drawing mental conclusions based on known or derived data or information [Applicant’s Specification ¶¶0003, 0079-0080]
If a claim, under BRI, covers performance of the limitations in the mind but for the mere recitation of extra-solutionary activity (and otherwise generic computer elements) then the claim falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea under Step 2A Prong 1 of the Mayo framework as set forth in the 2019 PEG.
No limitations are provided that would force the complexity of any of the identified evaluation steps to be non-performable by pen-and-paper practice.
Alternatively or additionally, these steps describe the concept of using implicit mathematical formula(s) [i.e., “processing the sequence of samples continuously, as the biological movement is performed by the subject, by segmenting the digital signal into multiple layers having different resolutions, the processing comprising: determining a set of initial parameters from the digital signal, the initial parameters comprising trajectory, speed, acceleration and direction data for the sequence of samples”, “segmenting, independently of a number of velocity peaks in the digital signal, the digital signal into first layer segments based on changes in the direction of the trajectory of the sequence of samples, the first layer segments being trajectory data units between two changes of direction points”, “segmenting the first layer segments into second layer segments based on the acceleration data of the sequence of samples”, “determining target points of the second layer segments using parameters from the second layer segments”, “segmenting the first layer segments into third layer segments based on the changes in the direction of the trajectory or the acceleration data of the sequence of samples”, “determining a set of output parameters based on the segmenting and the target points, the set of output parameters comprising timing information and command information that characterize the biological movement, the command information indicative of a brain input command and represented by a distance in each third layer segment corresponding to an intended distance to be covered by a lognormal pulse and by angles between the third layer segments, and the timing information indicative of a time of occurrence of the brain input command”, “diagnosing a neurodegenerative disease in the subject based on detecting a deviation of the status of the neuromuscular system of the subject from a norm”] to derive a conclusion based on input of data, which corresponds to concepts identified as abstract ideas by the courts [Diamond v. Diehr. 450 U.S. 175, 209 U.S.P.Q. 1 (1981), Parker v. Flook. 437 U.S. 584, 19 U.S.P.Q. 193 (1978), and In re Grams. 888 F.2d 835, 12 U.S.P.Q.2d 1824 (Fed. Cir. 1989)]. The concept of the recited limitations identified as mathematical concepts above is not meaningfully different than those mathematical concepts found by the courts to be abstract ideas.
The dependent claims merely include limitations that either further define the abstract idea [e.g. limitations relating to the data gathered or particular steps which are entirely embodied in the mental process] and amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they are merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Thus, these concepts are similar to court decisions of abstract ideas of itself: collecting, displaying, and manipulating data [Int. Ventures v. Cap One Financial], collecting information, analyzing it, and displaying certain results of the collection and analysis [Electric Power Group], collection, storage, and recognition of data [Smart Systems Innovations].
Step 2A Prong 2
The judicial exception is not integrated into a practical application.
Representative claim 9 only recites additional elements of extra-solutionary activity – in particular, extra-solution activity [generic computer function, pre-solution data gathering as a necessary precursor for the mental processes] – without further sufficient detail that would tie the abstract portions of the claim into a specific practical application (2019 PEG p. 55 – the instant claim, for example does not tie into a particular machine, a sufficiently particular form of data or signal collection – via the claimed extra-solution activity as identified above, or a sufficiently particular form of display or computing architecture/structure).
Dependent claim(s) 2-7, 10-15, and 17-22 merely add detail to the abstract portions of the claim but do not otherwise encompass any additional elements which tie the claim(s) into a particular application/integration [the dependent claim(s) recite generic ‘steps’ which encompass mere computer instructions to carry out an otherwise wholly abstract idea].
Accordingly, the claim(s) are not integrated into a practical application under Step 2A Prong 2.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Independent claims 1 and 9 as individual wholes fail to amount to significantly more than the judicial exception at Step 2B. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of extra-solutionary activity [i.e., generic computer function, data gathering] and generic computer elements cannot amount to significantly more than an abstract idea [MPEP § 2106.05(f)] and is further considered to merely implement an abstract idea on a generic computer [MPEP § 2106.05(d)(II) establishes computer-based elements which are considered to be well understood, routine, and conventional when recited at a high level of generality].
For the independent claim portions and dependent claims which provide additional elements of extra-solutionary data gathering, MPEP § 2106.05(g) establishes that mere data gathering for determining a result does not amount to significantly more. The extra-solutionary activity of processor steps [acquiring, storing signals etc.] as presently recited, cannot provide an inventive concept which amounts to significantly more than the recited abstract idea.
For the independent claims as well as the dependent claims merely reciting generic computer elements and functions [processing unit, non-transitory computer-readable medium having stored thereon program code, and functions therein, each recited at a high level of generality], MPEP § 2106.05(d)(II) establishes computer-based elements which are considered to be well understood, routine, and conventional when recited at a high level of generality.
Accordingly, the processing unit and non-transitory computer-readable medium recited at a high level of generality, as presently limited, cannot provide an inventive concept since they fall under a generic structure and/or function that does not add a meaningful additional feature to the judicial exception(s) of the claim(s).
Claim(s) 1 and 9 recite “a sensor of a mobile computing device, the sensor configured to acquire kinematic data as the mobile computing device is operated by the subject to perform the biological movement”. Such a sensor is considered well-understood, routine, and conventional, as known by at least:
Applicant’s disclosure is not particular regarding the particular structure of the generically claimed sensor, and recites that the sensor may comprise 3d motion sensing input devices or cameras [In some embodiments, the sensor(s) 102 are one or more microphones, to capture speech-related kinematic data. The microphone converts sound into an electrical signal and may be implemented using any known or other microphone technology, such as a dynamic microphone (also called moving-coil microphone), a condenser microphone (also called capacitor microphone or electrostatic microphone), a piezoelectric microphone, a fiber-optic microphone, a laser microphone, a MEMS (microelectrical-mechanical system) microphone, and the like. In some embodiments, the sensor(s) 102 are one or more touchscreen displays of a device, such as a tablet or other computing device, to capture handwriting-related kinematic data (Applicant’s Specification ¶0026); In some embodiments, the sensor(s) 102 are one or more accelerometers for capturing natural movement-related kinematic data. For example, the accelerometer may be part of a tablet, a smartwatch, a smartphone, and the like. The accelerometer measures acceleration, i.e. the rate of change of the velocity of an object as it is displaced in space (x, y, z) by the subject. Any technology suitable for measuring proper acceleration, by converting mechanical motion into an electrical signal, may be used (Applicant’s Specification ¶0027)]. This lack of disclosure is acceptable under 35 U.S.C. 112(a) since this hardware performs non-specialized functions known by those of ordinary skill in the medical technology arts. Thus, Applicant's specification essentially admits that this hardware is conventional and performs well understood, routine and conventional activities in the field of assessing biological movement. In other words, Applicant’s specification demonstrates the well-understood, routine, conventional nature of the above-identified additional element because it describes such an additional element in a manner that indicates that the additional element is sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. 112(a) [see Berkheimer memo from April 19, 2018, Page 3, (III)(A)(1), not attached]. Adding hardware that performs “well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible [TLI Communications].
Deng (US-20180078179-A1) [First sensor 14 is integral to mobile device 12 and is electrically powered by the mobile device 12 battery source. In one particular embodiment, first sensor 14 is an accelerometer and may be described throughout the disclosure as accelerometer 14. Second sensor 16 is integral to mobile computing device 12 and is also powered by the battery source. In one particular embodiment, second sensor 16 is a gyroscope and may be referred to throughout this disclosure as gyroscope 16. Accelerometer 14 and gyroscope 16 are sensors ordinarily found in conventional smartphones and do not require additional fabrication or installation to function with a preexisting smartphone or mobile computing device 12 (Deng ¶0028)]
Zhang (US-20190175077-A1) [To illustrate possible implementations of the wearable electronic device technology, the functionality according to aspects of some embodiments were implemented on a Sony SmartWatch3 and a Motorola Moto 360. Implementations utilized sensor data from the gyroscope, accelerometer, and microphone of the SmartWatch3 and the Moto 360 (Zhang ¶0106); The sound from the microphones on the SmartWatch3 and the Moto 360 were down-sampled to 8 kHz in the presented implementations to make data collection effective but practical. As would be appreciated and understood, sound from the microphones may be sampled at a higher sample rate to capture a broader range of sound frequencies (Zhang ¶0109); For implementations utilizing the SmartWatch3, the gyroscope was sampled at the highest sampling rate available (200 Hz). For implementations utilizing the Moto 360, the gyroscope was sampled at 50 Hz. As would be appreciated and understood, the gyroscope could be sampled at rates less than 50 Hz and up to the physical limitations of the wearable device to capture the desired frequency range of rotational movement (Zhang ¶0112); Implementations utilized linear acceleration data (excluding acceleration due to gravity) instead of raw accelerator data to prevent the orientation of the wrist from influencing the gesture recognition results, although raw acceleration data could be utilized in other embodiments and implementations. For implementations utilizing the SmartWatch3 and the Moto 360, the accelerometer was sampled at 250 Hz and 25 Hz respectively. As would be appreciated and understood, the accelerometer could be sampled at rates up to the physical limitations of the wearable device to capture the desired frequency range of changes in acceleration (Zhang ¶0113)]
Claim(s) 1 and 9 recite “a non-transitory computer-readable medium having stored thereon program code executable by the processing unit for:… digitizing the analog signal to generate a digital signal representing the biological movement performed by the subject”. Such processing circuitry/electronics is considered well-understood, routine, and conventional, as known by at least:
Applicant’s disclosure is not particular regarding the particular structure of the generically claimed processing unit capable of performing the claimed function of digitizing the analog signal to generate a digital signal, and recites the processing unit and corresponding functionality at a high level of generality [In some embodiments, the signal received from sensor(s) 102 is an analog signal and the signal is digitized by the data acquisition unit 106. In some embodiments, a digitized signal is received directly at the data acquisition unit 106 (Applicant’s Specification ¶0031)]. This lack of disclosure is acceptable under 35 U.S.C. 112(a) since this hardware performs non-specialized functions known by those of ordinary skill in the medical technology arts. Thus, Applicant's specification essentially admits that this hardware is conventional and performs well understood, routine and conventional activities in the field of signal processing. In other words, Applicant’s specification demonstrates the well-understood, routine, conventional nature of the above-identified additional element because it describes such an additional element in a manner that indicates that the additional element is sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. 112(a) [see Berkheimer memo from April 19, 2018, Page 3, (III)(A)(1), not attached]. Adding hardware that performs “well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible [TLI Communications].
Paris (US-20140188010-A1, previously presented) [it is contemplated that the processing circuitry 50 can comprise an analog-to-digital converter 54 as is conventionally known in the art. In this aspect, it is contemplated that the analog-to-digital converter 54 can be operatively coupled to and positioned between the plurality of accelerometers 30 and at least one of a memory 64 and a wireless transmitter 56. It is further contemplated that the analog-to-digital converter 54 can be configured to receive the outputs of the plurality of accelerometers 30 and convert the outputs into a digital signal configured for further processing by the processing circuitry (Paris ¶0056)]
Examiner’s Note Regarding Particular Treatment or Prophylaxis: Claim(s) 1 and 9 recite subject matter regarding “assessing, based on the set of output parameters, a status of a neuromuscular system of the subject; and diagnosing a neurodegenerative disease in the subject based on detecting a deviation of the status of the neuromuscular system of the subject from a norm”, which the Examiner notes is not considered to be a particular treatment or prophylaxis, as none of the identified claims positively recite or include language that is considered to be a particular treatment or prophylaxis as an additional element to integrate the judicial exception into a practical application or allow the identified claims to amount to significantly more than the judicial exception [MPEP § 2106.04(d)(2)], as the Examiner notes that the broadest reasonable interpretation of the steps/processor functions of “assessing… a status of a neuromuscular system” and “diagnosing a neurogenerative disease in the subject” may be performed in the mind or by hand [See corresponding Step 2A Prong 1 analysis above] and thus do not define an additional element of a particular treatment or prophylaxis.
Accordingly, the claim(s) as whole(s) fail amount to significantly more than the judicial exception under Step 2B.
Examiner’s Note Regarding Prior Art
The closest prior art of record is Wagner (US-20160262685-A1, previously presented), which fails to teach, disclose, or suggest each and every limitation of claims 1 and 9, alone or in combination with any other reference [See p. 13-14 of Non-Final Rejection dated 19 May 2025 regarding subject matter considered to be taught by Wagner, not presently reproduced; as well as p. 16 of the Non-Final Rejection dated 1 April 2026 regarding subject matter considered to not be taught by Wagner, not presently reproduced], such that it would not have been obvious to one of ordinary skill in the art to have modified Wagner, alone or in combination with any other reference, to employ the subject matter that Wagner fails to teach, disclose, or suggest, without the benefit of hindsight. The subject matter of claims 1, 9, and those dependent therefrom is not considered to be taught by any prior art reference.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks p. 8, filed 18 August 2026, with respect to the previously presented Specification objections have been fully considered and are persuasive. The objection to the specification for the abstract being greater than 150 words has been withdrawn.
Applicant’s arguments, see Applicant’s Remarks p. 8, with respect to the previously applied rejections under § 112(b) have been fully considered and are persuasive. The rejections of claims 3, 11, 17, and 20 under § 112(b) have been withdrawn.
Applicant's arguments, see Applicant’s Remarks p. 9-12, with respect to the previously applied rejections under § 101 have been fully considered but they are not persuasive.
The Applicant reiterates, in light of the August 4, 2026 Memorandum, that independent claims 1 and 9 do not recite a mental process and do not fall within the “Mental Processes” grouping of abstract ideas because the claim contains limitations [Applicant cites limitations directed towards use of a sensor, steps to digitize an analog signal, and “processing, at a computing device, the sequence of samples…”] that cannot be practically performed in the human mind or using pen and paper. The Applicant further asserts that as the limitation of “the digital signal comprising a sequence of samples obtained at a sampling rate of at least 100 Hz” further restricts the claim limitations from being performed in the mind or by pen-and-paper practice, as the human mind is not equipped (whether assisted with pen and paper or not) to continuously process a sequence of samples obtained at a sampling rate of at least 100 Hz. However, the Examiner disagrees with the Applicant’s argument, as the Examiner notes that Step 2A Prong 1 is a determination of whether a claim recites a judicial exception, i.e., whether the claim sets forth or describes an abstract idea, such that the recitation of limitations that are not abstract ideas/cannot be performed in the mind or by hand does not preclude the claim from reciting a judicial exception elsewhere in the claim or a claim dependent therefrom [MPEP § 2106.04(II)(A)(1)]. The Examiner acknowledges that the limitations cited by the Applicant directed towards positive recitation of use of a sensor and digitization of an analog signal are not limitations that may be performed in the mind or by hand, but merely reciting that the processing steps are performed at a computing device or performed by a processing unit is considered to merely implement an abstract idea on a generic computer [MPEP § 2106.05(d)(II) establishes computer-based elements which are considered to be well understood, routine, and conventional when recited at a high level of generality]. The Examiner further disagrees tha the limitation of “the digital signal comprising a sequence of samples obtained at a sampling rate of at least 100 Hz” further restricts the claim limitations from being performed in the mind or by pen-and-paper practice, as the claims further fail to limit a minimum amount of samples.
The Applicant further argues that in light of the Examiner’s analysis that claim 9 falls within the “Mathematical concepts” grouping of abstract ideas, the Applicant reiterates that, while some features of independent claims 1 and 9 may involve mathematical concepts, the claims do not recite or specify mathematical relationships (between variables or numbers), numerical formulas or equations, or mathematical calculations as such. The Examiner acknowledges that the claims do not explicitly recite mathematical relationships, numerical formulas/equations, or mathematical calculations; however, the Examiner notes that the limitations identified at Step 2A Prong 1 as being directed towards abstract idea(s) alternatively or additionally describe the concept of using implicit mathematical formulas to derive a conclusion of data to derive a conclusion based on input of data, which corresponds to concepts identified as abstract ideas by the courts, wherein the analysis of such is merely to emphasize that the identified limitations at Step 2A Prong 1 are considered to be directed towards abstract ideas.
The Applicant asserts that, even assuming arguendo that the claims recite an abstract idea (which the Applicant does not concede), the claims integrate the abstract idea into a practical application at Step 2A Prong 2, as the claims reflect an improvement to other technology or a technical field [the Applicant asserts that the segmenting based on trajectory curvature provides the improvement (Applicant’s Specification ¶¶0004, 0043, 0080)]. However, the Examiner disagrees with the Applicant’s argument, as the Examiner notes that the argued limitations directed towards the steps of segmenting were previously analyzed at Step 2A Prong 1 as being directed towards an abstract idea that may be performed in the mind or by hand and were further analyzed in light of the August 4, 2025 Memorandum and the December 5, 2025 Memorandum in the Response to Arguments of the Non-Final Rejection dated 1 April 2026 [See Examiner’s responses to Applicant’s arguments on p. 19-23, not presently reproduced], which the Examiner maintains. The Examiner reiterates that the argued limitations are not considered to defines improvements that may be considered to be additional elements, as the limitations directed towards the steps of segmenting were identified as being directed towards abstract ideas. As such, under MPEP 2106.05(a), "an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology". Specifically, the "improvements" analysis in Step 2A determines whether the claim pertains to an improvement to the functioning of a computer or to another technology without reference to what is well-understood, routine, conventional activity [MPEP § 2106.04(d)(1)]. It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception [MPEP § 2106.05(a)]. It is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation. That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 120 USPQ2d 1473 (Fed. Cir. 2016) (a method of translating a logic circuit into a hardware component description of a logic circuit was found to be ineligible because the method did not employ a computer and a skilled artisan could perform all the steps mentally) [MPEP § 2106.05(a)(I)].
The Applicant further refers to p. 3 of the Memorandum and asserts that that limitations of claims 1 and 9 that meaningfully limit the alleged abstract idea are dismissed [the Applicant directs attention to the limitation “acquiring, using a sensor of a mobile computing device, kinematic data as the mobile computing device is operated by the subject to perform the biological movement” as further meaningfully limit the alleged abstract idea and ties the claims to a particular application (a “particular machine” as per MPEP § 2106.05(b))]. However, the Examiner disagrees with the Applicant’s argument, as the Examiner notes that the argued limitation is considered to be directed towards pre-solution data gathering as a necessary precursor for the mental processes using a sensor that is considered well-understood, routine, and conventional [Applicant’s Specification ¶¶0026-0027; Deng ¶0028; Zhang ¶¶0106, 0109, 0112-0113], such that the argued limitation is not considered integrate the abstract idea into a practical application at Step 2A Prong 2 or amount to significantly more at Step 2B.
The Applicant also asserts that independent claims 1 and 9 positively recite a concrete diagnostic determination tied to specific biophysical parameters [the Applicant directs attention to the limitation “assessing, based on the set of output parameters, a status of a neuromuscular system of the subject” and “diagnosing a neurodegenerative disease in the subject based on detecting a deviation of the status of the neuromuscular system of the subject from a norm”] as additional elements that further integrate the alleged abstract idea into a practical application. However, the Examiner disagrees with the Applicant’s argument that the argued limitations integrate the argued abstract idea(s) into a practical application, as the argued limitations of “assessing…” and “diagnosing…” are identified as abstract ideas at Step 2A Prong 1 that may be performable in the mind or by hand [observing at least a limited amount of data/information and drawing mental conclusions therefrom], such that the argued limitations cannot integrate the abstract idea into a practical application.
The Applicant additionally asserts that a person of ordinary skill in the art would readily recognize that the claim submitted herewith include a specific combination of limitations which are not considered well-understood or routine and which are instead unconventional in the field of data retention, wherein the Applicant directs attention to the claimed multi-layer segmentation producing a concrete, measurable output that conventional velocity-peak-based analysis cannot achieve, such that the claims as a whole amount to significantly more than any judicial exception at Step 2B. However, the Examiner notes that the examination under 35 U.S.C. 101 is distinct and separate from the examination under 35 U.S.C. 102 and 35 U.S.C. 103, as recited in the MPEP: As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.")…Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101 [MPEP § 2106.05(I)].
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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/SEVERO ANTONIO P LOPEZ/Examiner, Art Unit 3791
