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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 24 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 24 is dependent on claim 23, however it positively recites a non-transitory computer readable medium and not a method. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 16-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (system and method for diagnosing dementia) without significantly more.
Step 1:
The claimed invention in claims 16-24 are directed to statutory subject matter as the claims recited a system and method for diagnosing dementia through image presentation.
Step 2A: Prong One:
Regarding claims 16 and 23, the claims recites present a predetermined image to a test subject; after completion of the image presentation, generate a memory test by randomly mixing a plurality of images, including the presented image as a correct answer and other images as incorrect answers, and output the memory test; perform the memory test by allowing the test subject to select the correct answer if the presented image matches the image in the memory test, or to select an incorrect answer otherwise; determine whether dementia is present and/or a dementia status based on a degree of incorrect answer rate identified through the memory test after the memory test is completed; and after the presentation of the image, execute a process that outputs material capable of focusing the test subject's attention to interfere with the test subject's memory of the image, wherein the memory interference process comprises: outputting a concentration test start notification indicating beginning of a concentration test to the test subject, outputting a test method notification indicating how the concentration test is to be performed, and performing the concentration test after the output of the test method notification is completed.
The claim limitations under broadest reasonable interpretation falls within “certain methods of organizing human activity” group of abstract ideas since the claim is directed toward screening hundreds of thousands of dementia patients from the entire population may be quickly and conveniently performed at a relatively low cost.
Step 2A: Prong Two:
Regarding claims 16 and 23, the judicial exception is not integrated into a practical application. The additional limitations of “system” and “controller” amount to no more than generic computer components. Therefore, the additional elements do not integrated the judicial exception into practical application.
Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they are generic components that are configured to perform well-understood, routine, and conventional activities previously known in the industry.
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 16-24 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 15-22 of copending Application No. 18/434,984 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
In reference to claim 16, ‘984 discloses a system for diagnosing dementia through image presentation, comprising: a controller configured to control the system, wherein the controller is configured to: present a predetermined image to a test subject; after completion of the image presentation, generate a memory test by randomly mixing a plurality of images, including the presented image as a correct answer and other images as incorrect answers, and output the memory test; perform the memory test by allowing the test subject to select the correct answer if the presented image matches the image in the memory test, or to select an incorrect answer otherwise; determine whether dementia is present and/or a dementia status based on a degree of incorrect answer rate identified through the memory test after the memory test is completed; and after the presentation of the image, execute a process that outputs material capable of focusing the test subject's attention to interfere with the test subject's memory of the image, wherein the memory interference process comprises: outputting a concentration test start notification indicating beginning of a concentration test to the test subject, outputting a test method notification indicating how the concentration test is to be performed, and performing the concentration test after the output of the test method notification is completed [e.g. claim 15].
In reference to claim 17, ‘984 discloses wherein the controller is further configured to display a diagnostic result and test result of the test subject after determining whether dementia is present and/or the dementia status [e.g. claim 16].
In reference to claim 18, ‘984 discloses wherein the controller is further configured to adjust a determination criterion for dementia based on at least one of the test subject's birth year, gender, or educational background [e.g. claim 17].
In reference to claim 19, ‘984 discloses wherein the controller is further configured to output a test start notification on a screen before presenting the image, and after the test start notification is output, to output a memory request notification requesting the subject to memorize the presented image [e.g. claim 18].
In reference to claim 20, ‘984 discloses wherein the controller is further configured to output a solution method notification indicating how to solve the memory test before the memory test is output [e.g. claim 19].
In reference to claim 21, ‘984 discloses wherein the controller is further configured to perform the concentration test comprising a color classification test in which several colors are sequentially presented and a specific color is selected as a correct answer [e.g. claim 20].
In reference to claim 22, ‘984 discloses wherein the controller is further configured to perform a concentration test exercise multiple times prior to the actual concentration test to allow the test subject to practice [e.g. claim 21].
In reference to claim 23, ‘984 discloses a method for diagnosing dementia performed by a controller of an image-based dementia diagnosis system, comprising: presenting a predetermined image to a test subject; after completion of the image presentation, generating a memory test by randomly mixing a plurality of images, including the presented image as a correct answer and other images as incorrect answers, and outputting the memory test; performing the memory test by allowing the test subject to select the correct answer if the presented image matches the image in the memory test, or to select an incorrect answer otherwise; determining whether dementia is present and/or a dementia status based on a degree of incorrect answer rate identified through the memory test after the memory test is completed; after the image presentation step, executing a process that outputs material capable of focusing the test subject's attention to interfere with the test subject's memory of the image; wherein the memory interference process comprises: outputting a concentration test start notification indicating beginning of a concentration test to the test subject, outputting a test method notification indicating how the concentration test is to be performed, and performing the concentration test after the output of the test method notification is completed [e.g. claim 22].
Conclusion
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/NADIA A MAHMOOD/ Primary Examiner, Art Unit 3796