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 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.
Claims 3 and 12 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 3 contains the terms “higher degree” and “lower degree”. These are relative terms. It is unclear what is to be considered a “higher degree” and what is to be considered a “lower degree”. For the purpose of examination, claim 3 is being interpreted such that a higher degree of spectral entropy is indicative of a poorer contact than a lower degree of spectral entropy.
Claim 12 contains the phrase “the period of overlap between adjacent time windows of the sequence is greater than the time by which subsequent time windows of the sequence are offset from one another”. It is unclear what is meant by this.
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 1-12 and 14-20 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.
Regarding claim 1, the claim recites a series of steps or acts, including processing the received data of the first time period in dependence on the measure of contact. Thus, the claim is directed to a process, which is one of the statutory categories of invention.
The claim is then analyzed to determine whether it is directed to any judicial exception. The step of processing the received data of the first time period in dependence on the measure of contact sets forth a judicial exception. This step describes 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.
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. The processing of the data 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 processed data, nor does the method use a particular machine to perform the Abstract Idea.
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. Claim 1 also recites an additional step of determining a measure of contact for the first time period in dependence on the spectral entropy of the received data, which is another abstract idea in the form of a mental process. Furthermore, the abstract idea being “performed at a system comprising a processor and a memory” does not integrate the Abstract Idea into a practical application according to section 2106.05(f) of the MPEP. Besides the Abstract Idea, the claim recites additional steps of receiving data captured by the EMG sensor and calculating a spectral entropy of the received data over a first time period in respect of a predetermined frequency band. Receiving data and calculating a spectral entropy is well-understood, routine and conventional activity for those in the field of medical diagnostics. Further, the receiving and calculating 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.
Regarding claim 19, the device recited in the claim is a generic device comprising generic components configured to perform the abstract idea. The recited EMG sensor is a generic sensor configured to perform pre-solutional data gathering activity, the spectral entropy unit is a generic processor configured to perform pre-solutional data gathering activity, and the analysis unit 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 as they generally recite method steps pertaining to data gathering. The determining steps recited in the independent claims maintain a high level of generality even when considered in combination with the dependent claims.
Examiner’s Note
In regards to claims 1 and 19, none of the prior art teaches or suggests, either alone or in combination, a method or system wherein a measure of contact for a first time period is determined in dependence on a calculated spectral entropy for data received from an EMG sensor, in combination with the other claimed steps or elements
Claims 1-12 and 14-20 contain no prior art rejections, however they are not in condition for allowance due to their rejections under 35 U.S.C. 101 and/or 35 U.S.C. 112(b).
Response to Arguments
Applicant’s arguments, see remarks, filed 11/06/2025, in regards to the 35 U.S.C. 112(a) rejection of claim 6 has been fully considered and are persuasive. The 35 U.S.C. 112(a) rejection of claim 6 has been withdrawn.
Applicant's arguments filed 11/06/2025, in regards to the 35 U.S.C. 112(b) rejections of claims 3 and 12 have been fully considered but they are not persuasive. Claim 3 was amended, but still contains the relative terms “higher degree” and “lower degree”. In regards to claim 12, although the relative terms have been removed it is still unclear what is meant by “the period of overlap between adjacent time windows of the sequence is greater than the time by which subsequent time windows of the sequence are offset from one another”.
Applicant’s arguments, see remarks, filed 11/06/2025, in regards to the 35 U.S.C. 112(b) rejections of claims 9-11 and 13-16 have been fully considered and are persuasive. The 35 U.S.C. 112(b) rejections of claims 9-11 and 13-16 has been withdrawn.
Applicant's arguments filed 11/06/2025, in regards to the 35 U.S.C. 101 rejection of claims 1-20 have been fully considered but they are not persuasive. In regards to the Applicant’s claim that the determining a measure of contact step is not a mental process, a human could look at a spectral entropy value and from that determine if the EMG sensor is in contact with the scalp making the determining step a mental process. In regards to the method being carried out by a processor, 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.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUCY EPPERT whose telephone number is (571)270-0818. The examiner can normally be reached M-F 7:30-5:00 EST.
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, Jennifer Robertson can be reached at (571) 272-5001. 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. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LUCY EPPERT/ Examiner, Art Unit 3791
/ETSUB D BERHANU/ Primary Examiner, Art Unit 3791