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 .
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-11, 14, 17-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claims include 112(f) limitations, but the specification lacks the required disclosure of corresponding structure, material, or acts which perform the recited functions of each of the “filter module” (first recited in claim 1), “output module” (first recited in claim 1), “configuration module” (first recited in claim 5), “decomposition module” (first recited in claim 7), and “signal conditioning module” (first recited in claim 10). There is no particular description of any of these modules beyond describing their functions; at best the disclosure generally states that “Embodiments of the presented invention may be implemented in software, hardware, application logic or a combination of software, hardware and application logic. The software, application logic and/or hardware may reside on memory, or any computer media.” (p. 13 as filed) This does not provide adequate written description as there is no disclosure as to how the claimed functions are performed – each of these limitations are defined by what they achieve but the disclosure lacks any algorithm or other description of any step-by-step procedure of how the given result is accomplished. A computer-implemented function must be supported in the specification by the general purpose computer or microprocessor and the algorithm that the computer uses to perform the claimed function. See MPEP 2181.II.B. To claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333, 86 USPQ2d at 1239. As such, the specification does not reasonably convey possession of a filter module, an output module, a configuration module, or a decomposition module at the time the invention was filed.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11, 14, 17-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim limitations “filter module” (first recited in claim 1), “output module” (first recited in claim 1), “configuration module” (first recited in claim 5), “decomposition module” (first recited in claim 7), and “signal conditioning module” (first recited in claim 10) invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. There is no disclosure of corresponding structures nor is there disclosure of how the claimed functions are performed. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 1-8, 14, 17-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claims are directed to the disembodied processing of a signal, where the broadest reasonable interpretation of the invention as claimed is a signal per se given the absence of disclosed structure for performing these functions as noted above. Ostensibly directed to an “apparatus”, the recited “modules” do not have any disclosed structure and as disclosed are simply functions performed upon the signal itself, such that the claims as presented do not fall within at least one of the categories of patent eligible subject matter. The dependent claims identified above are also no more than a signal per se.
Claims 1-11, 14, and 17-21 rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Please see the following Subject Matter Eligibility (“SME”) analysis:
For analysis under SME Step 1, the claims herein are directed to a system, which would be classified under one of the listed statutory classifications (SME Step 1=Yes).
For analysis under revised SME Step 2A, Prong 1, independent claim 1 recites separating signals into frequency band signals and converting at least one of the frequency band signals into at least one control signal.
The dependent claims appear to be encompassed by the abstract idea of the independent claims since they merely indicate generating additional information (claims 2, 4), output of data (claim 3), obtaining additional data (claim 6), processing data (claims 5, 7, 8), obtaining additional data and generating additional information based on the additional data (claim 9, 10), or are directed to the abstract idea itself (claims 11, 14, 17-21)
The claim elements may be summarized as the idea of manipulating data; however, the Examiner notes that although this summary of the claims is provided, the analysis regarding subject matter eligibility considers the entirety of the claim elements, both individually and as a whole (or ordered combination). This idea is within the following grouping(s) of subject matter:
Mathematical concepts (e.g., relationships, formulas, equations, and/or calculations) – as based on separating and converting the signals, which is a form of performing calculations
Therefore, the claims are found to be directed to an abstract idea.
For analysis under revised SME Step 2A, Prong 2, the above judicial exception is not integrated into a practical application because any additional elements do not impose a meaningful limit on the judicial exception when evaluated individually and as a combination. The additional elements are a “neural interface” with “electrode array” and a “human-machine interface” found in claims 9-11. These additional elements do not reflect an improvement in the functioning of a computer or an improvement to other technology or technical field, effect a particular treatment or prophylaxis for a disease or medical condition (there is no medical disease or condition, much less a treatment or prophylaxis for one), implement the judicial exception with, or by using in conjunction with, a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing (there is no transformation/reduction of a physical article), and/or apply or use the judicial exception in some other meaningful way beyond generically linking use of the judicial exception to a particular technological environment.
The claims appear to merely apply the judicial exception, include instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform the abstract idea. The additional elements appear to merely add insignificant extra-solution activity to the judicial exception and/or generally link the use of the judicial exception to a particular technological environment or field of use.
For analysis under SME Step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional “interface” elements, as indicated above, are merely “[a]dding the words ‘apply it’ (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp.” that MPEP § 2106.05(I)(A) indicates to be insignificant activity.
There is no indication the Examiner can find in the record regarding any specialized computer hardware or other “inventive” components, but rather, the claims merely indicate computer components which appear to be generic components and therefore do not satisfy an inventive concept that would constitute “significantly more” with respect to eligibility.
The recited “neural interface” with its “electrode array” presents only a well-understood, routine, and conventional sensor recited at a high level of generality only for the extrasolution activity of data gathering, and does not add anything significantly more to the abstract idea itself. See MPEP 2106.05(d), where determining the level of a biomarker in blood by any means, Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; Cleveland Clinic Foundation v. True Health Diagnostics, LLC, 859 F.3d 1352, 1362, 123 USPQ2d 1081, 1088 (Fed. Cir. 2017) is held to be well-understood, routine, and conventional.
The individual elements therefore do not appear to offer any significance beyond the application of the abstract idea itself, and there does not appear to be any additional benefit or significance indicated by the ordered combination, i.e., there does not appear to be any synergy or special import to the claim as a whole other than the application of the idea itself.
The remainder of dependent claims, as indicated above, appear encompassed by the abstract idea since they merely limit the idea itself or the computer components performing the abstract idea; therefore the dependent claims do not add significantly more than the idea.
Therefore, SME Step 2B=No, any additional elements, whether taken individually or as an ordered whole in combination, do not amount to significantly more than the abstract idea, including analysis of the dependent claims.
Please see the Subject Matter Eligibility (SME) guidance and instruction materials at https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility, which includes the latest guidance, memoranda, and update(s) for further information.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Please see the following Subject Matter Eligibility (“SME”) analysis:
For analysis under SME Step 1, the claims herein are directed to a method, which would be classified under one of the listed statutory classifications (SME Step 1=Yes).
For analysis under revised SME Step 2A, Prong 1, independent claim 15 recites a method of separating signals into frequency band signals and converting at least one of the frequency band signals into at least one control signal.
The claim elements may be summarized as the idea of manipulating data; however, the Examiner notes that although this summary of the claims is provided, the analysis regarding subject matter eligibility considers the entirety of the claim elements, both individually and as a whole (or ordered combination). This idea is within the following grouping(s) of subject matter:
Mathematical concepts (e.g., relationships, formulas, equations, and/or calculations) – as based on separating and converting the signals, which is a form of performing calculations
Therefore, the claims are found to be directed to an abstract idea.
For analysis under revised SME Step 2A, Prong 2, the above judicial exception is not integrated into a practical application because there is no disclosure of any additional element related to or performing any aspect of the invention as claimed.
For analysis under SME Step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no additional elements are recited.
Therefore, SME Step 2B=No, any additional elements, whether taken individually or as an ordered whole in combination, do not amount to significantly more than the abstract idea, including analysis of the dependent claims.
Please see the Subject Matter Eligibility (SME) guidance and instruction materials at https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility, which includes the latest guidance, memoranda, and update(s) for further information.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-5, 9, 11, 14, 17-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Joshi (S. S. Joshi, A. S. Wexler, C. Perez-Maldonado and S. Vernon, "Brain-muscle-computer interface using a single surface electromyographic signal: Initial results," 2011 5th International IEEE/EMBS Conference on Neural Engineering, Cancun, Mexico, 2011, pp. 342-347, doi: 10.1109/NER.2011.5910557. – cited by Applicant).
Regarding claims 1, 14, and 21 Joshi discloses an apparatus comprising:
a filter module for separating neuron discharge patterns obtained from electromyography signals into one or more frequency band signals based on bandpass filter configuration parameters (figure 2, “Band-pass Filtering Frequency Band 1”); and
an output module for converting one or more of said one or more frequency band signals into a one or more control signals (figure 2, “Linear Combination 1”), wherein said one or more control signals include one or more first control signals (figure 2, “Y Position”), wherein each first control signal is an independent augmented control signal (augmented by band 2).
Regarding claim 2, Joshi further discloses that the one or more control signals further comprise one or more second control signals, wherein each second control signal is a muscle control signal independent of said one or more first control signals (figure 2, “Linear Combination 2”).
Regarding claim 3, Joshi further discloses that each second control signal is provided to one or more external electrical/electro-mechanical apparatus (section IV, “Wheelchair Control”).
Regarding claim 4, Joshi further discloses that the output module generates said one or more control signals based on power estimation in a respective bandpass filter of the filter module (p. 343, “The raw sEMG signal at the single muscle site was filtered into two channels using two band-pass filters. The normalized power in each channel was combined via a linear mapping to simultaneously control X-position and Y-position of the cursor”).
Regarding claim 5, Joshi further discloses a configuration module for generating said bandpass filter configuration parameters (section III, “Band-pass filter frequency bandwidths and their mid-points were determined by correlation tests and simulation analysis.”.
Regarding claim 9, Joshi further discloses a neural interface for obtaining said electromyography signals (section V, “usability of our two-band brain-muscle-computer interface”).
Regarding claim 11, Joshi further discloses that the apparatus is a human- machine interface (abstract).
Regarding claim 15, Joshi discloses a method comprising:
separating neuron discharge patterns into one or more frequency band signals based on bandpass filter configuration parameters (figure 2, “Band-Pass Filtering Frequency Band 1”); and
converting one or more of said one or more frequency band signals into a one or more control signals (figure 2, “Linear Combination 1”), wherein said one or more control signals include one or more first control signals (figure 2, “Y Position”), wherein the or each first control signal is an independent augmented control signal (augmented by the Band 2 signal).
Regarding claim 17, Joshi further discloses the apparatus as being for use in therapy (section V).
Regarding claim 18, Joshi further discloses the apparatus as being for use in rehabilitation or assistive devices (section V).
Regarding claim 19, Joshi further discloses the apparatus as being for use in controlling prosthetics (section I).
Regarding claim 20, Joshi further discloses the apparatus as being for use in human-machine interaction (abstract).
Claim Rejections - 35 USC § 103
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.
Claim(s) 6 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Joshi in view of Joshi’700 (US 2009/0005700).
Regarding claim 6, Joshi does not disclose the configuration module for generating the bandpass filter configuration parameters comprising an input for receiving calibration data. Joshi’700 teaches an apparatus for separating electromyography signals into frequency band signal based on bandpass filter configuration parameters generated by a configuration module comprising an input for receiving calibration data (paragraphs [0015], [0016], [0034]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have made the invention of Joshi and included an input for receiving calibration data in the module generating bandpass filter configuration parameters, as taught by Joshi’700, in order to customize the bandpass filters to be accurate for each user.
Regarding claim 10, Joshi does not disclose specifics of the neural interface; Joshi’700 teaches a neural interface for obtaining electromyography signals comprising an electrode array for measuring surface electrical signals (element 110 and 112); and a signal conditioning module for generating the electromyography signals from the surface electrical signals (paragraphs [0038]-[0041]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have made the invention of Joshi and included an electrode array and signal conditioning module for obtaining the electromyography signals, as taught by Joshi’700, as Joshi calls for obtaining these signals without explicit disclosure of how they are obtained and Joshi’700 teaches components used for obtaining such signals for a similar purpose.
Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Joshi in view of Farina (WO 2020/039206; citations are to corresponding US publication US 2021/0315509).
Joshi does not provide specifics of generating said neuron discharge patterns, particularly including a decomposition module for generating said neuron discharge patterns from said electromyography signals which extracts discharge timing of motor neurons, enabling decoding of instructions from individual motor neurons to drive specific outputs at specific times. Farina teaches an apparatus configured to separate neuron discharge patterns from electromyography signals and use those to generate a control signal (paragraphs [0018]-[0020]), where the apparatus includes a decomposition module for generating said neuron discharge patterns from said electromyography signals which extracts discharge timing of motor neurons, enabling decoding of instructions from individual motor neurons to drive specific outputs at specific times (paragraphs [0004], [0045]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have made the invention of Joshi and included a decomposition module for generating the neuron discharge patterns by extracting discharge timing of motor neurons, as taught by Farina, in order to ensure generation of accurate control signals.
Response to Arguments
Applicant's arguments filed 19 March 2026 have been fully considered but they are not persuasive.
Regarding Applicant’s remarks, Applicant cites various paragraphs of some document throughout the remarks without identifying what document is referenced; as both the specification as originally filed and the amendment to the specification do not have numbered paragraphs, it appears the numbered paragraphs might refer to the publication of the instant application (US 2023/0355161). In the interest of expediting prosecution, this document will be referenced but the Examiner suggests identifying what documents are being relied upon to potentially support arguments in any future responses.
Regarding the rejections under 112, Applicant argues that the disclosed functions performed by the various modules provide “adequate written description” and “sufficiently definite structural meaning” despite all of the cited passages describing the functions and not any structure of any device which might perform these functions. Each of Applicant’s descriptions of “support” for the modules describe the function of what each module achieves, but not how it is performed – bandpass filtering, converting signals into control signals, setting filter configuration parameters “based on inputs”, decomposing a signal, and conditioning a signal, are all functions, not structures or algorithms that define the functions. The majority of Applicant’s citations appear to be every occurrence of a keyword in the disclosure as an attempt to show that these “modules” exist rather than a showing of any actual required algorithm or other structure that would provide adequate support for these modules.
Operation of the filter module is described as relying on “bandpass filter configuration parameters” (paragraph [0042] of the publication), none of which are described, nor is there any indication of how these “configuration parameters” might be part of some specific algorithm being performed by the filter module, nor is there any clear disclosure of a structure of what this filtering module might be as it is, at best, some software/digital processing of the signal, not involving any physical/analog filters.
The output module is described only in terms of its function, where it “converts one or more of said frequency band signals into a one or more controls signals” (paragraph [0043] of the publication), again, with no specific structure or any algorithm identified as being performed by this “output module” or any algorithm indicating how this conversion is to take place.
Applicant also references figure 8 as providing an algorithm for the “configuration module”; per the disclosure, “The algorithm 80 may be implemented by the calibration module 100.”. There is no disclosure of the configuration module also being labeled as a calibration module, or of these two modules being the same single module; no other part of Applicant’s remarks regarding the “configuration module” point to any algorithm or other structure that could perform the recited function.
Similarly, the only description of the “decomposition module” recites “The decomposition module 11 receives electromyography (EMG) signals at an input and provides estimates of neuron discharge patterns (e.g. motor neuron signals) at an output.” (paragraph [0032] of the publication) – this, again, is a description of a function, not an algorithm or other structure for performing this function.
Regarding the signal conditioning module, the word “conditioning” is recited only once in the disclosure, in paragraph [0008] which merely states that a signal conditioning module can exist; Applicant then points to paragraphs [0035]-[0036] as allegedly providing sufficient disclosure of this module even though no part of these paragraphs refers to signal conditioning or indicates that anything referenced in those paragraphs is considered to be the “signal conditioning module”, such that this is not persuasive.
Regarding the rejections under 101, Applicant argues that the recitation of a theoretical “’apparatus’ comprising functional modules” encompasses physical embodiments and thus should not be given its broadest reasonable interpretation of a signal per se; the Examiner notes that the recited invention is not limited to the potentially encompassed physical embodiments and still also recites only disembodied processing of a signal, such that the assertion that the claims should not be given their broadest reasonable interpretation is entirely unpersuasive.
Further regarding 101, Applicant then argues that the invention as claimed does not “explicitly name or require specific mathematical calculations”; as performance of the invention as claimed explicitly requires performance of mathematical calculations, including separating data into frequency bands based on filter configurations and converting frequency bands into different signals, this is entirely unpersuasive. Calculations do not need to be “named”, but in the instant invention they are certainly required.
Applicant then argues that the invention as claimed provides a practical application of improving “the field of human-machine interface”; it is unclear what particular aspect of “the field of human-machine interface” has been improved, nor is the general concept of filtering a signal into different frequency bands an improvement given that the use of bandpass filters is well known in any electrical or signal setting. Paragraph [0066] of the publication does not indicate that any particular specific aspect of filtering is recognized as providing an improvement, nor do Applicant’s remarks point out what the improvement might be or how it is specifically implemented, let alone how the general concept of filtering into various frequency bands is specifically reflected in any of the actual claim limitations which do not identify any particular frequency bands as being used. Still further, any practical application must be provided by an additional element, not the abstract idea itself, and as the abstract idea is merely disembodied signal processing with no additional elements, it does not appear that there are any potential additional elements which might provide this theoretical “improvement”.
Regarding step 2B, Applicant argues that the abstract idea itself is “unconventional”; as step 2B is directed to whether any additional elements provide anything significantly more, not to aspects of the abstract idea, these remarks are moot.
Regarding the art rejections, Applicant argues that “Joshi’s system process broadband EMG signals (typically tens to hundreds of Hz), while the present invention processes motor neuron spike activity with much lower bandwidth corresponding to motor unit firing rates.” As the particular frequencies of any signal being processed are not recited in any claim limitation, nor is “neuron discharge patterns” specifically defined in the disclosure as corresponding to any particular frequency or other defining characteristic, Applicant’s remarks do not reflect the invention as claimed and are thus moot, as Joshi discloses the limitations of the invention as claimed, see above.
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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/KAREN E TOTH/ Examiner, Art Unit 3791
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