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 .
Status of Claims
This action is in response to the application as filed on August 29, 2022. Claim 1 is pending.
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show the personal electronic device, a processor, a camera, a display screen, first and second features. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d).
In addition, the drawings are objected for informalities. The wording in Fig. 3 is not readable and/or reproduceable.
Corrected drawing sheets in compliance with 37 CFR § 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 § CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the specification lacks antecedent for the personal electronic device, the processor, the camera, the display screen, and the first and second features.
Claim Rejections - 35 USC § 112
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.
Claim 1 is rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the following computer/processor-based functions:
illustrate a game module on the display screen, the game module including at least a first feature and a second feature;
superimpose an image of a body part over the game module; wherein movement of the image of the body part from the first feature to the second feature requires the body part to traverse a desired range of motion.
Applicant’s specification is silent with regard to either of these functions. The specification does not include any description of a processor, the programming of the processor, what a feature is or how it is created, how an image of the body part is superimposed on the game module, how movement of the image of the body part is carried out.
According to MPEP 2161.01 I., 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, 86 USPQ2d 1609, 1623 (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) (reversing and remanding the district court’s grant of summary judgment of invalidity for lack of adequate written description where there were genuine issues of material fact regarding "whether the specification show[ed] possession by the inventor of how accessing disparate databases is achieved"). If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made.
Here the specification is devoid of any detail of how to provide the claimed elements. The disclosure completely lacks any description of the algorithm (e.g., flow chart, mathematical model, code, prose) of how the illustration, superimposition, or movement is accomplished. There is no description of the software, components, off the shelf or otherwise that are used to implement these functions. As no details are provided. Therefore, one skilled in the art is left to “guess” at what is meant by the claimed functions.
The specification must explicitly disclose the algorithm for performing the claimed function, and simply reciting the claimed function in the specification will not be a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1383-85, 91 USPQ2d 1481, 1491-93 (Fed. Cir. 2009); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1366-67, 88 USPQ2d 1751, 1756-57 (Fed. Cir. 2008); Ex parte Rodriguez, 92 USPQ2d 1395, 1405-06 (Bd. Pat. App. & Inter. 2009). Here the specification provides no such description, therefore, the specification lacks adequate written description for the claimed functions.
As a result, claims 1 contains subject matter which lacks adequate written description, and for at least these reasons, claim 1 is found to fail the written description requirement.
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.
Claim 1 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
In re claim 1, the language “feature” is indefinite. It is not clear what is meant by a feature of the game module and there is no corresponding description of this term in the claim or the specification. It is unclear if this is a rendering of an object in the game, a game mechanic or option of the game, an input or other aspect of element of a game. For purpose of examination this is interpreted as an object displayed on the screen.
In addition, it is unclear how a camera superimposes an image of a body part over the game module. A typical camera can obtain an image, but some other device such as a processor would be required to superimpose the image in the game. Applicant’s specification gives no detail or guidance about this feature or how it is implemented. For purpose of examination this is interpreted as a processor obtaining image data from a camera which is used to generate a display in the game.
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 1 is rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293-94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination” to determine whether there are additional elements that “transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’-i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Examiners must perform a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter.
Claim 1 is directed to a rehabilitation tool (i.e., a system). As such, the claimed invention falls into the broad categories of invention. However, even claims that fall within one of the four subject matter categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas. See Diamond v. Chakrabarty, 447 U.S. at 309.
In Step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. According to the specification, “.” (par. 1).
Independent claim 1 recites the following (with emphasis):
A physical rehabilitation tool, comprising:
a personal electronic device having a processor, a camera and a display screen;
the processor programed to illustrate a game module on the display screen,
the game module including at least a first feature and a second feature; and
the camera configured to superimpose an image of a body part over the game module;
wherein movement of the image of the body part from the first feature to the second feature requires the body part to traverse a desired range of motion.
The underlined portions of claim 1 generally encompass the abstract idea. Under prong 2, the claimed invention encompasses an abstract idea in the form of certain methods of organizing human activity and/or mental processes. The claims recite a method of rehabilitating a client. This is a method of organizing human activity because it is drawn to a method of managing the personal behavior during rehabilitation sessions.
The use of guides or props in physical therapy is basic to the rehabilitation process. For example, a physical therapist may ask a client to move their foot from one marked position to another. Games also regularly used to motivate and/or engage the user. Applicant simply seeks to automate this well-known activity using generic computers recited at a high level of generality, and, therefore, the claims are directed to the abstract concept sub-grouping of "managing personal behavior or relationships or interactions between people", for example, a therapist conducting therapy of a client using a game as motivation during a rehabilitation session.
Under prong 2, the instant claims do not integrate the abstract idea into a practical application. In other words, the claims do not (1) improve the functioning of a computer or other technology, (2) effect a particular treatment or prophylaxis for a disease or medical condition (3) are not applied with any particular machine, (4) do not effect a transformation of a particular article to a different state, and (5) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim, as a whole, is more than a drafting effort designed to monopolize the exception, the claims are directed to the judicially recognized exception of an abstract idea. See MPEP §§ 2106.05(a)-(c), (e)-(h).
While certain physical elements (i.e., elements that are not an abstract idea) are present in the claims, such features do not affect an improvement in any technology or technical field and are recited in generic (i.e., not particular) ways. Similarly, the abstract idea does not improve the functioning of these physical elements. In recent cases, the CAFC has made it clear that the term “practical application” means providing a technical solution to a technical problem in computers or networks per se. To be patent-eligible, the claimed invention must improve the computer as a computer or network as a network. Applicant’s invention does not meet these requirements. Applicant’s invention uses computers to receive, process, and output data. This does not improve the computer qua computer. Instead, Applicant’s invention uses generic computers as a tool to implement the abstract idea. As such, the claims are not eligible under Section 101.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. The additional elements or combination of elements other than the abstract idea per se amounts to no more than: a system having a processor, a camera, and a display configured to perform the abstract idea. Applicant’s specification does not provide any details of these common computer components; therefore, this are assumed to recite off the shelf general purpose computing components such a display, a processor, a digital camera. As a result, nothing in Applicant’s specification indicates the computer system performs anything other than well understood, routine, and conventional functions, such as receiving, processing, and displaying data. See, Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (ed. Cir. 2016) (“Nothing in the claims, understood in light of the [S]pecification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information.”); see also Alice, 573 US. at 224—26 (receiving, storing, sending information over networks insufficient to add an inventive concept); buySAFE, Inc. v. Google, Inc., 765 F.3d 1340, 1355 (ed. Cir, 2014) (That a computer receives and sends the information over a network-—with no further specification—is not even arguably inventive.”). At best, Applicant’s claimed subject matter simply uses generic processing circuitry to perform the abstract idea of converting input data from one form to another (e.g., images to display objects). As noted above, the use of a generic computer system does not alone transform an otherwise abstract idea into patent-eligible subject matter. As our reviewing court has observed, “after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.” DDR Holdings, 773 F.3d at 1256 (citing Alice, 573 U.S. at 223).
As a result, these additional elements amount to generic, well-understood and conventional computer components. As demonstrated by Berkheimer v. HP, such computer functions cannot save an otherwise ineligible claim under §101. In short, each step or operation does no more than require a generic computer to perform generic computer functions.
Considered as an ordered combination, only generic computer components are present. Viewed as a whole, the claims simply recite the concept of giving instructions by a generic computer. The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer. Under relevant court precedents, that is not enough to transform an abstract idea into a patent-eligible invention.
As a result, claim 1 is not patent eligible
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. §§ 102 and 103 (or as subject to pre-AIA 35 U.S.C. §§ 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. § 102(a)(1) as being anticipated by U.S. Publication No. 2014/0188009 by Lange et al. (“Lange”).
In re claim 1, Lange discloses a physical rehabilitation tool [¶52], comprising: a personal electronic device having a processor, a camera and a display screen [¶¶211-227 describe a laptop, camera, and display screen]; the processor programed to illustrate a game module on the display screen [Figs. 8-12,¶¶171-188, among others, describes games implemented by a processor, e.g., to illustrate a mine with jewels (target object), which is rendered on a display screen], the game module including at least a first feature and a second feature [Figs. 8-12,¶¶171-188, among others, describe target objects (more than two) rendered as jewels about an avatar of the user to be collected by the user during a therapy exercise]; and the camera configured to superimpose an image of a body part over the game module [Figs. 8-12,¶¶171-188, among others, describe a camera to capture user movements that are mapped to the avatar in the game, for example, the position of a hand of the user is mapped to hand of avatar which is rendered in the game]; wherein movement of the image of the body part from the first feature to the second feature requires the body part to traverse a desired range of motion [Figs. 8-12,¶¶171-188, among others, describe user moves hands to control hands of avatar to grab jewels (target objects) in a therapy game configured to monitor and improve user’s range of motion].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is listed on the attached Notice of References Cited.
US 2015/0133820 discloses a video game which challenges the patient's cognitive and movement abilities in combination. A controller assesses patient progress based on saved sensor data of the measured motion of the patient. A method for keeping a patient engaged during virtual reality-based rehabilitation, comprising: selecting a game for the patient in accordance with a rehabilitation plan; exercising the patient; and, presenting objects to the patient in a virtual reality environment during exercising which require patient interaction including measuring the patient's range of motion at least one of before, during and after exercising. Object are presented to the patient is at least partly based on the measuring. Patient engagement with the game is tracked and the game is adapted based on the patient tracking in order to enhance patient engagement.
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/ANDREW BODENDORF/Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715