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 .
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.
Notice of Amendment
In response to the amendment(s) filed on 12/3/25, amended claim(s) 1, and canceled claim(s) 21-22 is/are acknowledged. The following new and/or reiterated ground(s) of rejection is/are set forth:
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) 1-4, 6-10, 12-13, and 17-19 is/are rejected under 35 U.S.C. 101 because the claimed invention, considering all claim elements both individually and in combination as a whole, do not amount to significantly more than a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea).
Claim 1 is a claim to a process, machine, manufacture, or composition of matter and therefore meets one of the categorical limitations of 35 U.S.C. 101. However, claim 1 meets the first prong of the step 2A analysis because it is directed to a/an abstract idea as evidenced by the claim language of “an acquisition step including acquiring information, based on a measured signal measured via the pair of electrodes, about the organism’s muscle as biometric information based on a change rate with respect to an impedance of the electrical signal applied in the application step” and “the measured signal includes a phase angle of the impedance of the electrical signal, the change rate is a ratio between the phase angle and a reference phase angle measured before the organism starts predetermined exercise using the muscle.” This claim language, under the broadest, reasonable interpretation, encompasses subject matter that may be performed by a human using mental steps or with pen and paper that can involve basic critical thinking, which are types of activities that have been found by the courts to represents abstract ideas (i.e., the mental comparison in Ambry Genetics, or the diagnosing an abnormal condition by performing clinical tests and thinking about the results in Grams). The claim language also meets prong 2 of the step 2A analysis because the above-recited claim language does not integrate the abstract idea into a practical application. That is, there appears to be no tangible improvement in a technology, effect of a particular treatment or prophylaxis, a particular machine or manufacture that is integrated, or transformation/reduction of a particular article to a different state or thing as a result of this claimed subject matter. As a result, step 2A is satisfied and the second step, step 2B, must be considered.
With regard to the second step, the claim does not appear to recite additional elements that amount to significantly more. The additional elements are “an application step including applying an electrical signal to an organism’s muscle via a pair of electrodes, attached to a skin surface of the organism’s muscle” and “the electrical signal has a frequency equal to or higher than 50 Hz and equal to or lower than 200 Hz.” However, these elements are not “significantly more” because they are well-known, routine, and/or conventional as evidenced by para [0003] of U.S. Patent Application Publication No. 2020/0139117 to Zaitsu and [0050] of U.S. Patent Application Publication No. 2009/0157149 to Wahlgren et al. (hereinafter “Wahlgren”). Therefore, these elements do not add significantly more and thus the claim as a whole does not amount to significantly more than a judicial exception.
Additionally, the ordered combination of elements do not add anything significantly more to the claimed subject matter. Specifically, the ordered combination of elements do not have any function that is not already supplied by each element individually. That is, the whole is not greater than the sum of its parts.
In view of the above, independent claim 1 fails to recite patent-eligible subject matter under 35 U.S.C. 101. Dependent claim(s) 2-4, 6-10, 12-13, and 17-19 fail to cure the deficiencies of independent claim 1 by merely reciting additional abstract ideas, further limitations of abstract ideas already recited, or additional elements that are not significantly more. For claims 6 and 17-19, the claimed subject matter is well-known, routine, and/or conventional as evidenced by para [0003] of U.S. Patent Application Publication No. 2015/0222255 to Gruenewald et al. (hereinafter “Gruenewald”). For claim 7, the claimed subject matter is well-known, routine, and/or conventional as evidenced by para [0009] of U.S. Patent Application Publication No. 2016/0175191 to You. For claim 9, the claimed subject matter is well-known, routine, and/or conventional as evidenced by para [0003] of U.S. Patent Application Publication No. 2012/0245482 to Bolser et al. (hereinafter “Bolser”). For claim 10, such structure is generic computer structure, which has been held to not be significantly more according to Bilski. For claim 21, the claimed subject matter is well-known, routine, and/or conventional as evidenced by Fig. 7 and para [0021] of U.S. Patent Application Publication No. 2020/0359929 to Maeda et al. (hereinafter “Maeda”). For claim 22, the claimed subject matter is well-known, routine, and/or conventional as evidenced by para [0031] of U.S. Patent Application Publication No. 2014/0121574 to Chladek. Thus, claim(s) 1-4, 6-10, 12-13, 17-19, and 21-22 is/are rejected under 35 U.S.C. 101.
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(s) 1-4, 6-10, 12-13, and 17-19 is/are 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).
For claim 1, the claim language “…a pair of electrodes, attached to a skin surface of the organism’s muscle” encompasses a human organism because the electrodes are “attached to a skin surface of the organism’s muscle.” That is, the skin of the organism’s muscle is required to infringe the claim and the claim therefore encompasses a skin surface of the organism’s muscle.
Dependent claim(s) 2-4, 6-10, 12-13, and 17-19 fail to cure the deficiencies of independent claim 1, thus claim(s) 1-4, 6-10, 12-13, and 17-19 is/are rejected under 35 U.S.C. 101.
Response to Arguments
Applicant’s arguments filed 12/3/25 have been fully considered.
With respect to the previous 112 rejections, Applicant’s amendments and arguments are persuasive and thus the rejections are withdrawn.
With respect to the 101 rejections, Applicant’s arguments will be treated in the order they were presented. With respect to the first argument, attaching the physical electrodes and running the stimulation at a certain frequency are not being treated as the judicial exceptions in the rejection above. Instead, those parts of the claim are considered under step 2B. With respect to the second argument, “more sensitive and accurate detection” is not a technology, it’s an improvement in mathematic concepts because sensitivity/accuracy is a mathematical concept. Specifically, accuracy/sensitivity is a quality of being correct or being able to collect a measurement that is representative to a true value. Therefore, getting closer to a true value is improving mathematical calculations instead of improving any structure of an electrode or other device that is applying the stimulation of recording the measurement. With respect to the third argument, the additional elements are not significantly more because they are well-known, routine, and/or conventional as evidenced by the references provided in the rejection above.
With respect to the 103 rejections, Applicant’s amendments and arguments are persuasive and thus the rejections are 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 DANIEL LEE CERIONI whose telephone number is (313) 446-4818. The examiner can normally be reached M - F 8:00 AM - 5:00 PM PT.
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/DANIEL L CERIONI/Primary Examiner, Art Unit 3791