DETAILED ACTION
This Office action is in reply to correspondence filed 5 May 2026 in regard to application no. 18/271,095. Claim 2 has been cancelled. Claims 1 and 3-12 are pending and are considered below.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 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 1 and 3-12 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.
Each claim includes two steps for which there is not adequate support in the specification to satisfy the written-description requirement. First, “predicting a virtual smoke implementation timepoint” based on certain data; there is no hint in the originally filed application as to how, i.e. by what means or steps, any prediction is made. As was explained previously, simply disclosing the input is insufficient, and changing the input has no effect on this analysis, nor does breaking it down into two data gathering steps and using the verb “estimating” rather than “predicting” in the breakdown.
Second, though it is not positively claimed, determining that a “brainwave signal identifies an action of inhalation” suffers from exactly the same deficiency. There is no hint in the originally filed application as to how such a determination could be made.
See MPEP § 2161.01(I): "original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed". [emphasis in the original]
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 and 3-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) receiving a signal from an external device, identifying a distance between two objects in no particular manner, predicting a time-point in no particular manner but simply making an estimate based on the available data, displaying an image on an unclaimed device, and gathering two more pieces of data before the estimation is made.
This is mere computer implementation of human, mental work. A doctor can look at brain sensor information on paper and can make a determination based on that, can make a prediction by any means whatever, can determine distances and time intervals mentally and by observation, and can communicate a result to a patient verbally or by writing it on a paper.
None of this presents any practical difficulty and none requires any technology at all. This judicial exception is not integrated into a practical application because aside from the bare inclusion of a generic computer, discussed below, nothing is done beyond what was set forth above, which does not go beyond generally linking the abstract idea to the technological environment of generic, networked computers. See MPEP § 2106.05(h).
As the claims only manipulate data pertaining to input data, time periods, and a picture, they do not improve the "functioning of a computer" or of "any other technology or technical field". See MPEP § 2106.05(a). They do not apply the abstract idea "with, or by use of a particular machine", MPEP § 2106.05(b), as the below-cited Guidance is clear that a generic computer is not the particular machine envisioned.
They do not effect a "transformation or reduction of a particular article to a different state or thing", MPEP § 2106.05(c). First, such data, being intangible, are not a particular article at all. Second, the claimed manipulation is neither transformative nor reductive; as the courts have pointed out, in the end, data are still data.
They do not apply the abstract idea "in some other meaningful way beyond generally linking [it] to a particular technological environment", MPEP § 2106.05(e), as the lack of technical and algorithmic detail in the claims is so as not to go beyond such a general linkage.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional claim limitations, considered individually and as an ordered combination, are insufficient to elevate an otherwise-ineligible claim.
Claims 10 and 11 taken together include a processor and medium storing instructions. These elements are recited at a high degree of generality and the specification is clear, pg. 43, line 15, that nothing more than a "general-purpose" computer is required.
It only performs generic computer functions of nondescriptly manipulating data and sharing data with persons and/or other devices. Generic computers performing generic computer functions, without an inventive concept, do not amount to significantly more than the abstract idea.
The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. Obtaining information about brain waves from sensor data must necessarily have been well-understood, routine and conventional at the priority date of the present invention, as evidenced by the applicant's lack of explanation as to how it is done. Though it is not positively claimed, the use of wearable electronic devices was well-understood, routine and conventional before the filing of the claimed invention. For example, Davis et al. (U.S. Publication No. 2022/0310531) could say by the time of his filing (March 2019) that “smart watches” were among the devices that had become “ubiquitous in society”. [0002]
The claim limitations when considered as an ordered combination - a generic computer performing a chronological sequence of abstract steps - do nothing more than when they are analyzed individually. The other independent claims are simply different embodiments but are likewise directed to a generic computer performing, essentially, the same process.
The dependent claims further do not amount to significantly more than the abstract idea: claim 2 simply recites additional data gathering, claims 3, 6, 8 and 12 are simply further descriptive of the type of information being manipulated, claims 4, 5, and 7 simply recite further, abstract manipulation of data, and claim 9 consists entirely of nonfunctional printed matter, of no patentable significance and which in any case does nothing to reduce the level of abstraction.
The claims are not patent eligible. For further guidance please see MPEP § 2106.03 - 2106.07(c) (formerly referred to as the "2019 Revised Patent Subject Matter Eligibility Guidance", 84 Fed. Reg. 50, 55 (7 January 2019)).
Response to Arguments
Applicant's arguments filed 5 May 2026 in regard to rejections made under 35 U.S.C § 112(a) and § 101 (in regard to the “judicial exception” basis) have been fully considered but they are not persuasive. The applicant’s amendment has overcome the “statutory category” basis for the § 101 rejection of certain claims, and that has been withdrawn. The applicant’s amendment has overcome the rejection of certain claims under § 112(b), and that has been withdrawn.
In regard to § 112(a), the applicant does not make any persuasive argument but simply requests withdrawal “in view of the amendments”. The Examiner does not see anything in the claims or specification that would suffice to justify such a withdrawal, and the rejection is maintained.
In regard to § 101, again discussing only the “judicial exception” basis, the applicant states in conclusory fashion that the claims integrate “any possible judicial exception into a practical application”, and emphasizes certain claim language. But nowhere does the applicant argue that the claims improve the functioning of a computer, invoke a particular machine, transform matter, or provide more than a general link between the technology and the abstraction. The applicant then states in conclusory fashion, referring now to step 2B, that the claims add additional (meaning non-abstract) elements that go beyond “what is well-understood, routine, conventional activity in the field” or amount to “unconventional steps”, but the Examiner finds nothing in any claim beyond a generic computer, which, in view of Alice and its progeny, is clearly insufficient by itself.
The claims are not patent eligible and the rejection is maintained.
Conclusion
As no rejection is made herein under 35 U.S.C. § 102 or 103, a brief review of the state of the art at the relevant time (the present claims have priority to May 2022) is in order. In the previous Office action, some claims were rejected under § 102 based on the teaching of Schorey et al. and the remaining claims were rejected under § 103 based on a combination of Schorey with Avinash et al. or Ovstroski et al. As the claims have been amended, further search and consideration were conducted.
Klurfeld et al. (U.S. Publication No. 2020/0206439) disclose a modular inhaler with a vaporizer. [title] It makes use of a “smartwatch” (which, similar to Davis cited above, was by then “well known in the art”. [0051] It may perform “monitoring” of the “status of [an] inhalant”. [0008]
Goldstein et al. (U.S. Publication No. 2022/0061767) disclose a system for monitoring certain human conditions in a closed chamber. [title] It may monitor “brain waves” as well as an “inhaled and/or exhaled breath volume”. [0136] It may dected particular matter such as “smoke” or “ash”, among other “biological contaminates”. [0256]
But none of these, alone, if combined, or if combined with the prior art previously made of record, teach or suggest every limitation of the claims of the present invention, in particular the manner in which brain waves are used to detect inhalation which fact is then used to make a prediction about a following inhalation, combined with the other presently claimed elements.
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 SCOTT C ANDERSON whose telephone number is (571)270-7442. The examiner can normally be reached M-F 9:00 to 5:30.
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/SCOTT C ANDERSON/ Primary Examiner, Art Unit 3694
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