CTNF 17/876,098 CTNF 94735 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 07-29-01 AIA Claim 2 is objected to because of the following informalities: “the living body” in line 4 of claim 2 should read as “the living body of the human” Appropriate correction is required. 07-30-03-h AIA Claim Interpretation 07-30-03 AIA The following is a quotation of 35 U.S.C. 112(f): (f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 07-30-05 The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked. As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph: (A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function; (B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and (C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function. Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function. Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “human body model generation unit,” “contact object model generation unit,” “reproduction unit,” “correction unit,” and “estimation unit” in claims 1 and/or 7. Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. “human body model generation unit” is interpreted as a “computer apparatus,” as mentioned in [0034] of the PGPUB “contact object model generation unit” is interpreted as a “computer apparatus,” as mentioned in [0034] of the PGPUB “reproduction unit” is interpreted as a “computer apparatus,” as mentioned in [0034] of the PGPUB “correction unit” is interpreted as a “computer apparatus,” as mentioned in [0034] of the PGPUB “estimation unit” is interpreted as a “computer apparatus,” as mentioned in [0034] of the PGPUB If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 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. 07-04-03 AIA 07-04-01 Section 33(a) of the America Invents Act reads as follows: Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism. Claim 2 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability , 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Claim 3 is further rejected due to their dependency to claim 2. Claim 2 recites “…protective equipment attached to the living body” in lines 2-3, which is claiming a human organism. Examiner suggests to amend the limitation to read as “…protective equipment configured to be attached to the living body of the human.” Claims 1-9 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 structural elements, including a database. Thus, the claim is directed to a machine, 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: a reproduction unit configured to reproduce a result of an injury to the human body by using the human body model and the contact object model; a correction unit configured to correct the human body model and the contact object model based on the reproduced injury information indicated by the result of the injury to the human body and the injury information about the human body stored in the database; and an estimation unit configured to estimate the injury to the human body by using the corrected human body model and the corrected contact object model 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 an estimation unit configured to estimate the injury to the human body by using the corrected human body model and the corrected contact object model, which is merely adding insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g)). The estimating of the injury to the human body does not provide an improvement to the technological field, the method does not effect a particular treatment or effect a particular change based on the estimated injury to the human body, 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: a database configured to store, in association with each other, human body information about a human body, contact object information about a contact object, and injury information about an injury to the human body generated in contact between the human body and the contact object; a human body model generation unit configured to generate the human body model by using the human body information stored in the database; and a contact object model generation unit configured to generate a contact object model by using the contact object information stored in the database. The storing and generating steps are well-understood, routine and conventional activities for those in the field of medical diagnostics. Further, the storing and generating 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 = 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 claims 8 and 9. Regarding claim 1, the device recited in the claim is a generic device comprising generic components configured to perform the abstract idea. The recited database, human body model generation unit, and contact object model generation unit are generic sensors configured to perform pre-solutional data gathering activity and the reproduction unit, correction unit, and estimation unit are 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 2-6 recite details that merely add to the Abstract Idea and are not significantly more. Claim 7 adds to the Abstract Idea as claim 7 recites a step that could be performed mentally or by hand. The steps recited in the independent claims maintain a high level of generality even when considered in combination with the dependent claims . Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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 (i.e., changing from AIA to pre-AIA) 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1, 6, 8, and 9 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Mazumder et al. ‘585 (US Pub No. 2019/0172585) . Regarding claim 1 , Mazumder et al. ‘585 teaches an injury estimation system for estimating an injury to a human body by using a human body model and a contact object model (Title, Abstract), the injury estimation system comprising: a database (Fig. 3 memory 304 and [0037]) configured to store, in association with each other, human body information about a human body, contact object information about a contact object, and injury information about an injury to the human body generated in contact between the human body and the contact object ([0037]); a human body model generation unit configured to generate the human body model by using the human body information stored in the database (Fig. 4A full body musculoskeletal model 404 and [0051] and Fig. 5 step 502 and [0072]); a contact object model generation unit configured to generate a contact object model by using the contact object information stored in the database ([0050]; “high contact activity” and Fig. 5 step 504 and [0072]); a reproduction unit configured to reproduce a result of an injury to the human body by using the human body model and the contact object model (Fig. 4A 412 and [0053]) and Fig. 5 step 508 and [0072]; a correction unit configured to correct the human body model and the contact object model based on the reproduced injury information indicated by the result of the injury to the human body and the injury information about the human body stored in the database (Fig. 4A and [0049]; “corrective action” and Fig. 5 step 510 and [0072]); and an estimation unit configured to estimate the injury to the human body by using the corrected human body model and the corrected contact object model (Fig. 4A and [0050]; “injury risk prediction” and Fig. 5 and [0072]). Regarding claim 6 , Mazumder et al. ‘585 teaches wherein an injury to the hand of the human body is estimated ([0072] mentions that risk of injury of the full body is predicted. It is noted that a hand is part of the full body.). Regarding claim 8 , Mazumder et al. ‘585 teaches an injury estimation method for estimating an injury to a human body by using a human body model and a contact object model, the injury estimation method comprising the claimed steps as the subject matter of claim 8 is analogous to the subject matter of claim 1. Regarding claim 9 , Mazumder et al. ‘585 teaches a non-transitory computer readable medium storing an injury estimation program for estimating an injury to a human body by using a human body model and a contact object model for causing a computer to execute the claimed steps as the subject matter of claim 9 is analogous to the subject matter of claim 1 . Claim Rejections - 35 USC § 103 07-20-aia AIA The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. 07-21-aia AIA Claim s 2-4 is rejected under 35 U.S.C. 103 as being unpatentable over Mazumder et al. ‘585 in view of Pattison et al. ‘230 (US Pub No. 2014/0276230) . Regarding claim 2 , Mazumder et al. ‘585 teaches wherein the human body model includes a living body model related to a living body of a human ([0072]; “knee and ankle joint behavior of a subject”). Mazumder et al. ‘585 teaches all of the elements of the current invention as mentioned above except for wherein the human body model further includes a protective equipment model related to protective equipment attached to the living body. Pattison et al. ‘230 teaches rough, non-slip, surface 13A and 109A that is in contact with a material 110 (Fig. 1 and [0014]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the human body model of Mazumder et al. ‘585 to include a protective equipment model related to protective equipment attached to the living body as Pattison et al. ‘230 teaches that this will aid in preventing transverse boundary displacement ([0021]). Regarding claim 3 , Mazumder et al. ’585 in view of Pattison et al. ‘230 teaches all of the elements of the current invention as mentioned above except for wherein the living body model includes a parameter related to a frictional force in a surface layer of a hand of the human body, slipperiness in the surface layer of the hand of the human body, a fat amount of the hand of the human body, a muscle mass of the hand of the human body, or a bone of the hand of the human body. Pattison et al. ‘230 teaches rough, non-slip, surface 13A and 109A that is in contact with a material 110 (Fig. 1 and [0014]) that would aid in preventing transverse boundary displacement ([0021]). It is noted that Pattison et al. ‘230 takes into account of the slipperiness of the surface layer of the sample, indicating that slipperiness is considered. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the living body model of Mazumder et al. ’585 in view of Pattison et al. ‘230 to include being a parameter related to a frictional force in a surface layer of a hand of the human body, slipperiness in the surface layer of the hand of the human body, a fat amount of the hand of the human body, a muscle mass of the hand of the human body, or a bone of the hand of the human body as Pattison et al. ‘230 teaches that this will aid in preventing transverse boundary displacement ([0021]). Regarding claim 4 , Mazumder et al. ‘585 teaches wherein the contact object model includes a parameter related to a shape or a material property of the contact object (One of ordinary skill would understand that the system 300 has a parameter related to shape.). Conclusion 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. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Valvis can be reached at (571) 272-4233. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /AURELIE H TU/ Primary Examiner, Art Unit 3791 Application/Control Number: 17/876,098 Page 2 Art Unit: 3791 Application/Control Number: 17/876,098 Page 3 Art Unit: 3791 Application/Control Number: 17/876,098 Page 4 Art Unit: 3791 Application/Control Number: 17/876,098 Page 5 Art Unit: 3791 Application/Control Number: 17/876,098 Page 6 Art Unit: 3791 Application/Control Number: 17/876,098 Page 7 Art Unit: 3791 Application/Control Number: 17/876,098 Page 8 Art Unit: 3791 Application/Control Number: 17/876,098 Page 9 Art Unit: 3791 Application/Control Number: 17/876,098 Page 10 Art Unit: 3791 Application/Control Number: 17/876,098 Page 11 Art Unit: 3791 Application/Control Number: 17/876,098 Page 12 Art Unit: 3791 Application/Control Number: 17/876,098 Page 13 Art Unit: 3791