NDETAILED 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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, at least “a plurality of photo- optical gate sensors”, “a printed circuit board”, “an embedded circuit device connected to the photo-optical gate sensors via the printed circuit board”, and/or “an accelerometer, a gyroscope, a magnetometer, or combination thereof, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are objected to because they fail to indicate or include any reference numerals corresponding to claimed and/or disclosed corresponding features in the instant Specification.
Specification
The use of the term Bluetooth, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-13 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-13 of copending Application No. 18/065,278. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 112 first
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.
Claim 1 and 8 positively recite (a) a non-transitory “computer-readable medium” configured to store “instructions” and (b) a processor configured to execute “instructions”. Although the claims as filed recite these limitations, the Specification is entirely devoid of any mention of or details corresponding to either a “computer-readable medium” or “instructions”. The instant Specification does not appear to describe any particular details of the “computer-readable medium” or “instructions” and conversely notes generic computer use. The lack of sufficient disclosed corresponding specificity of details regarding the claimed “computer-readable medium” or “instructions” demonstrates a lack of possession. Thus, written description if lacking for claims 1 and 8. Depending claims 2-7 and 9-11 inherit and do not remedy the deficiencies.
Claim Rejections - 35 USC § 112 second
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 1-11 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.
Claim 1 and 8 positively recite (a) a non-transitory “computer-readable medium” configured to store “instructions” and (b) a processor configured to execute “instructions”. Given the lack of corresponding disclosure and resultant black-box regarding what may or may not constitute to either a “computer-readable medium” or “instructions”, one of ordinary skill in the art would not be apprised of the metes and bounds of the scope of the invention rendering the claim indefinite because the scope of the claim is indeterminate. Depending claims 2-7 and 9-11 inherit and do not remedy the deficiencies.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-13 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Alberts et al (US 2016/0302710 A1, hereinafter Alberts).
For claim 1, Alberts discloses a system for assessing movement (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]), the system comprising: a peg board device (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]) comprising a plurality of apertures on a top surface (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]), a plurality of photo- optical gate sensors within the plurality of apertures (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]), a printed circuit board (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]), and an embedded circuit device (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]) connected to the photo-optical gate sensors via the printed circuit board (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]); and a computing device (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]), comprising a touchscreen interface (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]), a non-transitory computer- readable medium configured to store instructions (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]); and a processor configured to execute instructions (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]).
For claim 2, Alberts discloses the system of claim 1, wherein the top surface comprises a recessed area (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]).
For claim 3, Alberts discloses the system of claim 2, wherein the recessed area is configured to receive one or more pegs (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]).
For claim 4, Alberts discloses the system of claim 1, wherein the peg board device is configured for a patient to perform a manual dexterity task (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]).
For claim 5, Alberts discloses the system of claim 1, wherein the manual dexterity task is a nine-hole peg test (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]).
For claim 6, Alberts discloses the system of claim 1, wherein the peg board device further comprises a plurality of pegs (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]).
For claim 7, Alberts discloses the system of claim 6, wherein one of more of the plurality of pegs is provided with an accelerometer, a gyroscope, a magnetometer, or combination thereof (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]).
For claim 8, Alberts discloses a method of treating a patient for a movement or cognitive disorder (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]), the method comprising: administering a manual dexterity task with a peg board device to a patient (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]), the peg board device comprising a plurality of apertures on a top surface (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]), a plurality of pegs (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]), a plurality of photo- optical gate sensors within the plurality of apertures (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]), a printed circuit board (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]), and an embedded circuit device (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]) connected to the photo-optical gate sensors via the printed circuit board (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]); and a computing device (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]) comprising a touchscreen interface (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]), a non-transitory computer- readable medium to store instructions (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]), and a processor configured to execute instructions(Fig 3-5 & 24-33, [0055-0077 & 0099-0132]); and instructing the patient to insert the plurality of pegs one at a time into the plurality of apertures (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]), and to remove such pegs one at a time from the plurality of apertures (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]).
For claim 9, Alberts discloses the method of claim 8, wherein the computing device is configured to provide video instructions for the patient to perform the manual dexterity task with the peg board device (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]).
For claim 10, Alberts discloses the method of claim 8, further comprising instructing the patient to performs a dual task including the manual dexterity task (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]).
For claim 11, Alberts discloses the method of claim 8, wherein the dual task is a balance task (Fig 3-5 & 24-33, [0055-0077 & 0099-0132 & 0144]).
For claim 12, Alberts discloses a device comprising: a top surface, a bottom surface, and a plurality of sides, the top surface comprising a plurality of apertures (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]) and a recessed area (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]); a plurality of pegs (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]); and a rechargeable battery (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]).
For claim 13, Alberts discloses the device of claim 12, wherein one or more of the plurality of pegs is provided with an accelerometer, a gyroscope, a magnetometer, or combination thereof (Fig 3-5 & 24-33, [0055-0077 & 0099-0132]).
Conclusion
The cited prior art made of record on the accompanying PTO-892 and not relied upon is considered pertinent to applicant's disclosure, relating to means for characterizing movement assessment and/or neurological disorder and including means for treatment and/or rehabilitation thereof, with particular attention directed to computerized administration of a nine-hole peg test.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey G. Hoekstra whose telephone number is (571)272-7232. The examiner can normally be reached Monday through Thursday from 5am-3pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles A. Marmor II can be reached at (571)272-4730. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Jeffrey G. Hoekstra
Primary Examiner
Art Unit 3791
/JEFFREY G. HOEKSTRA/Primary Examiner, Art Unit 3791