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 .
Response to Amendment
This office action is responsive to the amendment filed on March 4, 2026. As directed by the amendment: claim(s) 21-32, 34-35 and 37-40 have been amended, claim(s) 1-20 have been cancelled, and no claim(s) have been added. Thus, claims 21-40 are currently pending in the application.
Response to Arguments
In regards to the Double Patenting Rejection of the claims 21, 25, 28-30, 34 and 36-38, the applicant appears to keep it in abeyance and therefore the rejection is maintained below.
Applicant's arguments filed March 4, 2026 have been fully considered but they are not persuasive. The applicant principally argues that the amended claims overcome the previous 35 U.S.C. 101 rejection and now patent eligible and allowable. The examiner respectfully disagrees. Specifically, the applicant refers to the recent decision in Ex Parte Desjardins and cites that the improvements to how the machine learning model itself operates constitute technological improvements that integrate the abstract idea into a practical application and that the amended claims do a similar functionality. The examiner respectfully disagrees. The recent decision in Ex Parte Desjardins appears to focus on the following: In Step 2A Prong Two, the ARP then determined that the specification identified improvements as to how the machine learning model itself operates, including training a machine learning model to learn new tasks while protecting knowledge about previous tasks to overcome the problem of “catastrophic forgetting” encountered in continual learning systems. Importantly, the ARP evaluated the claims as a whole in discerning at least the limitation “adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task” reflected the improvement disclosed in the specification.
First the claims as written are not clear that the refining of the machine learning algorithm is based on the “confirmed or confirmation” of the subject sleep event occurring. The claims as written require (1) obtaining a confirmation that the one or more subject sleep events occurred, (2) storing the subject sound data associated with the one or more subject sleep events as sample sound data, but then (3) refining the machine learning algorithm based on the subject sound data. So the refinement of the machine learning algorithm is based on the data that is already being utilized by the machine learning algorithm which appears to be merely training the machine learning algorithm which is how machine learning algorithms function. Therefore, the examiner has not understood this to be aligned with Ex Parte Desjardins as the machine learning algorithm has not learned a new task or even been improved with a new dataset so it doesn’t appear that “catastrophic forgetting” would be an issue.
Lastly, the applicant further argues that there is a specific improvement to the machine learning technology for sleep event identification by refining a machine learning algorithm by storing confirmed sleep event data as sample sound data. However, as the examiner mentioned above the claims have not actually required that the data updated by the machine learning algorithm is the sample sound data. This does not appear to be a specific improvement to the machine learning technology and merely just normal training of a neural network or machine learning algorithm. Therefore, the 35 U.S.C. 101 rejection of the claims is maintained and the newly amended claims addressed below.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21, 25, 28-30, 34, 36-38 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 7-8, 10-11, 15 and 17-18 of U.S. Patent No. 10,542,930. Although the claims at issue are not identical, they are not patentably distinct from each other because, the Patent teaches a computer based system, method and non-transitory computer readable medium that receives subject sound data during a sleep interval, analyzes the sound data using a machine learning algorithm, identifying a subject characteristic, comparing the subject characteristic to a plurality of sample characteristics and identifying one or more sleep events during the sleep interval.
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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention details a system and method (Step 1) directed to a judicial exception (i.e. a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
In accordance with MPEP 2106.04, each of Claims 21-40 has been analyzed to determine whether it is directed to any judicial exceptions.
Step 2A, Prong 1 per MPEP 2106.04(a)
Each of Claims 21-40 recites at least one step or instruction for determining ventilatory threshold for a subject, which is grouped as a mental process in MPEP 2106.04(a)(2)(III) or a certain method of organizing human activity in MPEP 2106.04(a)(2)(II) or mathematical concept in MPEP 2106.04(a)(2)(I). Accordingly, each of Claims 21-40 recites an abstract idea.
Specifically, Claim 21 recites
A computer-implemented, the method comprising:
receiving subject sound data collected during a sleep interval; (additional element)
analyzing, using a machine learning algorithm, the subject sound data collected during the sleep interval of a user; (involves managing interactions between people, namely, humans following rules, which is grouped as a certain method of organizing human activity in MPEP 2106.04(a)(2)(II)(C) and/or a judgement or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III))
identifying, based upon the analyzing, a subject characteristic associated with the subject sound data; (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
comparing the subject characteristic with a plurality of sample characteristics, the plurality of sample characteristics each being associated with at least one sample sleep event of a plurality of sample sleep events; (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
identifying, based upon the comparing, to identify one or more subject sleep events occurring during the sleep interval (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
obtaining a confirmation that the one or more subject sleep events occurred; (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
storing, in response to receiving the confirmation that the one or more subject sleep events occurred, the subject sound data associated with the one or more subject sleep events as sample sound data; and (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
refining the machine learning algorithm, based on the subject sound data, for identifying future occurrences of the one or more subject sleep events. (Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP 2106.04(a)(2)(I)) and/or observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III))
Similarly, Claim 30 recites
A computer system for comprising:
one or more processors (additional element), and
one or more non-transitory computer readable media storing instructions that, when executed by the one or more processors, cause the one or more processors to perform operations comprising: (additional element)
receiving subject sound data collected during a sleep interval of a user; (additional element)
analyzing, using a machine learning algorithm, the subject sound data collected during the sleep interval; (involves managing interactions between people, namely, humans following rules, which is grouped as a certain method of organizing human activity in MPEP 2106.04(a)(2)(II)(C) and/or a judgement or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III))
identifying, based upon the analyzing, a subject characteristic associated with the subject sound data; (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
comparing the subject characteristic with a plurality of sample characteristics, the plurality of sample characteristics each being associated with at least one sample sleep event of a plurality of sample sleep events; (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
identifying, based upon the comparing, to identify one or more subject sleep events occurring during the sleep interval (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
obtaining a confirmation that the one or more subject sleep events occurred; (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
storing, in response to receiving the confirmation that the one or more subject sleep events occurred, the subject sound data associated with the one or more subject sleep events as sample sound data; and (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
refining the machine learning algorithm, based on the subject sound data, for identifying future occurrences of the one or more subject sleep events. (Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP 2106.04(a)(2)(I)) and/or observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III))
Similarly, Claim 38 recites
One or more non-transitory computer readable media storing executable instructions that when executed by one or more processors (additional element), cause the one or more processors to perform operations comprising:
receiving subject sound data collected during a sleep interval of a user; (additional element)
analyzing, using a machine learning algorithm, the subject sound data collected during the sleep interval; (involves managing interactions between people, namely, humans following rules, which is grouped as a certain method of organizing human activity in MPEP 2106.04(a)(2)(II)(C) and/or a judgement or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III))
identifying, based upon the analyzing, a subject characteristic associated with the subject sound data; (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
comparing the subject characteristic with a plurality of sample characteristics, the plurality of sample characteristics each being associated with at least one sample sleep event of a plurality of sample sleep events; and (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
identifying, based upon the comparing, to identify one or more subject sleep events occurring during the sleep interval (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
obtaining a confirmation that the one or more subject sleep events occurred; (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
storing, in response to receiving the confirmation that the one or more subject sleep events occurred, the subject sound data associated with the one or more subject sleep events as sample sound data; and (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
refining the machine learning algorithm, based on the subject sound data, for identifying future occurrences of the one or more subject sleep events. (Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP 2106.04(a)(2)(I)) and/or observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III))
Step 2A, Prong 2 per MPEP 2106.04(d)
The above-identified abstract idea in each of independent Claims 21, 30 and 38 (and their respective dependent Claims 22-29. 31-37 and 39-40) is not integrated into a practical application under MPEP 2106.04(d) because the additional elements (identified above in independent Claims 21, 30 and 38) either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use according to MPEP 2106.05(h) or represent insignificant extra-solution activity according to MPEP 2106.05(g). More specifically, the additional elements of: processor, memories, and sound data (sensors for receiving the sound data), and instruction are generic and used for data gathering adding insignificant extra-solution activity to the judicial exception in independent Claims 21, 30 and 38 (and their respective dependent claims) which do not improve the functioning of a computer, or any other technology or technical field according to MPEP 2106.04(d)(1) and 2106.05(a). Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine according to MPEP 2106.05(b), effect a transformation according to MPEP 2106.05(c), provide a particular treatment or prophylaxis according to MPEP 2106.04(d)(2) or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception according to MPEP 2106.04(d)(2) and 2106.05(e). Furthermore, the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer in accordance with MPEP 2106.05(f). For at least these reasons, the abstract idea identified above in independent Claims 21, 30 and 38 (and their respective dependent claims) is not integrated into a practical application in accordance with MPEP 2106.04(d).
Moreover, the above-identified abstract idea is not integrated into a practical application in accordance with MPEP 2106.04(d) because the claimed method and system merely implements the above-identified abstract idea (e.g., mental process) using rules (e.g., computer instructions) executed by a computer (e.g., external programming device or computer as claimed). In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer according to MPEP 2106.05(f). Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims according to MPEP 2106.05(a). That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claims 21, 30 and 38 (and their respective dependent claims) is not integrated into a practical application under MPEP 2106.04(d)(I).
Accordingly, independent Claims 21, 30 and 38 (and their respective dependent claims) are each directed to an abstract idea according to MPEP 2106.04(d).
Step 2B per MPEP 2106.05
None of Claims 21-40 include additional elements that are sufficient to amount to significantly more than the abstract idea in accordance with MPEP 2106.05 for at least the following reasons.
These claims require the additional elements of: processor, memories, and sound data (sensors for receiving the sound data). The above-identified additional elements are generically claimed computer components which enable the above-identified abstract idea(s) to be conducted by performing the basic functions of automating mental tasks. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, MPEP 2106.05(d)(II) along with Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Per Applicant’s specification, [0042] and [0048] details the use of a processor system that can be any computer or computer system that is configured to receive and process data which are generic and commercially available. Further, in applicant’s specification [0048] that the memory can be any device allowing information such as executable instructions and/or sound data to be stored and retrieved which is generic and commercially available. Per Applicant’s specification, [0054], details the use of audio sensors to capture the audio data which may be any suitable audio sensor such as a microphone which is generic and commercially available.
Accordingly, in light of Applicant’s specification, the claimed term computer is reasonably construed as a generic computing device. Like SAP America vs Investpic, LLC (Federal Circuit 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available technology, with their already available basic functions, to use as tools in executing the claimed process. See MPEP 2106.05(f).
Furthermore, Applicant’s specification does not describe any special programming or algorithms required for computers. This lack of disclosure is acceptable under 35 U.S.C. §112(a) since this hardware performs non-specialized functions known by those of ordinary skill in the computer arts. By omitting any specialized programming or algorithms, Applicant's specification essentially admits that this hardware is conventional and performs well understood, routine and conventional activities in the computer industry or arts. In other words, Applicant’s specification demonstrates the well-understood, routine, conventional nature of the above-identified additional elements because it describes these additional elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a) (see MPEP 2106.05(d)(I)(2) and 2106.07(a)(III)). Adding hardware that performs “‘well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible (TLI Communications along with MPEP 2106.05(d)(I)).
The recitation of the above-identified additional limitations in Claims 21, 30 and 38 amounts to mere instructions to implement the abstract idea on a computer. Simply using a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See MPEP 2106.05(f) along with Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
A claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. See MPEP 2106.05(a) along with McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, per MPEP 2106.05(a), the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
For at least the above reasons, the method and system of Claims 21-40 are directed to applying an abstract idea as identified above on a general purpose computer without (i) improving the performance of the computer itself or providing a technical solution to a problem in a technical field according to MPEP 2106.05(a), or (ii) providing meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself according to MPEP 2106.04(d)(2) and 2106.05(e).
Taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claims 21, 30 and 38 (and their dependent claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment according to MPEP 2106.05(h). When viewed as a combination, these above-identified additional elements simply instruct the practitioner to implement the claimed functions with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment according to MPEP 2106.05(h). When viewed as whole, the above-identified additional elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself according to MPEP 2106.04(d)(2) and 2106.05(e). Moreover, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity according to MPEP 2106.05(g). As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application as required by MPEP 2106.05.
Therefore, for at least the above reasons, none of the Claims 21-40 amounts to significantly more than the abstract idea itself. Accordingly, Claims 21-40 are not patent eligible and rejected under 35 U.S.C. 101.
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 JESSANDRA F HOUGH whose telephone number is (571)270-7902. The examiner can normally be reached Monday-Thursday 7 am - 4 pm.
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, David Hamaoui can be reached at (571)270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Jessandra Hough March 20, 2026
/J.F.H./Examiner, Art Unit 3796
/William J Levicky/Primary Examiner, Art Unit 3796