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 .
Response to Arguments
Applicant's arguments and amendments regarding the 101 rejection filed pages 8-15 have been fully considered but they are not persuasive. Applicant has amended the claims to recite identifying a first pain assessment point based on the facial expression information, wherein the facial expression information includes a ratio of a time during which the facial expression of the infant has a predetermined feature relative to a predetermined time after the start of the pain event and argued that the above elements are not an abstract idea. The Examiner respectfully disagrees. A trained physician could analyze/watch a face of an infant overtime and count how long an infant makes a facial expression over a specified period of time. The use of complex ultrasound image processing argument is not commensurate in scope with the claims. The calculating pain assessment point is based on taking calculating a ratio of time during which the facial expression of the infant that has a predetermined feature relative to a predetermined time after the start of a pain event, which involves a mathematical concept (see MPEP 2106.04(a)(2)). Using a ratio in this case is a simple division of the length of a facial expression over the length of a total segment of an event. The pain assessment index involves making judgments about received data and performing mathematics by summing points (eg. see Applicant’s Specification, Para. 52) to output a numerical score. With regards to the XY LLC. V. Trans Ova Genetics, 968 F. 3d 1323, 1330-32 (Fed. Cir. 2020), the Applicant is reminded that each individual case has its own merits. The outputting of data is merely an insignificant extrasolution acitivity of necessary data outputting (see MPEP 2106.05(g)). Genetic Technologies Limited v. Merial LLC (Fed Cir., 2016) tells us that the inventive concept of step 2 of the Alice/Mayo analysis cannot be supplied by the abstract idea. The inventive concept necessary at step two of the Mayo/Alice analysis cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself. That is, under the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility; instead, the application must provide something inventive, beyond mere “well-understood, routine, conventional activity.” Mayo, 132 S. Ct. at 1294; see also Myriad, 133 S. Ct. at 2117; Ariosa, 788 F.3d at 1379. The claims recite a generic computer with a processor and memory in view of the Applicant’s specification Para. 24 and 64), which are not additional elements that integrate the exception into a practical application. The elements are not significantly more than the abstract idea since they are generic processors and memory that make up a generic conventional computer. The elements do not improve technology of the computer. The 101 rejection is maintained below.
Applicant’s arguments and amendments, see Pages 15-16, filed 9/25/2025, with respect to claims 1-6 and 8-16 have been fully considered and are persuasive. The 103 rejection of claims 1-6 and 8-16 has been withdrawn.
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 1-6 and 8-16 rejected under 35 U.S.C. 101 because of the following analysis:
Step 1: Do the claims recite one of the statutory categories of matter (i.e. method, apparatus, etc.)? YES, claims 1-6, 8-14 and 16 recite an apparatus and claim 15 recites a method.
Step 2A Prong 1: Is there an abstract idea involved? YES, the claim language recites acquiring attribute information (observation/analysis), state information ((observation/analysis), physiological information (observation/analysis), facial expression information (observation/analysis), identifying a first pain assessment point (analysis/judgment/mathematical calculation), and calculating a pain assessment index (analysis/mathematical calculation/judgment). These limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in mind or by a person using a pen and paper.
Step 2a Prong 2: Do the claims recite additional elements that integrate the exception into a practical application? NO, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The claims recite a processor and memory, which are recited at a high level of generality and recited as performing generic computer functions and as a tool for performing abstract ideas (see MPEP 2106.04(d) and 2106.05(f)). Upon reviewing the Applicant’s specification Para. 23-24 and 64, the processor and memory are described generically such as a personal computer or workstation, etc.
The dependent claims only contain recitations that further limit the abstract idea (that is, the claims only recite limitations that further limit the mental process) and do not integrate the abstract ideas into a practical application because they do not impose any meaningful limitations on practicing the abstract idea.
Step 2B: Do the additional elements amount to “Significantly More” than the judicial exception? NO, The emphasized elements cited above do not amount to significantly more than the judicial exception because these limitations are simply appending well-understood, routine and conventional activities previously known in the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known in the industry (see Electric Power Group, 830 F.3d 1350 (Fed. Cir. 2016); Alice Corp. v. CLS Bank Int’I, 110 USPQ2d 1976 (2014)).
In view of the above, the additional elements individually do not amount to significantly more than the above-judicial exception (the abstract idea). Looking at the limitations as an ordered combination (that is, as a whole) adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer, for example, or improves any other technology. There is no indication that the combination of elements permits automation of specific tasks that previously could not be automated. There is no indication that the combination of elements includes a particular solution to a computer-based problem or a particular way to achieve a desired computer-based outcome. Rather, the collective functions of the claimed invention merely provide conventional computer implementation, i.e., the computer is simply a tool to perform the process. Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)).
Conclusion
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.
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/MICHAEL J LAU/Examiner, Art Unit 3796