DETAILED ACTION
This Office action is in reply to application no. 18/271,095, filed 6 July 2023 with a preliminary amendment filed concurrently. Claims 1-11 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 1-11 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 a step of making a prediction, as in claim 1: “predicting a virtual smoke implementation timepoint by analyzing a result of the sensing”. There is no hint in the originally filed application as to how, i.e. by what means or steps, any prediction is made. Simply disclosing the input (e.g. “by analyzing a result of the sensing” is insufficient.
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]
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 2-6 and 8 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. In regard to claim 2, from which claims 3-6 depend, it is unclear what is meant by “a brainwave signal reaches a first signal”. In regard to claim 8, it is unclear what “whether the electronic device is powered on/off” means.
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.
Claim 10 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because it is directed to a “computer program stored in a computer-readable storage medium”. First, the claim is directed to a computer program and not to the medium itself. A computer program is a list of instructions, which is neither a process, machine, composition of matter nor a manufacture.
Second, even if it were otherwise, the specification does not require such a medium to be non-transitory but includes transitory embodiments. See pg. 43, line 30 to pg. 44, line 1 and pg. 44, lines 3-4 (the medium may be non-transitory but is not required to be.) The broadest reasonable interpretation of a claim drawn to a computer readable medium typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. See MPEP § 2111.01.
When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter) and Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S. C. § 101, Aug. 24, 2009, p. 2.
In an effort to assist the applicant in overcoming this rejection under 35 U.S.C. § 101 in this situation, the Examiner suggests the following approach. A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation “non-transitory” to the claim. Cf. “Animals – Patentability”, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (suggesting that applicants add the limitation “non-human” to a claim covering a multicellular organism to avoid a rejection under 35 U.S.C. § 101). Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se.
Claims 1-11 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) making a determination in no particular manner (sensing a brainwave based on input), making a prediction in no particular manner, and displaying information based on all of this.
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, 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 using a generic computer as a tool to implement the abstract idea. See MPEP § 2106.05(f).
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.
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 and 8 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)).
Claim Rejections - 35 USC § 102
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)(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.
Claim(s) 1, 2 and 7-11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Schorey et al. (U.S. Publication No. 2022/0113799).
With regard to Claim 1:
An operating method of an electronic device, [0063; a computer is used] the operating method comprising:
sensing a brainwave based on an input signal received from the electronic device; [0073; brainwaves are analyzed by a controller in order to determine what a user is doing; 0006; sensors such as a “set of electrodes” are used to capture the data]
predicting a virtual smoke implementation timepoint by analyzing a result of the sensing; [0071; a “real-time” and “predictive” model is used for “intent detection”; 0078; determinations may be made relating to a “time” based on a person’s habitual behavior] and
displaying a virtual image in which cigarette smoke is generated, based on the virtual smoke implementation timepoint. [0138; visual displays may be generated; 0078; these may be based on the time of day]
In this and the subsequent claims, referring to a time as a “virtual smoke implementation timepoint” is considered mere labeling and given no patentable weight. The content of output which is merely transmitted or displayed and then not further processed, such as “a virtual image in which cigarette smoke is generated”, consists entirely of nonfunctional printed matter which bears no functional relation to the timepoint and so is considered but given no patentable weight.
With regard to Claim 2:
The operating method of claim 1, wherein
the predicting of the virtual smoke implementation timepoint comprises:
detecting a first timepoint at which a brainwave signal reaches a first signal based on the result of the sensing; and
detecting a second timepoint at which the brainwave signal reaches a second signal based on the result of the sensing, after the first timepoint. [0112; the process iterates]
This claim is not patentably distinct from claim 1 as it consists entirely of a mere duplication of parts, simply performing a detection twice rather than once, which is of no patentable significance as no new and unexpected result is inherent or disclosed. See MPEP § 2144.04(VI)(B). The reference is provided for the purpose of compact prosecution.
With regard to Claim 7:
The operating method of claim 1, wherein
the predicting of the virtual smoke implementation timepoint comprises:
determining whether the electronic device satisfies a predetermined operating condition; and
predicting the virtual smoke implementation timepoint based on a determination that the electronic device satisfies the operating condition. [Schorey as cited above in regard to claim 1; that the sensor detects data reads on it being powered on, which reads on a predetermined operating condition]
With regard to Claim 8:
The operating method of claim 7, wherein
the operating condition comprises at least one of whether the electronic device is powered on/off and whether a suction sensor included in the electronic device operates. [id.]
With regard to Claim 9:
The operating method of claim 1, wherein
the displaying of the virtual image comprises:
transmitting information about a type of virtual smoke; and
transmitting information about a delay in communication between the electronic device and a device for displaying the virtual image.
This claim is not patentably distinct from claim 1 as it consists entirely of nonfunctional printed matter which bears no functional relation to the substrate and so is considered but given no patentable weight.
With regard to Claim 10:
A computer program stored in a computer-readable storage medium to execute the operating method of claim 1 in combination with hardware. [0049; a processor executes instructions stored in a memory]
With regard to Claim 11:
An electronic device comprising:
a brainwave signal measurement module configured to sense a brainwave signal based on an input signal received from the electronic device; [0073; brainwaves are analyzed by a controller in order to determine what a user is doing; 0006; sensors such as a “set of electrodes” are used to capture the data] and
a processor [0049; “processor”] configured to predict a virtual smoke implementation timepoint by analyzing a result of the sensing, [0071; a “real-time” and “predictive” model is used for “intent detection”; 0078; determinations may be made relating to a “time” based on a person’s habitual behavior] and display a virtual image in which cigarette smoke is generated, based on the virtual smoke implementation timepoint. [0138; visual displays may be generated; 0078; these may be based on the time of day]
Referring to a software subcomponent as a “brainwave signal measurement module” is considered mere labeling and given no patentable weight.
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.
Claim(s) 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Schorey et al. in view of Avinash et al. (U.S. Publication No. 2003/0036693).
These claims are similar and so are analyzed together.
With regard to Claim 3:
The operating method of claim 2, wherein
the predicting of the virtual smoke implementation timepoint comprises predicting the virtual smoke implementation timepoint based on an interval between the first timepoint and the second timepoint.
With regard to Claim 4:
The operating method of claim 2, wherein
the predicting of the virtual smoke implementation timepoint comprises:
predicting a first respiration time based on the interval between the first timepoint and the second timepoint;
predicting a timepoint of second respiration based on the interval between the first timepoint and the second timepoint and the first respiration time; and
determining the timepoint of second respiration to be the virtual smoke implementation timepoint.
Schorey teaches the method of claim 2 but does not explicitly teach this use of intervals, but it is known in the art. Avinash teaches a biosensor process [abstract] in which “breathing patterns” are determined which may have a “low frequency”. [0046] A time of a phase is predicted based on a “time interval”. [0050] Avinash and Schorey are analogous art as each is directed to electronic means for making predictions based on biosensor data.
It would have been obvious to one of ordinary skill in the art just prior to the filing of the claimed invention to combine the teaching of Avinash with that of Schorey in order to enhance image quality, as taught by Avinash; [0001] further, it is simply a substitution of one known part for another with predictable results, simply interpreting data in the manner of Avinash rather than that of Schorey; the substitution produces no new and unexpected result.
Claim(s) 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Schorey et al. in view of Ostrovski et al. (U.S. Patent No. 11,013,682).
With regard to Claim 5:
The operating method of claim 2, wherein
the predicting of the virtual smoke implementation timepoint comprises estimating an intake volume and a respiration volume of a user based on the interval between the first timepoint and the second timepoint,
wherein the intake volume comprises an intake volume of an aerosol that is inhaled by the user through the electronic device in a state in which the electronic device and the object are in contact, and
the respiration volume comprises an inspiration volume inhaled by the user in a state in which the electronic device and the object are not in contact.
Schorey teaches the method of claim 2 but does not explicitly teach this use of volumes, but it is known in the art. Ostrovski teaches an aerosol delivery system [title] that can detect particular items. [Col. 14, lines 5-6] It can determine a “magnetic material volume fraction” within a “quiet breathing maneuver”, [Col. 4, lines 63-64] and manages a “pre-determined inhaled volume”. [Col. 32, line 22] The composition of what is inhaled may be “in the form of an aerosol”. [Col. 8, line 64] Ostrovski and Schorey are analogous art as each is directed to electronic means for managing bio-sensed data.
It would have been obvious to one of ordinary skill in the art just prior to the filing of the claimed invention to combine the teaching of Ostrovski with that of Schorey in order to improve respirational input, as taught by Ostrovski; [Col. 12, lines 31-32] further, it is simply a substitution of one known part for another with predictable results, simply interpreting data in the manner of Ostrovski rather than that of Schorey; the substitution produces no new and unexpected result.
That a datum “comprises an intake volume of an aerosol that is inhaled by the user through the electronic device in a state in which the electronic device and the object are in contact” or “comprises an inspiration volume inhaled by the user in a state in which the electronic device and the object are not in contact” consist entirely of nonfunctional, descriptive language, disclosing at most human interpretation of data but which impart neither structure nor functionality to the claimed method and so are considered but given no patentable weight.
With regard to Claim 6:
The operating method of claim 5, wherein
the predicting of the virtual smoke implementation timepoint comprises predicting the virtual smoke implementation timepoint based on the intake volume and the respiration volume. [Ostrovski, as cited above in regard to claim 5]
Conclusion
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