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 .
Amendment Entered
In response to the amendment filed on February 9th, 2026, amended claims 20-22 and 24-26 are entered.
Response to Arguments
Applicant's remarks and amendments with respect to the claim objection have been fully considered. The objection is withdrawn in view of the amendment.
Applicant's remarks and amendments with respect to the specification objection have been fully considered. The objection is withdrawn in view of the amendment.
Applicant's remarks and amendments with respect to the rejections under 35 U.S.C. 112(b) have been fully considered. The rejections are withdrawn in view of the amendment.
Applicant's arguments, filed on February 9th, 2026, with respect to the rejections of claims 1-7, 9-14, 16-17, 19-20, and 22-27 under 35 U.S.C. 101 have been fully considered but are not persuasive. The rejections have been maintained, and further clarified below. However, Examiner notes that the rejection of claim 21 under 35 U.S.C. 101 has been withdrawn in view of the amendment.
At Pg. 16 of the Reply, Applicant respectfully disagrees with the previous Office Action’s assertion of the claim limitations constituting an abstract idea. Examiner would like to clarify the reasoning behind the 35 U.S.C. 101 rejections as best as possible. Under Step 2A, Prong One, each of the claims is analyzed to determine whether it is directed to any judicial exception. Claims 1-7, 9-14, 16-17, 19-20, and 22-27 recite at least one step or instruction for determining a cause of sleep disordered breathing, which sets forth a judicial exception. The step describes a concept performed in the human mind (including an observation, evaluation, judgment, opinion). Thus, the claims are drawn to a Mental Process, which is an Abstract Idea.
Further at Pg. 16 of the Reply, Applicant argues “the grounds for the rejection of the claims as being directed to ineligible subject matter is repeatedly based in the Office Action on the assertion that the limitations of the claims are ‘well-understood, routine and previously known to the industry.’ (Office Action, pp. 4, 21, 22). It appears that the Office Action attempts to make the distinction that the claimed ‘additional elements’ are well-understood, conventional, and previously known in the industry.’ (Office Action, pp. 3 and 13)". Although it is unclear as to what exactly the Applicant is arguing here, the Examiner would like to emphasize that the currently rejected claims require the additional elements of: a “processor”, a “first sensor device”, a “second sensor device”, and a “hardware storage”. 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 and/or function under data-gathering. 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, 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.
At Pg. 17 of the Reply, Applicant respectfully disagrees with the previous Office Action’s assertion of “‘[t]here is no indication that the combination of elements ... improves any other technology.’”, further arguing that “[a]s described in Applicant's specification, the invention of claim 1 provides significant improvements to the to the field of sleep studies and sleep-study systems”. Examiner respectfully disagrees and notes that the claims are significantly broader than the Specification, and there are no specific improvements currently being claimed.
Applicant further cites [0026-0027], [0106], and [0312] of the Applicant’s Specification in order to explain the improvement. The Examiner acknowledges and understands that a “Polysomnography (PSG) has been understood as an extensive sleep study method that requires multiple sensors” and that “[b]y comparison, a subject may perform a Home Sleep Apnea Testing (HSAT), which may be called a Polygraphy (PG) sleep study, which is a much more simple test that primarily relies on Respiratory Inductance Plethysmography (RIP) belts”. The Examiner also acknowledges and understands that “[a]n example of sensors that are common to both the Polygraphy (PG) and Polysomnography (PSG) systems are primarily Respiratory Inductance Plethysmography (RIP) belts”. However, the Examiner, once again, would like to emphasize that none of these specific details are recited in the currently rejected claims. The rejected claims currently only recite the additional elements of a “processor”, “first sensor device”, “second sensor device”, and “hardware storage”. The judicial exceptions are not integrated into a practical application because the additional elements do not constitute a particular machine (i.e., they are recited at a high level of generality), nor are they integral to the process claimed. The step of obtaining data from the “first sensor device” and the “second sensor device” is simply data-gathering, which is extra-solution activity, and does not add significantly more to the abstract ideas identified, as it merely specifies the nature of the data which is exploited in the steps encompassing a mental process. See MPEP 2106.05(g). Additionally, the limitations related to the bio-signal measurement merely generally link to a particular technical environment. See MPEP 2106.05(h). Each of the additional elements claimed, considered alone and in combination, do no more than generally link the use of the judicial exceptions identified to a particular technological environment or field of use. The Examiner would like to emphasize that there are no limitations regarding specialized hardware for these structures. Therefore, the Applicant’s arguments are moot, as they focus only on the specific details of the Specification, and not what is actually being claimed.
Further at Pg. 18 of the Reply, Applicant disagrees with the previous Office Action, arguing “one stated grounds for maintaining the 101-based rejection of the claims is that the Office Action asserts that paragraph refers ‘to the usage of Respiratory Inductance Plethysmography (RIP) belts, and the Applicant further relies on the usage of these Respiratory Inductance Plethysmograph (RIP) belts in the arguments.’ (Office Action, p. 3, ll. 4-10). However, it is noted that the RIP belts described in the disclosure and recited, for example, by allowable claim 15, are an example of an embodiment of a Polygraphy (PG) study, also known as Home Sleep Apnea Testing (HSAT) or Type 3 study, in which the thoracic signal (T) and the abdomen signal (A) are obtained. (See Applicant's originally-filed specification, para. [0026])”. Examiner would like to once again emphasize that the currently rejected claims do not recite or claim “Respiratory Inductance Plethysmograph (RIP) belts”. The independent claims lack any specificity regarding the sensor devices, thereby demonstrating that Applicant's steps need only generic additional elements of a “processor”, “first sensor device”, “second sensor device”, and “hardware storage”. The processor, hardware, and sensor units perform the same with or without the claimed abstract idea. These generic devices are simply being used for this specific field of determining respiratory efforts. Therefore, it is unclear how the abstract idea can improve the standard functions of the additional elements.
Applicant further cites [0027] of the Applicant’s Specification, emphasizing “[f]or the method to be available to as many patients and subjects as possible it preferably should rely only on the sensors that are common to both the PG and PSG systems”. It is unclear to the Examiner as to what the Applicant is arguing here. Regardless, Examiner would once again like to note that the 101 rejections of Claims 15 and 21 have been withdrawn, since they recite specific structure, such as “a thoracic belt of a Respiratory Inductive Plethysmograph (RIP) system” and “an abdomen belt of the Respiratory Inductive Plethysmograph (RIP) system”. However, the rest of the rejected claims fail to recite that level of specificity, and only recite generic “sensor device(s)” and or “signal(s)”.
When considered in combination, the additional elements (i.e. the generic computer functions and conventional equipment/steps) do not amount to significantly more than the abstract idea. Looking at the claim limitations as a whole adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
At Pg. 19 of the Reply, Applicant argues that “one of ordinary skill in the art would recognize the claimed invention as providing an improvement in the technical field…the Office Action's analysis fails to consider the claims as a whole”. Examiner respectfully disagrees. Under Step 2A, Prong Two, the claim as a whole is analyzed to determine whether the claim recites additional elements that integrate the judicial exception into a practical application.
Outside of the abstract idea, the claim recites the additional steps of obtaining, receiving, and outputting. These claim limitations fail 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. Obtaining and receiving signals is considered as data-gathering, and outputting an indication is considered as data-outputting, both of which are merely adding insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g)). The determination of a cause of sleep disordered breathing 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 displayed estimated value, nor does the method use a particular machine to perform the Abstract Idea. Furthermore, 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.
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.
Under Step 2B, 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 obtaining, receiving, and outputting. The obtaining, receiving, and outputting steps are each recited at a high level of generality such that it amounts to insignificant pre-solution and post-solution activity, e.g., mere data-gathering steps necessary to perform the Abstract Idea and mere data-outputting steps afterwards. 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 data-outputting 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 “first sensor device” or “second sensor device” and use of a “hardware storage” or “processor” does 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)). Thus, the claimed invention does not amount to significantly more than the Abstract Idea.
Regardless of providing a determination of the specific cause of the sleep disordered breathing, the claims still do not apply the abstract idea to incorporate any type of therapy for a medical condition. Rather, the abstract idea is utilized to determine relationships among data, which may include the cause of the sleep disordered breathing, which is grouped as a mental process.
Claim Objections
Claims 22 and 24-26 are objected to because of the following informalities:
Claim 22 currently recites “receiving a thoracic RIP signal” in lines 2-3, but should read “receiving a thoracic Respiratory Inductive Plethysmograph (RIP) signal”
Claim 24 currently recites “model is is based on” in line 2, but should read “model is based on”
Claim 25 currently recites “model is is based on” in line 2, but should read “model is based on”
Claim 26 currently recites “model is is based on” in line 2, but should read “model is based on”
Appropriate correction is required.
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.
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.
Claim 20 is 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 20 recites “the computing system” in line 10. There is insufficient antecedent basis for this limitation in the claim.
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 1-7, 9-14, 16-17, 19-20, and 22-27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Each of Claims 1-7, 9-14, 16-17, 19-20, and 22-27 has been analyzed to determine whether it is directed to any judicial exceptions.
Step 1
Claims 1-7, 9-10, and 22-27 recite a series of steps or acts for determining a cause of sleep disordered breathing. Thus, the claims are directed to a process, which is one of the statutory categories of invention.
Claims 11-14, 16-17, 19 recite a system for determining a cause of sleep disordered breathing. Thus, the claims are directed to a machine, which is one of the statutory categories of invention.
Claim 20 recites a hardware storage device for determining a cause of sleep disordered breathing. Thus, the claim is directed to a machine, which is one of the statutory categories of invention.
Step 2A, Prong 1
Each of Claims 1-7, 9-14, 16-17, 19-20, and 22-27 recites at least one step or instruction for determining a cause of sleep disordered breathing, which is grouped as a mental process under the 2019 PEG or a certain method of organizing human activity under the 2019 PEG. Accordingly, each of Claims 1-7, 9-14, 16-17, 19-20, and 22-27 recites an abstract idea (underlined below).
Independent Claim 1 recites:
obtaining a thoracic signal (T), the thoracic signal (T) being an indicator of a thoracic component of a respiratory effort of the subject;
obtaining an abdomen signal (A), the abdomen signal (A) being an indicator of an abdominal component of the respiratory effort;
receiving by a processor of a computing system the thoracic signal (T) and the abdomen signal (A);
determining by the processor a first parameter of a respiratory model the obtained thoracic signal (T) and the abdomen signal (A), the first parameter being an estimated parameter of the respiratory model that is not directly measured during the study, the first parameter of the respiratory model being determined without an invasive measurement obtained from the subject;
determining by the processor the one or more internal components of the respiratory effort using at least the determined first parameter of the respiratory model, the one or more internal components of the respiratory effort being determined without being directly measured during the study;
determining by the processor a phenotype of the sleep disordered breathing of the subject, including determining the cause of the sleep disordered breathing using the one or more internal components of the respiratory effort determined using the respiratory model; and
outputting by the processor an indication of the determined phenotype of the sleep disordered breathing.
Independent Claim 11 recites:
a first sensor device configured to obtain a thoracic signal (T), the thoracic signal (T) being an indicator of a thoracic component of a respiratory effort of the subject;
a second sensor device configured to obtain an abdomen signal (A), the abdomen signal (A) being an indicator of an abdominal component of the respiratory effort; and
a processor configured to
receive the thoracic signal (T) and the abdomen signal (A);
determine a first parameter of a respiratory model using the obtained thoracic signal (T) and the abdomen signal (A), the first parameter being an estimated parameter of the respiratory model that is not directly measured during the study, the first parameter of the respiratory model being determined without an invasive measurement obtained from the subject;
determine the one or more internal components of the respiratory effort using at least the determined first parameter of the respiratory model, the one or more internal components of the respiratory effort being determined without being directly measured during the study;
determine a phenotype of the sleep disordered breathing of the subject, including determining the cause of the sleep disordered breathing using the one or more internal components of the respiratory effort determined using the respiratory model; and
outputting by the processor an indication of the determined phenotype of the sleep disordered breathing.
Independent Claim 20 recites:
A hardware storage device having stored thereon computer executable instructions which, when executed by a processor, implement a non-invasive method for determining a cause of sleep disordered breathing based on one or more internal components of respiratory effort of a subject in a respiratory study, the method comprising:
obtaining a thoracic signal (T), the thoracic signal (T) being an indicator of a thoracic component of a respiratory effort of the subject;
obtaining an abdomen signal (A), the abdomen signal (A) being an indicator of an abdominal component of the respiratory effort;
receiving by the processor of the computing system the thoracic signal (T) and the abdomen signal (A);
determining by the processor a first parameter of a respiratory model using the obtained thoracic signal (T) and the abdomen signal (A), the first parameter being an estimated parameter of the respiratory model that is not directly measured during the study, the first parameter of the respiratory model being determined without an invasive measurement obtained from the subject;
determining by the processor the one or more internal components of the respiratory effort using at least the determined first parameter of the respiratory model, the one or more internal components of the respiratory effort being determined without being directly measured during the study;
determining by the processor a phenotype of the sleep disordered breathing of the subject, including determining the cause of the sleep disordered breathing using the one or more internal components of the respiratory effort determined using the respiratory model; and
outputting by the processor an indication of the determined phenotype of the sleep disordered breathing.
The above claim limitations constitute an abstract idea that is part of the Mathematical Concepts and/or Mental Processes group identified in the 2019 Revised Patent Subject Matter Eligibility Guidance published in the Federal Register (84 FR 50) on January 7, 2019.
“A mathematical relationship is a relationship between variables or numbers. A mathematical relationship may be expressed in words ….” October 2019 Update: Subject Matter Eligibility, II. A. i. “[T]here are instances where a formula or equation is written in text format that should also be considered as falling within this grouping.” Id. at II. A. ii. “[A] claim does not have to recite the word “calculating” in order to be considered a mathematical calculation.” Id. at II. A. iii. See for example, SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163-65 (Fed. Cir. 2018).
The claimed steps of determining recite a mathematical concept (i.e., mathematical relationships, mathematical formulas or equations, and mathematical calculations).
The step of “determining by the processor a first parameter of a respiratory model using the obtained thoracic signal (T) and the abdomen signal (A)” in independent Claim 1 is a mathematical relationship to estimate a parameter using user data. Referring to paragraph [0089] of the specification, the estimation is computed from obtained biometric data. The step of "determining by the processor a phenotype of the sleep disordered breathing of the subject" in independent Claim 1 is another mathematical relationship used to classify data obtained through generic sensors. The claims do not apply the abstract idea to incorporate any type of therapy for a medical condition. Rather, the abstract idea is utilized to determine a relationship among data to categorize respiratory data.
The claimed steps of determining can be practically performed in the human mind using mental steps or basic critical thinking, which are types of activities that have been found by the courts to represent abstract ideas.
Further, the dependent claims merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Accordingly, as indicated above, each of the above-identified claims recites an abstract idea.
Step 2A, Prong 2
The above-identified abstract idea in each of independent Claims 1, 11, and 20 (and their respective dependent claims) is not integrated into a practical application under 2019 PEG because the additional elements (identified above in bold in independent Claims 1, 11, and 20), either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use. More specifically, the additional elements of: a “processor”, a “first sensor device”, a “second sensor device”, and a “hardware storage” are generically recited computer elements, which do not improve the functioning of a computer, or any other technology or technical field. Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation 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. 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. For at least these reasons, the abstract idea identified above in independent Claims 1, 11, and 20 (and their respective dependent claims) is not integrated into a practical application under 2019 PEG.
Moreover, the above-identified abstract idea is not integrated into a practical application under 2019 PEG because the claimed method and system merely implements the above-identified abstract idea (e.g., mental process and certain method of organizing human activity) using rules (e.g., computer instructions) executed by a computer (e.g., processor 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. 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. 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 1, 11, and 20 (and their respective dependent claims) is not integrated into a practical application under the 2019 PEG.
Accordingly, independent Claims 1, 11, and 20 (and their respective dependent claims) are each directed to an abstract idea under 2019 PEG.
Step 2B
None of Claims 1-7, 9-14, 16-17, 19-20, and 22-27 include additional elements that are sufficient to amount to significantly more than the abstract idea for at least the following reasons.
These claims require the additional elements of: a “processor”, a “first sensor device”, a “second sensor device”, and a “hardware storage”. 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, 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.
Those in the relevant field of art would recognize the above-identified additional elements as being well-understood, routine, and conventional means for data-gathering and computing, as demonstrated by Applicant’s specification (e.g. paragraphs [0071]-[0072]) which discloses that the processor(s) comprise generic computer components that are configured to perform the generic computer functions (e.g. determining) that are well-understood, routine, and conventional activities previously known to the pertinent industry; Applicant’s Background in the specification; and non-patent literature cited by the Applicant.
Accordingly, in light of Applicant’s specification, the claimed term processor 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 computers, with their already available basic functions, to use as tools in executing the claimed process.
Furthermore, Applicant’s specification does not describe any special programming or algorithms required for the processor. 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 Berkheimer memo from April 19, 2018, (III)(A)(1) on page 3). Adding hardware that performs “‘well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible (TLI Communications).
The recitation of the above-identified additional limitations in Claims 1-7, 9-14, 16-17, 19-20, and 22-27 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 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. 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, 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 apparatuses, systems and methods of Claims 1-7, 9-14, 16-17, 19-20, and 22-27 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 (ii) providing a technical solution to a problem in a technical field. None of Claims 1-7, 9-14, 16-17, 19-20, and 22-27 provides 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.
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 1, 11, and 20 (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. That is, 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. 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. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. 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. Thus, Claims 1-7, 9-14, 16-17, 19-20, and 22-27 merely apply an abstract idea to a computer and do not (i) improve the performance of the computer itself (as in Bascom and Enfish), or (ii) provide a technical solution to a problem in a technical field (as in DDR).
Therefore, none of the Claims 1-7, 9-14, 16-17, 19-20, and 22-27 amounts to significantly more than the abstract idea itself. Accordingly, Claims 1-7, 9-14, 16-17, 19-20, and 22-27 are not patent eligible and rejected under 35 U.S.C. 101.
Allowable Subject Matter
Claims 15 and 21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 CHANEL J YOON whose telephone number is (571) 272-2695. The examiner can normally be reached on Monday-Friday 9:00AM-5:00PM.
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/CHANEL J YOON/Examiner, Art Unit 3791
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