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 .
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on the following date(s) is/are entered and considered by Examiner:
* 09 October 2029
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 and 17-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18481200 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because application claims 1-12 and 17-18 are anticipated by reference claims 1-20.
All limitations of application claims 1-12, 17-18 can be found in reference claims 1-20. Therefore reference claims 1-20 are in essence a “species” of the generic invention of application claim s 1-12, 17-18. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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(s) 1-12 and 17-18 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
Claim 1 recites:
An information processing system comprising:
at least one first measurement apparatus that is a wearable terminal including a sensor, and that measures first biological information of a subject over time;
at least one second measurement apparatus that measures second biological information different from the first biological information; and
an information processing apparatus including at least one processor, wherein the processor is configured to:
acquire the first biological information from the at least one first measurement apparatus; and
derive a timing suitable for measuring the second biological information of the subject based on the first biological information,
wherein a recommended measuring period signal has a state of 1 during a recommended measuring period suitable for measuring the second biological information, a report signal reports a start and an end of the recommended measuring period by transitioning in state before a transition of the state of the recommended measuring period signal, and a best timing signal has a state of 1 at a time point that is most suitable for measuring the second biological information, and
wherein the processor is further configured to display guidance on a display of the information processing apparatus, in accordance with the state of each of the recommended measuring period signal, the report signal, and the best timing signal.
Step 1:
The claim as a whole falls within at least one statutory category, i.e. a process, machine, manufacture, or composition of matter.
The highlighted portion, as drafted, is a process that, under its broadest reasonable interpretation, falls under “Certain methods of organizing human activity” because the step of determining measurement timing for a patient is traditionally performed by a physician when treating a patient, i.e. managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). MPEP 2106.04(a)(2)(II)
The highlighted portion, as drafted, is a process that, under its broadest reasonable interpretation, falls under “Mental processes”.
But for a generic/general-purpose computer invoked with a high level of generality in a post hoc manner, the deriving step may be performed in the human mind either mentally (e.g. by observing the data and thinking about the result) or with pen and paper.
Accordingly, these limitations have been found to be directed towards concepts performed in the human mind (including an observation, evaluation, judgment, opinion). MPEP 2106.04(a)(2)(III)
The different categories of abstract ideas are being considered together as one single abstract idea. MPEP 2106.04(II)(B)
Dependent claim(s) recite(s) additional subject matter which further narrows or defines the abstract idea embodied in the claims (such as claim(s) 2-12 reciting limitations further defining the abstract idea, which may be performed in the mind but for recitation of generic computer components, and/or may be a method of managing relationship or interactions between people).
Step 2A Prong Two:
This judicial exception is not integrated into a practical application. In particular, the claim recites the following additional element(s), if any:
at least one first measurement apparatus that is a wearable terminal including a sensor, and that measures first biological information of a subject over time;
at least one second measurement apparatus that measures second biological information different from the first biological information; and
an information processing apparatus including at least one processor, wherein the processor is configured to:
acquire the first biological information from the at least one first measurement apparatus; and
wherein the processor is further configured to display guidance on a display of the information processing apparatus, in accordance with the state of each of the recommended measuring period signal, the report signal, and the best timing signal.
The additional element(s) do(es) not integrate the abstract idea into a practical application, other than the abstract idea per se.
Regarding the processor, the Specification as originally filed on 04 October 2023 discloses a general-purpose processor (page 19 paragraph 0084).
Accordingly, this limitation amount(s) to mere instructions to apply an exception (invoking computers as a tool to perform the abstract idea). MPEP 2106.05(f))
Regarding the wearable sensor and measurement apparatus, the Specification as originally filed discloses various sensors, such as heart rate or oxygen saturation (page 5 paragraph 0028). This limitation merely add(s) insignificant extra-solution activity to the abstract idea (mere data gathering,). MPEP 2106.05(g))
Regarding the step of receiving data and display data, this limitation merely add(s) insignificant extra-solution activity to the abstract idea (mere data gathering, insignificant display). MPEP 2106.05(g))
Dependent claim(s) recite(s) additional subject matter which amount to limitation(s) consistent with the additional element(s) in the independent claims.
Looking at the limitations as an ordered combination 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 or improves any other technology. Their collective functions merely provide conventional computer implementation and do not impose a meaningful limit to integrate the abstract idea into a practical application.
Accordingly, the additional elements do not integrate the judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claim recites an abstract idea.
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply an exception, add insignificant extra-solution activity to the abstract idea, and/or generally link the abstract idea to a particular technological environment or field of use.
The additional elements, as discussed above and incorporated herein, amount to no more than mere instructions to apply an exception, add insignificant extra-solution activity to the abstract idea, and/or generally link the abstract idea to a particular technological environment or field of use, as discussed above and incorporated herein.
Mere instructions to apply an exception, insignificant extra-solution activity, and linking to a particular technological environment using a generic computer component cannot provide an inventive concept.
Regarding the wearable sensor and measurement apparatuses, Stivoric (20070100666) discloses a variety of sensors, including a heart rate sensor and a oxygen saturation sensor, as element(s) that have been recognized as well-understood, routine, and conventional (WURC) activity in particular fields (page 5 paragraph 0098).
Regarding the step of receiving data, this limitation amount(s) to element(s) that have been recognized as WURC activity in particular fields (e.g., receiving or transmitting data over a network, Symantec, MPEP 2106.05(d)(II)(i)). MPEP 2106.05(d)(II)(ii))
Regarding the step of receiving data and display data, Stivoric discloses a display as element(s) that have been recognized as well-understood, routine, and conventional (WURC) activity in particular fields (page 13-14 paragraph 0145).
Dependent claims recite additional subject matter which amount to limitations consistent with the additional elements in the independent claims.
Looking at the limitations as an ordered combination 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 or improves any other technology. Their collective functions merely provide conventional computer implementation.
The claim is not patent eligible.
Claim(s) 17-18 recite(s) substantially similar limitations as those of claim(s) 1 above, and are therefore rejected for substantially similar rationale as applied above, and incorporated herein.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-10, 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashitani (20210074413) in view of Stivoric and case law.
Claim 1: Hayashitani discloses:
An information processing system (Fig. 11) comprising:
at least one first measurement apparatus that is
at least one second measurement apparatus that measures second biological information different from the first biological information (abstract, [0002], [0027], [0042]-[0044], Fig. 3, 6A); and
an information processing apparatus including at least one processor (Fig. 11), wherein the processor is configured to:
acquire the first biological information from the at least one first measurement apparatus (abstract, [0002], [0027], [0042]-[0044], Fig. 3, 6A); and
derive a timing suitable for measuring the second biological information of the subject based on the first biological information (abstract, [0002], [0027], [0042]-[0044], Fig. 3, 6A),
wherein the processor is further configured to display guidance on a display of the information processing apparatus,
Hayashitani does not disclose:
a wearable terminal including a sensor;
wherein a recommended measuring period signal has a state of 1 during a recommended measuring period suitable for measuring the second biological information, a report signal reports a start and an end of the recommended measuring period by transitioning in state before a transition of the state of the recommended measuring period signal, and a best timing signal has a state of 1 at a time point that is most suitable for measuring the second biological information,
in accordance with the state of each of the recommended measuring period signal, the report signal, and the best timing signal.
Stivoric discloses:
a wearable terminal including a sensor (page 5 paragraph 0098 illustrating a heart rate and oxygen saturation sensor);
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to include the wearable sensors of Stivoric within the system of Hayashitani with the motivation of improving patient care by using known sensors to monitor physiological data of the patient for analysis and treatment (Stivoric; page 1 paragraph 0006).
Hayashitani in view of Stivoric do not disclose:
wherein a recommended measuring period signal has a state of 1 during a recommended measuring period suitable for measuring the second biological information, a report signal reports a start and an end of the recommended measuring period by transitioning in state before a transition of the state of the recommended measuring period signal, and a best timing signal has a state of 1 at a time point that is most suitable for measuring the second biological information,
in accordance with the state of each of the recommended measuring period signal, the report signal, and the best timing signal.
As per the limitation describing the various data for display, this limitation appears to merely describe the nature of the information that constitutes the types of data for display, such as textual data. Such mere descriptions of data are not entitled to patentable weight unless the information functionally affects, or otherwise alters, the manner in which the claimed method is performed. See Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI 2008) (precedential).
Here, the textual data for displayed as recited does not affect nor in any way alter the manner in which the claimed method is performed.
As such, the claimed limitations constitute non-functional descriptive material that may not be relied on to distinguish the claimed invention from the prior art in terms of patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability).
Claim 2: Hayashitani in view of Stivoric and case law disclose:
The information processing system according to claim 1, as discussed above and incorporated herein.
Hayashitani further discloses:
wherein the processor is configured to derive the timing based on a change in time of the first biological information ([0044], [0051]-[0055], Fig. 6A).
Claim 3: Hayashitani in view of Stivoric and case law disclose:
The information processing system according to claim 1, as discussed above and incorporated herein.
Hayashitani further discloses:
wherein the processor is configured to derive a start timing and an end timing of a period suitable for measuring the second biological information based on the first biological information (Fig. 6A, 6B, [0051]-[0055]).
Claim 4: Hayashitani in view of Stivoric and case law disclose:
The information processing system according to claim 1, as discussed above and incorporated herein.
Hayashitani further discloses:
wherein the processor is configured to derive a most suitable timing for measuring the second biological information based on the first biological information (Fig. 6A, 6B, [0051]-[0055]).
Claim 5: Hayashitani in view of Stivoric and case law disclose:
The information processing system according to claim 1, as discussed above and incorporated herein.
Hayashitani further discloses:
wherein the processor is configured to:
predict a change in time of the first biological information; and
derive the timing based on the predicted first biological information ([0051]-[0055], Fig. 6A).
Claim 6: Hayashitani in view of Stivoric and case law disclose:
The information processing system according to claim 5, as discussed above and incorporated herein.
Hayashitani further discloses:
wherein the processor is configured to predict the change in time of the first biological information based on past data related to the first biological information ([0075]-[0077], more accurately reflected).
Claim 7: Hayashitani in view of Stivoric and case law disclose:
The information processing system according to claim 1, as discussed above and incorporated herein.
Hayashitani further discloses:
wherein the processor is configured to present the derived timing (Fig. 6A, [0051]-[0055]).
Claim 8: Hayashitani in view of Stivoric and case law disclose:
The information processing system according to claim 1, as discussed above and incorporated herein.
Hayashitani further discloses:
wherein the processor is configured to report a start of a period suitable for measuring the second biological information before a start timing of the period (Fig. 6A, 6B, [0051]-[0055]).
Claim 9: Hayashitani in view of Stivoric and case law disclose:
The information processing system according to claim 1, as discussed above and incorporated herein.
Hayashitani further discloses:
wherein the processor is configured to report an end of a period suitable for measuring the second biological information before an end timing of the period (Fig. 6A, 6B, [0051]-[0055]).
Claim 10: Hayashitani in view of Stivoric and case law disclose:
The information processing system according to claim 1, as discussed above and incorporated herein.
Hayashitani further discloses:
wherein the processor is configured to instruct a second measurement apparatus that measures the second biological information to measure the second biological information at the derived timing ([0009], [0027], [0042]-[0044], Fig. 6A, 7).
Claim(s) 17-18 recite(s) substantially similar limitations as those of claim(s) 1 above, and are therefore rejected for substantially similar rationale as applied above, and incorporated herein.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashitani in view of Stivoric and case law, as applied to parent claim 1 above, and further in view of Applicant Admitted Prior Art (AAPA).
It is noted that the official notice taken in the previous Office Action mailed on 06 May 2025 in related application 18481200 is taken to be AAPA because Applicant failed to adequately traverse Examiner's assertion.
Claim 11: Hayashitani in view of Stivoric and case law disclose:
The information processing system according to claim 1, as discussed above and incorporated herein.
Hayashitani in view of Stivoric and case law disclose:
wherein the first biological information aperiodically changes depending on behavior of the subject.
AAPA discloses that the first biological information aperiodically changing depending on behavior is old and well known in the art.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the above-noted disclosure of Hayashitani in view of Stivoric and case law with the disclosure of Official Notice. The motivation for combining these references would have been to schedule appointment for plurality of patients.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashitani in view of Stivoric and case law, as applied to parent claim 1 above, and further in view of Ohyu (20210035688).
Claim 12: Hayashitani in view of Stivoric and case law disclose:
The information processing system according to claim 1, as discussed above and incorporated herein.
Hayashitani does not disclose:
wherein:
the second biological information indicates at least one of the electrocardiogram, an electroencephalogram, a medical image captured by a medical image capturing apparatus, or a result of at least one of a hematological test, an infectious disease test, a biochemical test, or a urine test ([0048], electroencephalogram, blood test serves as a biochemical test).
Ohyu discloses:
the first biological information indicates at least one of a body temperature, a heart rate, an electrocardiogram, an electromyogram, a blood pressure, an arterial oxygen saturation, a blood glucose level, or a lipid level ([0019], body temperature).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the above-noted disclosure of Hayashitani in view of Stivoric and case law with the disclosure of Ohyu. The motivation for combining these references would have been to diagnose the patient accordingly.
Response to Arguments
In the Remarks filed on 01 December 2025, Applicant makes numerous arguments. Examiner will address these arguments in the order presented.
On page 9 Applicant asserts that the claims have been amended with hardware aspects.
While Applicant’s argument have been fully and carefully considered, the additional elements do not provide significantly more than the abstract idea, for the reasons discussed above and incorporated herein.
On page 9-10 Applicant asserts that the claims have been amended with technical contributions.
While Applicant’s argument have been fully and carefully considered, the additional elements do not provide significantly more than the abstract idea, for the reasons discussed above and incorporated herein.
In particular, the feature of displaying data merely provides for display in a manner that would be WURC in the pertinent arts, as discussed above and incorporated herein.
Applicant’s arguments with respect to claim(s) 1, 17, 18 on page 10-11 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Based on the evidence presented above, Applicant' s arguments are not found persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Doganata (20050080806) discloses sequencing various events for the patient (Abstract) in a manner similar to those disclosed in the instant pending Specification as originally filed.
Priyadarshan (20120042262) discloses analyzing a user’s behavior to time specific events (Abstract) in a manner similar to those disclosed in the instant pending Specification as originally filed.
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 extension fee 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 date of this final action.
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/T.N.N./ Examiner, Art Unit 3685
/KAMBIZ ABDI/ Supervisory Patent Examiner, Art Unit 3685