DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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 Arguments
2. Applicant's arguments received 04/13/2026 have been considered but are moot in view of the new ground(s) of rejection. Detailed response is given in sections 4-13 as set forth below in this Office action.
Claim Objection
3. Claim 1 is objected to because of the following informalities:
Claim 1 recites the processor, measurement unit, and display being “structured” for their functions, which is deemed an odd word choice since it is not used in the Specification. Applicant is suggested to amend the claim to recite “configured” (as is standard) instead.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
4. The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first 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.
5. Claims 1, 3 and 6-9 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.
Specifically, claim 1 recites “a converter coupled to the input and structured to produce an input waveform based on physical properties of the accepted input signal”. However, signals are non-tangible, it is unclear what Applicant means by “physical properties of the accepted input signal”, and there is no any mention of “physical properties” in the Specification.
Further, claim 1 recites “a principal component extractor structured to …” and claims 7 and 8 recite “an extractor structured to …” for doing the functions “structured”. However, it is not clear what is meant by a “principal component extractor” or “an extractor” (i.e. computer code/software program in light of the disclosure) being “structured”. The Specification doesn’t seem to use the term structured. It is deemed that describing the software as “structured” is a misnomer since computer code is an intangible abstraction and cannot be considered “structure”.
Therefore, the limitations in question are considered as new matter. Applicant is required to cancel the new matter in the reply to this Office action.
Claims 3 and 6-9 are rejected under 35 U.S.C. 112(a) by virtue of their dependency to claim 1.
Rejections - 35 USC § 112
6. 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.
7. Claims 1, 3 and 6-9 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 pre-AIA the applicant regards as the invention.
In claim 1, the recitation of “a converter coupled to the input and structured to produce an input waveform based on physical properties of the accepted input signal” renders the claim indefinite. It is unclear how a signal itself has “physical” properties, since a signal can only represent underlying physical properties which are measured.
In claims 1, 7 and 8, the phrases “a principal component extractor structured” and/or “an extractor structured” render the claims indefinite. It is not clear what is meant by a “principal component extractor” or “an extractor” (i.e. computer code/software program in light of the disclosure) being “structured”. The Specification doesn’t seem to use the term structured. It is deemed that describing the software as “structured” is a misnomer since computer code is an intangible abstraction and cannot be considered “structure”.
Claims 3 and 6-9 are rejected under 35 U.S.C. 112(b) by virtue of their dependency to claim 1.
Claim Rejections - 35 USC § 101
8. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 101 that form the basis for the rejections under this section made in this Office action:
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.
9. Claims 1, 3, 6-10, 12, 14-19 and 21-22 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.
Under the 2019 PEG (now been incorporated into MPEP 2106), the revised procedure for determining whether a claim is "directed to" a judicial exception requires a two-prong inquiry into whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human interactions such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP § 2106.0S(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
Claims 1, 3, 6-10, 12, 14-19 and 21-22 are directed to an abstract idea of principal components analysis (PCA) dimensionality reduction.
Specifically, representative claim 1 recites:
A test and measurement instrument, comprising:
an input for accepting an input signal from a Device Under Test (DUT);
a converter coupled to the input and structured to produce an input waveform based on physical properties of the accepted input signal;
a measurement unit structured to produce first measurement data and second measurement data by measuring aspects of the input waveform;
a principal component extractor structured to derive at least one principal component from the first and second measurement data using principal component analysis;
a processor structured to remap the first measurement data and the second measurement data to a principal component domain derived from the at least one principal component;
the measurement unit further structured to produce third measurement data from the remapped first measurement data and second measurement data; and
a display structured to present the remapped first measurement data and the second measurement data in visual form.
The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements”.
The highlighted portion of the claim constitutes an abstract idea under the 2019 Revised Patent Subject Matter Eligibility Guidance and the additional elements are NOT sufficient to amount to significantly more than the judicial exceptions, as analyzed below:
Step
Analysis
1. Statutory Category ?
Yes.
System/Device
2A - Prong 1: Judicial Exception Recited?
Yes.
See the bolded portion as listed above.
Under its broadest reasonable interpretation (BRI), each and the combination of the limitations (d), (e) and (f) encompasses mathematical concepts, namely a series of calculations leading to one or more numerical results or answers, which also encompasses mental processes, i.e. data manipulation, evaluation and judgment, that can be performed in the human mind or by a human using a pen and paper. Note, the courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). See also to MPEP 2106.04(a)(2).III
The limitations “a principal component extractor”, “a processor”, and “the measurement unit” are all recited at a high level of generality. Under the BRI, they encompass a general-purpose computer and related computing components. According to the MPEP 2106.04(a)(2), if a claim limitation, under its broadest reasonable interpretation, covers mental processes except for the mention of generic computer components performing computing activities via basic function of the computer, then the claim is likely considered to be directed to an ineligible abstract idea, as it essentially describes a mental process that could be performed by a human without the computer components adding any significant practical application beyond the abstract concept itself.
Nothing in the bolded portion precludes the limitations (d), (e) and (f) from practically being performed in the mind or with the aid of paper/pen by employing mathematical relationships to manipulate existing information for practicing the abstract idea.
Therefore, the bolded portion of instant claim 1, reciting a series of mathematical concepts and mental process, amounts to an abstract idea falling within a combination of the “Mental Process” and “Mathematical Concepts” groupings of Abstract Ideas defined by the 2019 PEG.
2A - Prong 2: Integrated into a Practical Application?
No.
Under its BRI, each or the combination of the limitations (a), (b) and (c) encompasses a process of gathering the data/information necessary for performing the abstract idea. See MPEP 2106.05(g)(3): … that were described as mere data gathering in conjunction with a law of nature or abstract idea. See also Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 13863, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (presenting offers and gathering statistics amounted to mere data gathering).
The claim does not require any particular devices or sensors to generate the “input signal” from the DUT. The “converter” encompasses any possible hardware/software and/or processors, such as a basic analog to digital converter, and/or other circuitry to convert a received signal to a waveform for further analysis. The “measurement unit” encompasses a generic processor of a general-purpose computer structured to produce first measurement data and second measurement data by simply acquiring the data from, e.g., look-up tables as opposed to generating actual measurement data in real-time. Thus claim 1 would monopolize the abstract idea across a wide range of applications.
Under the BRI, limitation (g) encompasses an insignificant post solution activity (e.g., transmitting or displaying the algorithm results), which does not amount to the recitation of significantly more than the abstract idea itself.
The claim as a whole does not meet any of the following criteria to integrate the abstract idea into a practical application:
An additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Various considerations are used to determine whether the additional elements are sufficient to integrate the abstract idea into a practical application. However, in all of these respects, the claim fails to recite additional elements which might possibly integrate the claim into a particular practical application. At most, it only generally links the judicial exception to a particular technological environment or field of use. See MPEP 2106.04(d)(2).
2B: Claim provides an Inventive Concept?
No.
As discussed with respect to Step 2A Prong Two above, none of the claimed additional elements is considered to be qualified for “significantly more” because they do not impose any meaningful limits on practicing the abstract idea.
Further, all the additional limitations as recited in claim 1 amount to no more than mere instructions to apply the judicial exception using well-known/conventional techniques. See the prior art cited in sections 7-8 below in this Office Action. It is held that the mere instructions to apply the judicial exception on a generic computer and/or link the use of the judicial exception to the relevant technological environment do not provide an inventive concept or reflect an improvement in the functioning of such as a computer or an improvement to another technology or technical field. See MPEP 2106.04(d)(I), 2106.05(a), and 2106.05 (f).
The claim is therefore ineligible under 35 USC 101.
The dependent claims 3 and 6-9 inherit attributes of the independent claim 1, but does not add anything which would render the claimed invention a patent eligible application of the abstract idea. The claim merely extends (or narrows) the abstract idea which does not amount for "significant more" because it merely adds details to the algorithm which forms the abstract idea as discussed above.
Claims 10, 12, 14-19 and 21-22 are ineligible under 35 USC § 101 for the same reason as for claims 1, 3 and 6-9 set forth above.
Double Patenting
10. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
11. Claims 1, 7-8, 10, 16-17, 19 and 21-22 are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1, 9 and 16 (received 04/14/2026) of copending Application No. 18211410, and in view of ELYAHOODAYAN et al. (US 20220134103 A1).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the subject matter of claims 1, 7-8, 10, 16-17, 19 and 21-22 of the present application (hereinafter ‘110) has been fully taught by claims 1, 9 and 16
of the copending Application No. 18211410 (hereinafter ‘410) in view of ELYAHOODAYAN, as shown below:
‘110 (present application)
‘410 (copending application)
1. A test and measurement instrument, comprising:
an input for accepting an input signal from a Device Under Test (DUT);
a converter coupled to the input and structured to produce an input waveform based on physical properties of the accepted input signal;
a measurement unit structured to produce first measurement data and second measurement data by measuring aspects of the input waveform; and
a principal component extractor structured to derive at least one principal component from the first and second measurement data using principal component analysis, and
a processor structured to remap the first measurement data and the second measurement data to a principal component domain derived from the at least one principal component;
the measurement unit further structured to produce third measurement data from the remapped first measurement data and second measurement data; and
a display structured to present the remapped first measurement data and the second measurement data in visual form.
1. A waveform signal generation device, comprising:
an input for accepting a dataset including at least two sets of data in a dataset domain; and
one or more processors configured to: derive at least two principal components from the dataset using principal component analysis, the at least two principal components being orthogonal to one another,
map the dataset to a principal component domain derived from the at least two principal components,
generate additional data in the principal component domain, and remap the additional data in the principal component domain back to the dataset domain as a newly generated dataset; and
a signal generator structured to produce an artificial waveform signal from the newly generated dataset.
7. The test and measurement instrument according to claim 1, further comprising an extractor structured to
remap the first measurement data and the second measurement data from the principal component domain back to a measurement domain using information from only a single principal component.
1. A waveform signal generation device, comprising:
…
remap the additional data in the principal component domain back to the dataset domain as a newly generated dataset.
8. The test and measurement instrument according to claim 1, further comprising an extractor structured to
remap the first measurement data and the second measurement data from the principal component domain back to a measurement domain using information from less than all of the components in the principal component domain.
1. A waveform signal generation device, comprising:
…
remap the additional data in the principal component domain back to the dataset domain as a newly generated dataset.
A literal comparison between claims 1, 7 and 8 of ‘110 with claim 1 of ‘410 indicates that the conflicting claims are not patentably distinct from each other except the limitations discussed as follows:
Claim 1 of ‘110 recite: said input signal is from a Device Under Test (DUT), a converter coupled to the input and structured to produce an input waveform based on physical properties of the accepted input signal; a measurement unit structured to produce first measurement data and second measurement data by measuring aspects of the input waveform; and a display structured to present the remapped first measurement data and the second measurement data in visual form.
claim 1 of ‘410 does not but ELYAHOODAYAN discloses these features (see discussion of ELYAHOODAYAN as set forth in section 8 below in this Office action).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention claimed in ‘410 in view of ELYAHOODAYAN to arrive the claimed invention. The mere application of a known invention to a specific instance by those skilled in the art would have been obvious.
Claims 7 and 8 of ‘110 recite: said remap the first measurement data and the second measurement data from the principal component domain back to a measurement domain uses information from only a single principal component and/or information from less than all of the components in the principal component domain.
Claim 1 of ‘410 does not but ELYAHOODAYAN discloses these features (see discussion of ELYAHOODAYAN as set forth in section 8 below in this Office action).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention claimed in ‘410 in view of ELYAHOODAYAN to arrive the claimed invention. The mere application of a known invention to a specific instance by those skilled in the art would have been obvious.
Claims 10, 16-17, 19 and 21-22 are provisionally rejected under the judicially created doctrine of obviousness-type double patenting for the same reasons as for claims 1, 7 and 8 set forth above.
Claim Rejections - 35 USC § 102
12. 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; or
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
13. Claims 1, 3, 6-10, 12, 14-19 and 21-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ELYAHOODAYAN et al. (US 20220134103 A1).
Regarding claims 1 and 10, ELYAHOODAYAN discloses a test and measurement instrument (e.g., Fig. 2), comprising: an input for accepting an input signal from a Device Under Test (DUT) (102); a converter (104) coupled to the input and structured to produce an input waveform (e.g., the chest positional data generated based on the movement data detected by the IMU; note, the term “waveform” is given a broad interpretation, e.g., a time-dependent representation of how a signal or physical quantity changes over time, showing its amplitude, frequency, etc.) based on physical properties of the accepted input signal (para. 0015-0016); a measurement unit structured to produce first measurement data (e.g., AXF in Fig. 3) and second measurement data (e.g., AyF in Fig. 3) by measuring aspects of the input waveform (para. 0056); and a principal component extractor structured to derive at least one principal component from the first and second measurement data using principal component analysis, and a processor structured to remap the first measurement data and the second measurement data to a principal component domain derived from the at least one principal component (para. 0056: “ … corresponding eigenvectors and eigenvalues may be computed for the matrix (304) and a projection matrix may be constructed to transform the 3D positional data into a single dimension (305), providing a respiration vector for the patient”); the measurement unit further structured to produce third measurement data from the remapped first measurement data and second measurement data (para. 0059: “FIG. 5 illustrates the use of a respiratory cycle waveform generated from the 1D positional data resulting from a PCA of IMU 102 chest positional data (e.g., as exemplified by the method shown in FIG. 3)”); and a display (see the bottom plot in Fig. 7) structured to present (in the form of “respiratory cycle waveform” derived from the remapped first measurement data and the second measurement data, i.e., the “single dimension” or “a respiration vector” that is transformed from the 3D positional data as discussed in para. 0056) the remapped first measurement data and the second measurement data in visual form (para. 0063: “FIG. 7 includes a pair of graphs illustrating a respiratory cycle waveform with marked maximum and minimum from a control sensor (top plot) and from an IMU (bottom plot)”).
Regarding claim 19, ELYAHOODAYAN discloses a non-transitory computer-readable storage medium storing one or more instructions (para. 0037), which, when executed by one or more processors of a computing device in a measurement instrument (Fig. 2) causes the computing device to: receive an input signal from a Device Under Test (DUT) (102); generate N sets of measurement data (e.g., AXF, AyF and AZF in Fig. 3) from the input signal (para. 0056); derive M principal components from the N sets of measurement data using principal component analysis, where M is a range [1, N], and remap the first measurement data and the second measurement data to a principal component domain derived from the M principal components (para. 0056: “A covariance matrix may then be computed (303), e.g., using a rolling or stepped window of at least 4 seconds. Next, corresponding eigenvectors and eigenvalues may be computed for the matrix (304) and a projection matrix may be constructed to transform the 3D positional data into a single dimension (305), providing a respiration vector for the patient”); generate additional data from the remapped first measurement data and the second measurement data (para. 0059: “FIG. 5 illustrates the use of a respiratory cycle waveform generated from the 1D positional data resulting from a PCA of IMU 102 chest positional data …”); and display the additional data (see the bottom plot in Fig. 7) on the measurement instrument (para. 0063: “FIG. 7 includes a pair of graphs illustrating a respiratory cycle waveform with marked maximum and minimum from a control sensor (top plot) and from an IMU (bottom plot)”).
Regarding claims 3 and 12, ELYAHOODAYAN discloses: wherein the third measurement data comprises mean and standard deviation data (para. 0060: “a controller 104 may be configured to stimulate and pause for a duration that is some ratio of a number of standard deviations from the mean of the average measured respiratory cycle period of the patient over a fixed trailing window”, i.e., the detected/derived respiratory waveform data comprises mean and standard deviation data).
Regarding claims 6 and 14-15, ELYAHOODAYAN discloses: the visual form of the remapped first measurement data and the second measurement data (in the form of “respiratory cycle waveform” as discussed in para. 0056) is a time-trend plot (Fig. 7).
Regarding claims 7, 16 and 21, ELYAHOODAYAN discloses: an extractor structured to remap the first measurement data and the second measurement data from the principal component domain back to a measurement domain using information from only a single principal component (para. 0059).
Regarding claims 8, 17 and 22, ELYAHOODAYAN discloses: an extractor structured to remap the first measurement data and the second measurement data from the principal component domain back to a measurement domain using information from less than all of the components in the principal component domain (para. 0059).
Regarding claims 9 and 18, ELYAHOODAYAN discloses: N sets of measurement data are generated by the measurement unit, and in which the one or more processors are configured to derive M principal components from the N sets of measurement data, where M is a range [1, N] (see discussion for claim 19 above).
Conclusion
14. 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 extension fee 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 date of this final action.
Contact Information
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIUQIN SUN whose telephone number is (571)272-2280. The examiner can normally be reached 9:30am-6:00pm.
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/X.S/Examiner, Art Unit 2857
/SHELBY A TURNER/Supervisory Patent Examiner, Art Unit 2857
Prosecution Insights