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 .
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 9 and 19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The originally filed specification fails to provide an adequate written description for how to convert generated image data into brain signals. Brain signals are generated by the brain. While generated image data can be used to elicit the generation of brain signals, there is no description provided in the specification as to how they can be “converted into” brain signals.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6, 9, and 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Regarding claim 6, the phrase “the nerve impulses representative of the at least one concept” lacks proper antecedent basis. For examination purposes, the phrase is being interpreted as “nerve impulses representative of the at least one concept”. Regarding claims 9 and 19, it is unclear how generated image data could be converted into brain signals. As noted in paragraph 5 above, brain signals are generated by the brain. It is further unclear how brain signals would be specifically provided to a set region of the brain.
Claim Rejections - 35 USC § 101
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 20 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Claim 20 recites that an element of the claimed system is “implanted in the subject”. This recitation improperly incorporates human tissue into the claimed invention. It is suggested that the claim be amended to recite that the processing subsystem “is configured to be implanted in the subject” in order to remove the recitation of human tissue.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-8, 10-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Urbach’401 (US Pub No. 2014/0267401) in view of Tanaka et al.’452 (US Pub No. 2018/0168452).
Regarding claim 1, Urbach’401 discloses a method for use with an animal subject having a brain that includes a region that is responsible for forming concepts without sensory input, the method comprising: receiving, by a processing subsystem interfaced with the region of the brain, brain signals representative of at least one concept formed by the region of the brain without sensory input (sections [0058], [0062-0063], [0082], [0086]); processing, by the processing subsystem, the received brain signals so as to generate, from the received brain signals, image data that is representative of the at least one concept (sections [0082], [0086]); and sending, by the processing subsystem, the generated image data to a computerized device (sections [0082], [0086]).
Urbach’401 discloses all of the elements of the current invention, as discussed above, except for explicitly disclosing that the processing includes applying to the received brain signals a one-to-one mapping that maps between brain signals and image data. Tanaka et al.’452 discloses a method of generating images from brain signals, wherein the method comprises generating the images by applying to received brain signals a one-to-one mapping that maps between brain signals and image data (sections [0048], [0053-0066]). It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the method of Urbach’401 such that its processing subsystem generates the image data by applying a one-to-one mapping to the received brain signals, as taught by Tanaka et al.’452, as it would merely be combining prior art elements according to known methods to yield predictable results.
Regarding claim 2, Urbach’401 teaches that the computerized device is a computer memory communicatively coupled with the processing subsystem (Figure 7, computer memory 702, section [0082]).
Regarding claim 3, Urbach’401 teaches that the computerized device is a display device configured to display image data (Figure 7, display device 730; sections [0082], [0086]).
Regarding claim 4, Urbach’401 teaches that the processing subsystem is interfaced with the region of the brain via a non-invasive technique (Figure 2B shows that processing system 100, which includes processing subsystem 700 [see Figure 7], is external to a subject, and sections [0058] and [0063] disclose the use of non-invasive EEG via visual cortex thought detector 220, which is non-invasively interfaced with the processing subsystem [see Figure 7]).
Regarding claim 5, Urbach’401 teaches that the processing subsystem is deployed externally to the brain (Figure 2B shows the processing subsystem 100 deployed externally to the brain).
Regarding claim 6, Urbach’401 teaches that the processing subsystem receives nerve impulses representative of the at least one concept via a non-invasive technique (sections [0058], [0063]).
Regarding claim 7, Urbach’401 in view of Tanaka et al.’452 discloses all of the elements of the current invention, as discussed above, except for modifying the generated image data to produce modified image data. Tanaka et al.’452 teaches modifying generated image data to produce and display modified image data that is clearer than the originally generated image data, thus making it easier for a third party to recognize the displayed image data (sections [0066-0070]). It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the method of Urbach’401 in view of Tanaka et al.’452 to include modifying the generated image data and displaying the modified image data, as it would make it easier for a person to recognize the displayed image data.
Regarding claim 8, the modified image data of Urbach’401 in view of Tanaka et al.’452 is sent to the display device of Urbach’401 for display.
Regarding claim 10, Urbach’401 in view of Tanaka et al.’452 discloses all of the elements of the current invention, as discussed above, except for implanting at least one processing device of the processing subsystem in the subject. While Urbach’401 discloses use of non-invasive EEG technology to acquire the brain signals, Official notice is being taken that it is well known in the art to use invasive EEG electrodes implanted into a subject’s brain to acquire higher resolution, more accurate brain activity data. As such, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the method of Urbach’401 in view of Tanaka et al.’452 to include acquiring the brain signals using invasive ECoG electrodes, as this would provide higher resolution, more accurate brain signals to process. It is noted that implanted ECoG electrodes would require at least one processing device configured to transmit the invasively obtained brain signals to external processing device 100 of Figure 7 of Urbach’401.
Furthermore, Tanaka et al.’452 teaches that brain signals used for image reconstruction can be either non-invasive EEG signals or invasively acquired ECoG signals (sections [0011-0012], [0044]). It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the method of Urbach’401 in view of Tanaka et al.’452 such that it acquires the brain signals using implanted ECoG electrodes, as it would merely be the simple substitution of one known method (acquiring brain signals invasively) for another (acquiring brain signals non-invasively) to obtain predictable results. It is noted that implanted ECoG electrodes would require at least one processing device configured to transmit the invasively obtained brain signals to external processing device 100 of Figure 7 of Urbach’401.
Regarding claims 11-18 and 20, the sections of Urbach’401 cited above, as modified by Tanaka et al.’452, disclose a system comprising a computerized device (Figure 7, computerized device 100), a processing subsystem (Figure 7, processing subsystem 700), a computer memory (Figure 7, computer memory 702), and a display device (Figure 7, display device 730), each configured to perform the functions recited in the claims.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 12-20 of U.S. Patent No. 11,733,776. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the US Patent are narrower in scope than the claims of the current invention, encompassing the subject matter recited in the current claims. Any reference meeting the limitations set forth in claims 1-10 and 12-20 of the US Patent would also meet the requirements of claims 1-20 of the current invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Gallant et al.’558 (US Pub No. 2013/0184558) teaches a brain signal analysis based method for decoding and reconstructing perceptual or cognitive experiences of a subject, wherein the decoding includes using a one-to-one mapping of brain signals to image data. Ren’915 (US Pub No. 2008/0161915) teaches a method and system for creating visual images from brain signal analysis.
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/ETSUB D BERHANU/Primary Examiner, Art Unit 3791