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 1-20 are currently pending. Claims 17-20 remain withdrawn. Claims 1, 9, and 13 have been amended.
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 1-16 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 receiving, by a processing device, an audio signal from an audio source. Thus, the claim is directed to a process, 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 steps of
identifying, by the processing device, an element of the audio signal that corresponds to a modulation characteristic of the desired mental state; and
determining, by the processing device, an envelope from the element
set forth a judicial exception. These steps describe a concept performed in the human mind (including an observation, evaluation, judgment, opinion). Thus, the claim is drawn to a Mental Process, which is 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 generating, by the processing device, one or more non-audio signals based on at least a rate and phase of the envelope, wherein the one or more non-audio signals are phase-shifted relative to the envelope based on a type of non-audio stimulation corresponding to the one or more non-audio signals; and generating one or more non-audio outputs, which is merely adding insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g)). The generating of one or more non-audio signal and the generating of one or more non-audio outputs do not provide an improvement to the technological field, the method does not effect a particular treatment or effect a particular change based on the generated one or more non-audio signals and generated one or more non-audio outputs, 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 receiving, by a processing device, an audio signal from an audio source; receiving, by the processing device, a desired mental state; and transmitting, by the processing device, the one or more non-audio signals to one or more non-audio output devices. Receiving data (audio signal and desired mental state) and transmitting the one or more non-audio signals are well-understood, routine and conventional activities for those in the field of medical diagnostics. Further, the receiving and transmitting 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 obtaining and comparing 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 same rationale applies to claim 9.
Regarding claims 1 and 9, the device recited in the claim is a generic device comprising generic components configured to perform the abstract idea. The recited one or more non-audio output devices is a generic device that adds insignificant extra-solution activity to the judicial exception, and the processing device is configured to perform the Abstract Idea. According to section 2106.05(f) of the MPEP, merely using a computer as a tool to perform an abstract idea does not integrate the Abstract Idea into a practical application.
The dependent claims also fail to add something more to the abstract independent claims. Claims 2, 3, 6, 8, 10, 11, 14, and 16 recite additional elements that are not significantly more than the exception. Claims 4, 5, 7, 12, 13, and 15 recite steps that add to the Abstract Idea as they recite mental processing steps. The steps recited in the independent claims maintain a high level of generality even when considered in combination with the dependent claims.
Response to Arguments
Applicant’s arguments with respect to the 35 U.S.C. 112(f) claim interpretation have been fully considered and are persuasive. The 35 U.S.C. 112(f) claim interpretation of “envelope” in claims 1, 3, 4, 9, 11, and 12 has been withdrawn.
Applicant argues that the claims do not recite an Abstract Idea as the step of identifying an element of an audio signal cannot be performed mentally or by hand. Examiner respectfully disagrees, as this step could merely be a user reviewing audio signal waveforms on a computer and identifying an element of the audio signal. Regarding the “generating” and “transmitting” steps, it is noted that the “generating” steps are seen as additional elements that are insignificant extra-solution activity to the judicial exception as these steps do not provide an improvement or transform the system.
Applicant argues that claim 1 improves how multimodal stimulation technology operates. However, generating the one or more non-audio signals based on at least a rate and phase of the envelope is merely inputting data (rate and phase of the envelope) to output a new data point (non-audio signals). Furthermore, regarding the limitation “wherein the one or more non-audio signals are phase-shifted relative to the envelope based on a type of non-audio stimulation corresponding to the one or more non-audio signals,” it is noted that the claim still does not clearly reflect the technical improvement. Examiner suggests to amend the claim to include a limitation that states that after the one or more non-audio signals are generated, the non-audio signals are synchronized with the audio signals’ modulation characteristics. This may reflect the improvement clearly in the claims.
Applicant argues that the additional elements are not well-understood, routine, and conventional (WURC). Examiner respectfully disagrees, as [0032] of the PGPUB recites that the processing device may be a smartphone, laptop, computer, playback device, etc., which are all WURC. As such, Applicant’s arguments are not persuasive and the 35 U.S.C. 101 rejection has been maintained. However, the Examiner has provided suggestions in paragraph 7 to potentially overcome the 35 U.S.C. 101 rejection.
Applicant’s arguments with respect to the 35 U.S.C. 102(a)(1) rejections have been fully considered and are persuasive. The 35 U.S.C. 102(a)(1) rejection of claims 1 and 9 has been withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. 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 AURELIE H TU whose telephone number is (571)272-8465. The examiner can normally be reached [M-F] 7:30-3:30.
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/AURELIE H TU/ Primary Examiner, Art Unit 3791
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